Appeal No. 96-2866 Page 15
Application No. 08/185,221
examiner. Additionally, the statement regarding an oscillating
K-wire is not commensurate with the scope of the claimed
subject matter inasmuch as the claims on appeal more broadly
recite "a wire." Moreover, while it is proper to give some5
weight to a persuasively supported statement of one skilled in
the art on what was not obvious to him, obviousness is a
question of law which we must decide (see In re Weber, 341 F.2d
143, 145, 144 USPQ 495, 497 (CCPA 1965) and In re Vamco Machine
and Tool, Inc., 752 F.2d 1564, 1574-75, 224 USPQ 617, 623 (Fed.
Cir. l985)), and an expert's opinion on the legal conclusion of
obviousness is neither necessary nor controlling (see Avia
Group Int’l, Inc. v. L.A. Gear Cal.,Inc., 853 F.2d 1557, 1564,
7 USPQ2d 1548, 1554 (Fed. Cir. 1988)).
Paragraph 6 of each declaration states that it is
"surprising" that less force is required to insert a wire by
oscillation than by rotation and it is "even more unexpected"
5It is well established that evidence of non-obviousness
must be commensurate in scope with the claims which the
evidence is offered to support. See In re McLaughlin, 443
F.2d 1392, 1396, 170 USPQ 209, 213 (CCPA 1971), In re Tiffin,
448 F.2d 791, 792, 171 USPQ 294 (CCPA 1971), and In re
Thompson, 545 F.2d 1290, 1295, 192 USPQ 275, 277 (CCPA 1976).
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