Ex parte NAGAISHI - Page 3




          Appeal No. 1998-3062                                                        
          Application 08/425,319                                                      







                                       OPINION                                        
               We will not sustain the rejection of claims 7-12 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 for               
          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. v. SGS Importers Int'l, Inc.,               
          73 F.3d 1085, 1087, 37 USPQ2d 1237, 1239 (Fed. Cir. 1995),                  
          citing W. L. Gore & Assocs., Inc.                                           
          v. Garlock, Inc., 721 F.2d 1540, 1548, 220 USPQ 303, 309 (Fed.              
          Cir. 1983).                                                                 


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