Appeal No. 96-0499
Application 07/891,671
appellant. The suggestion to increase the number of turns in the secondary
winding and to maintain the filament voltage substantially constant comes only
from appellant’s own disclosure. Therefore, the examiner’s rejection of the
claims based on Riesland and Munson is improper.
Since the examiner has not established a persuasive case for the
obviousness of the claims on appeal, we need not consider appellant’s evidence
of secondary considerations of nonobviousness in the form of a declaration by
the inventor Ohtsuka. We do note, however, that the examiner’s treatment of
this declaration is completely unacceptable. The examiner’s complete response
to the properly filed declaration is to state that the examiner “has evaluated
the Declaration of Hitoshi Ohtsuka[]and had found the evidence of commercial
success not convincing” [paper mailed March 25, 1997]. The examiner offers no
analysis in support of this finding. For purposes of our consideration of
this record, the examiner’s bare statement that the declaration is not
convincing is the same as if the declaration had not been considered at all by
the examiner. The examiner must consider secondary evidence of nonobviousness
and provide us with a record upon which the examiner’s findings can be
evaluated. As noted above, however, we need not consider the secondary
evidence of nonobviousness in this case.
For all the reasons discussed above, we do not sustain the examiner’s
rejection of the claims under 35 U.S.C. § 103. Therefore, the decision of the
examiner rejecting claims 13, 15-18, 21 and 23-27 is reversed.
REVERSED
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