Appeal No. 1998-2415 Page 10
Application No. 08/751,798
Having concluded, for the reasons discussed above, that the teachings of the applied references
are sufficient to establish a prima facie case of obviousness of the subject matter of claims 36 and 84-4
87, we recognize that evidence of secondary considerations, such as that presented by appellants in this
application, must be considered en route to an ultimate determination of obviousness or nonobviousness
under 35 U.S.C. § 103. Accordingly, we consider anew the issue of obviousness under 35 U.S.C. §
103, carefully evaluating and weighing both the evidence relied upon by the examiner and the evidence
provided by appellants. See In re Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir.
1984) and Stratoflex Inc. v. Aeroquip Corp., 713 F.2d 1530, 1538, 218 USPQ 871, 879 (Fed. Cir.
1983).
Appellants' evidence, which has been submitted to show unexpected results, in the form of
higher yield, by using the appellants' invention, includes a declaration and a supplemental declaration by
Dennis B. Flisram, one of the inventors of the instant invention. The declarations state that water-added
ham luncheon meat product was sliced in commercial equipment over a period of six months under
conditions generally simulating those of commercial production. Some of the meat was sliced using a
blade "in accordance generally with McBrady, having a primary angle of 28 ," resulting in an averageo
4Like the Court in In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992), we recognize
that the concept of a "prima facie" case of obviousness is a procedural tool of patent examination which allocates
the burdens of going forward as between the examiner and appellants, and that the determinative issue regarding
patentability in this, and any case based on obviousness, is whether the record as a whole, by a preponderance of
the evidence with due consideration to persuasiveness of argument and secondary evidence, supports the legal
conclusion that the invention claimed would have been obvious at the time the invention was made to a person
having ordinary skill in the art.
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