Appeal No. 97-2481
Application No. 08/480,964
whole, the law does not require that the references be combined
for the reasons contemplated by the inventor." In re Beattie,
974 F.2d 1309, 1312, 24 USPQ2d 1040, 1042 (Fed. Cir. 1992). See
also In re Kemps, 97 F.3d 1427, 1430, 40 USPQ2d 1309, 1311 (Fed.
Cir. 1996) ("the motivation in the prior art to combine the
references does not have to be identical to that of the applicant
to establish obviousness").
We now turn to the rebuttal evidence submitted by appellant
to determine whether it is sufficient to overcome the prima facie
case of obviousness. In re Beattie, 974 F.2d at 1311, 24 USPQ2d
at 1042-43. This evidence consists of the declarations of Mr.
Hanna (note 3, supra) and of Dr. Richard A. Elco, filed on June
7, 1995.
Mr. Hanna (named as a coinventor in parent application
08/317,284) states that he has been responsible for the connector
program of Berg Electronics, Inc. (formerly DuPont Connector
Systems)5 from approximately 1989 to the present (the declaration
was signed on November 22, 1995). In essence, Mr. Hanna declares
that (1) the five-fold improvement in EMI shielding resulting
from Mr. Olson’s invention was unexpected, and (2) in his
5 In the brief (page 1), appellant identifies the assignee
as Berg Technology, Inc.
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