Appeal No. 1999-2720
Application No. 08/580,965
OPINION
We will not sustain the rejections of claims 1-9 under
35 U.S.C. § 103.
We first consider the rejection of claims 1-4 and 7.
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. 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
5
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 Next
Last modified: November 3, 2007