Appeal No. 95-3870
Application 07/993,551
was first presented in this application as an attachment to the appeal brief. As such, entry
of the declaration was within the discretion of the examiner. 37 CFR
§ 1.195. As set forth on pages 1-2 of the examiner's answer, the examiner did enter the
Sherry declaration, stating that he considered it.
As set forth in In re Hedges, 783 F.2d 1038, 1039, 228 USPQ 685, 686 (Fed. Cir.
1986):
If a prima facie case is made in the first instance, and if the applicant comes
forward with reasonable rebuttal, whether buttressed by experiment, prior art
references, or argument, the entire merits of the matter are to be reweighed.
In re Piasecki, 745 F.2d 1468, 1472,
223 USPQ 785, 788 (Fed. Cir. 1984).
Here, the examiner's consideration of the Sherry declaration consists of the
following paragraph which appears at page 8 of the examiner's answer:
Appellants' argument of long felt need as evidenced by commercial
success (brief, page 9, lines 5-6 & page 13, lines 4-11) has been
considered. While striped casings have indeed been in use for over 30
years, the advent of colored casings in recent years suggests a new problem
or consideration is addressed. Again, Sherry notes the positive effect of this
recent development on detection problems; this declaration is considered an
indication one skilled in the art would recognize increasing that the colored
portion of a casing provides improved detection.
The Sherry declaration urges that casings used in the claimed process is the
subject of commercial success. Mr. Sherry also urges that the casings required by the
claims on appeal have been copied by others and that one of assignee's competitors have
sought a license under any patents which may issue which cover the casing of the present
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Last modified: November 3, 2007