Appeal No. 2000-2232
Application 08/483,928
Examiner's Answer for the respective details thereof.5
OPINION
A. Rejection of claims 21-37 under the judicially created
doctrine of obviousness-type double patenting over claims 1-22
of Lemelson '101 in view of Lemelson '563
We will not sustain the rejection of claims 21-37 under
the judicially created doctrine of obviousness-type double
patenting over claims 1-22 of Lemelson '101 in view of
Lemelson '563.
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).
Appellant argues that both the '101 and '563 patents to6
Appellant lack the claimed feature of supporting a printer in
5The Examiner's Answer was mailed January 18, 2000.
6 Brief, page 14.
5
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