Appeal No. 1996-3198 Page 8
Application No. 08/371,642
alleged by appellant. In this regard, it is not necessary that
the prior art suggest the combination to achieve the same
advantage or result allegedly discovered by applicant. See In
re Dillon, 919 F.2d 688, 692, 16 USPQ2d 1897, 1900 (Fed. Cir.
1990), cert. denied, 500 U.S. 904 (1991) and In re Lintner, 458
F.2d 1013, 1016, 173 USPQ 560, 562 (CCPA 1972).
Under the circumstances recounted above, it is our
determination that the evidence of record for and against a
conclusion of obviousness of the subject matter of claims 1, 8
and 9 considered in light of the respective arguments advanced
by the appellant and the examiner, on balance, weighs most
heavily in favor of an obviousness conclusion with respect to
the rejections under consideration.
Appellant simply has not shouldered the burden of
presenting convincing countervailing evidence of nonobviousness
by merely presenting the declaration of Borcher and other
information. Compare Huang, 100 F.3d 135, 40 USPQ2d 1685.
Accordingly, we will sustain the examiner's § 103 rejection of
claim 1 as unpatentable over Hamisch in view of Araujo and
separately stated § 103 rejection of claims 8 and 9 as
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 Next
Last modified: November 3, 2007