Appeal No. 1998-2727
Application 08/220,949
to supply the missing accessory connection determination. We
also do not agree with the Examiner that Matsumoto supplies
the missing claim limitation, supra, in a manner consistent
with 35 U.S.C. § 103, for the reasons enumerated infra in our
discussion of the 35 U.S.C. § 103 rejection. Thus we will not
sustain the Examiner’s judicially created double patenting
rejection of claims 12 and 21.
35 U.S.C. § 103 REJECTION
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 reasonable teachings or suggestions
found in the prior art, or by a reasonable inference to the
artisan 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) (citing W. L. Gore & Assocs., Inc. v.
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