Appeal No. 96-2992
Application 08/200,049
have found it obvious to use digital storage means of adequate
size in the form of a CD-ROM in making the suggested combination
of Hashimoto and Yamamoto.
Appellant further advances the argument that secondary
factors should be considered to decide the issue of obviousness
as the suggested combination is not clearly obvious. Appellant
offers for such secondary factors: (1) satisfaction of a long-
felt need, (2) acclaim by the community, and (3) grant of an
award under "Innovations in American Government" program [brief,
pages 15 to 18].
The Examiner responds by discussing that there was no
direct relationship shown between the criteria used in
establishing the grant of a patent and the secondary evidence
presented, and in fact the two employed different evaluating
criteria [answer, pages 18 to 20].
First of all, we note that, as we found above, this is
a situation where obviousness is supported by the applied prior
art, thereby making the secondary evidence necessary for
determining nonobviousness. We have considered the positions of
the parties as to the presented secondary evidence. It is our
view that there must be some connection between the industrial
market, or community related success, and the patentability of
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