Appeal No. 2006-1712
Application No. 10/131,551
Appellant makes the following argument in response to the
§ 103 rejection at page 12 of the Substitute Appeal Brief, third
paragraph:
Failure of the cited and applied art to support a
proper obviousness rejection of appellant's claims is
further strongly supported by the clearly expressed
Declarations of two people, Mark A. Crowder, and Robert
S. Sposili, who possess impressive credentials
establishing them as being very skilled in, and
knowledgeable about, the relevant prior art. These
Declarations are, of course, part of the file history of
this case. Unequivocally, these two declarants each has
stated that the cited and applied prior art, viewed as a
whole, does not lead one toward making or practicing
appellant's claimed invention.
We have reviewed the Examiner's Answer in vain for any
consideration of the declarations cited by appellant. Indeed,
appellant notes at page 4 of the Reply Brief that the declarations
are unchallenged by the examiner.
Manifestly, the examiner has not taken into consideration all
the evidence of obviousness and nonobviousness in reaching the
legal conclusion of obviousness. Accordingly, this application is
remanded to the examiner for the purpose of allowing the examiner
to place on record consideration of the declarations cited by
appellant. The examiner should bear in mind that an opinion by a
declarant regarding the legal conclusion of obviousness is not
evidence, though some weight should be given to a persuasively
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