Appeal No. 97-1114 Page 17
Application No. 08/222,643
anew the issue of obviousness under 35 U.S.C. § 103, carefully
evaluating therewith the objective evidence of nonobviousness
supplied by the appellant. See In re Oetiker, 977 F.2d 1443,
1445-46, 24 USPQ2d 1443, 1444-45 (Fed. Cir. 1992); In re
Piasecki, 745 F.2d 1468, 223 USPQ 785 (Fed. Cir. 1984).
In this case the appellant has submitted rebuttal evidence
in the form of two declarations under 37 CFR § 1.132 to3
establish nonobviousness of the claimed invention by attempting
to establish long-standing problems in the mass transit industry
and the prior failure of others to resolve these problems.
We have reviewed the declarations and the exhibits attached
thereto but find insufficient evidence to establish that an art
recognized problem existed in the art for a long period of time
without solution. It is our determination that solutions to the
alleged mass transit problem already exist as set forth in the
newly applied prior art. Furthermore, evidence of
nonobviousness, although being a factor that certainly must be
considered, is not necessarily controlling. See Newell
3Declarations of Tommy Lee Jones, filed October 16, 1995
and April 26, 1996 (see Paper Nos. 4 and 6).
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