Appeal No. 1998-1181
Application No. 08/442,883
wherein the telephone stores a plurality of home SIDs in a
memory unit. The Examiner then concludes that it would have
been obvious to one of ordinary skill in the art at the time
the invention was made to modify the Blair memory system by
providing the teaching of the Krollop memory system thereto in
order to offer advantages to users in terms of better
selection of cellular systems and cheaper rates.
We find that the Examiner has failed to set forth a prima
facie case. It is the burden of the Examiner to establish why
one having ordinary skill in the art would have been led to
the claimed invention by the express teachings or suggestions
found in the prior art, or by implications contained in such
teachings or suggestions. In re Sernaker, 702 F.2d 989, 995,
217 USPQ 1, 6 (Fed. Cir. 1983). “Additionally, when
determining obviousness, the claimed invention should be
considered as a whole; there is no legally recognizable
‘heart’ of the invention.” Para-Ordnance Mfg. Inc., v. SGS
Importers Int'l, Inc., 73 F.3d 1085, 1087, 37 USPQ2d 1237,
1239 (Fed. Cir. 1995), cert. denied, 117 S. Ct. 80 (1996)
citing W.L. Gore & Assocs., Inc. v. Garlock, Inc., 721 F.2d
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