Appeal No. 2001-1504
Application 08/618,263
upon the teachings of a combination of references. In re
Merck & Co., Inc., 800 F.2d 1091, 1097, 231 USPQ 375, 380
(Fed. Cir. 1986). Given Lance’s disclosure of a recess in the
stationary jaw for receiving a flat portion of the movable
jaw, the proposed modification of Lance in view of Emmett
would result in the laminated recess/flat portion arrangement
required by claim 16. Hence, the combined
teachings of Lance and Emmett establish a prima facie case of
obviousness with respect to the subject matter recited in
claim 16. As the appellant has advanced the Wooster
declaration in rebuttal, the next step is to consider all of
this evidence anew.
In essence, the appellant proffers the Wooster
declaration to show that the subject matter recited in the
appealed claims would not have been obvious within the meaning
of § 103(a) because it 1) addresses a problem not contemplated
by the prior art, 2) solves a long felt need in the art and 3)
has enjoyed a significant degree of commercial success.
With regard to the first point, the declaration states in
pertinent part that
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