Appeal No. 95-3870
Application 07/993,551
invention. Appendix D of the Sherry declaration is a letter to assignee from a customer
stating that the casing used in the present process is a “significant improvement.” The
table at page 5 of the Sherry declaration sets forth sales figures of a casing such as that
required by the claims on appeal as well as a striped casing which appears to be
representative of that described by Grabauskas. In addition, the table sets forth sales data
for a uniformly colored casing.
Manifestly, the examiner's consideration and treatment of the Sherry declaration is
improper. The Sherry declaration presents objective data which is relevant in determining
the obviousness of the claimed invention. As set forth in In re Hedges, supra, the examiner
has not reweighed the entire merits of the matter. Rather, he has dismissed the evidence
of nonobviousness in a cursory manner.
Again, the examiner did not have to admit the declaration when it was submitted
with the appeal brief. However, the examiner did so. In admitting the declaration at that
late stage in the proceedings, the examiner undertook the responsibility to fully and fairly
evaluate that evidence. The examiner has not properly discharged that responsibility.
The filing and admission of the Sherry declaration shifted the burden of going
forward to the examiner. As explained, the examiner did not properly discharge that
burden. By statute, this Board serves as a Board of review, not a de novo examination
tribunal. 35 U.S.C. § 7(b) (the [Board] shall, on written appeal of an applicant, review
adverse decisions of examiner's upon application for patents ...). It is the examiner's
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