Appeal No. 1998-1317
Application No. 08/522,112
We will not sustain the rejection of claims 8-9 under 35
U.S.C. § 103.
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. v. Garlock, Inc., 721 F.2d 1540, 1548, 220 USPQ 303,
309 (Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984).
On pages 6-9 of the brief, Appellant argues that
Guberman, Huttenlocher, Stroke and Davida fail to teach
Appellant’s claimed limitations. In particular, Appellant
argues that neither Guberman or Huttenlocher discloses
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