Appeal No. 1996-1992
Application 07/898,373
We need not spend any further resources considering the examiner’s prima facie case
of obviousness in view of the examiner’s treatment of appellants’ evidence of
nonobviousness, Mr. Sherry’s declaration under 37 CFR § 1.132.
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).
Contrary to the examiner’s statement on page 9 of the Examiner’s Answer, it is clear
from the record that the examiner has not given careful review and consideration to the
declaration. First, the examiner in allegedly reviewing Mr. Sherry’s declaration misstates
the evidence. In the paragraph bridging pages 10-11 of the Examiner’s Answer, the
examiner states the following:
“In Appellants’ brief Appellants argue that customers switched from
clear, striped and uniformly colored casing to the present invention even
though the inventive casing has a higher purchase price that the clear
casing; even though striped casing was still available at the sameprice as the product of
the claimed invention; and even though nonmigratory uniformly colored casing continued to
be available from a major competitor (page 28, last paragraph of the brief), yet there is no
mention of this in Appellants’ Declaration or factual evidence with regard to pricing.”
Yet, Mr. Sherry on pages 6 and 7 of the declaration mentions what the examiner
says is not present in the declaration. Mr. Sherry declares the following:
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