Appeal No. 2005-2174
Application No. 10/060,614
Cir. 1985)).
Considered in light of the foregoing, the combined teachings of Boggess and
Sernovitz provide an evidentiary basis sufficient to establish a prima facie case of
obviousness with respect to the subject matter recited in claims 61-71.
After a prima facie case of obviousness is established, the burden of going
forward shifts to the applicant. In re Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785,
788 (Fed. Cir. 1984). When prima facie obviousness is established and evidence is
submitted in rebuttal, the decision-maker must start over and evaluate the facts
established by the rebuttal evidence along with the facts on which the earlier conclusion
was reached. In re Rinehart, 531 F.2d 1048, 1052, 189 USPQ 143, 147 (CCPA 1976).
Patentability is then determined on the totality of the record, by a preponderance of
evidence with due consideration to persuasiveness of argument. In re Oetiker, 977
F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992)
In the present case, the appellant relies on the above listed 37 CFR § 1.132
declarations as objective evidence of non-obviousness which purportedly demonstrates
that the claimed invention has enjoyed commercial success, solved a long felt need in
the art and been copied by a competitor.
The Reynolds I declaration focuses, as do all of the declarations, on a product
marketed by Impulse Promotional Products, Inc. as the “Impulse 220,” which product
allegedly embodies the claimed invention (see paragraphs 2-5 and Exhibits A and B).
The declarant (see paragraphs 6-23) states gross revenues for the Impulse 220 of
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