Appeal No. 97-4079
Application No. 08/310,592
Having determined that the prior art itself reasonably
establishes a prima facie case of obviousness, we will now
consider the evidence asserted to support the patentability of
the claimed invention, namely, the comparative tests found in
the specification and the declaration under 37 CFR § 1.132 of
John E. Flood (Paper No. 12, filed November 20, 1996).3
The specification at pages 11-16 discusses four
comparative tests. The first three tests (examples 1-3)
measure gear life, gear wear/weight loss, and sound level,
respectively, of spur gear pairs made of: (1) neat polyketone
polymers (Gear A); (2) nylon 6,6 polyamide polymer composition
(Gear B); and (3) acetal copolymer (Gear C). The
specification (pages 13, 14) describes the results of the
3The examiner bears the initial burden of presenting a
prima facie case of obviousness (see In re Rijckaert, 9 F.3d
1531, 1532, 28 USPQ2d 1955, 1956 (Fed. Cir. 1993)). Once a
prima facie case is established, any evidence supporting the
patentability of the claimed invention, such as any evidence
in the specification or any other evidence submitted by the
applicant must be considered. The ultimate determination of
patentability is based on the entire record, by a
preponderance of evidence, with due consideration to the
persuasiveness of any arguments and any secondary evidence.
In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed.
Cir. 1992). All the evidence on the question of obviousness
must be considered. In re Piasecki, 745 F.2d 1468, 1471, 223
USPQ 785, 787 (Fed. Cir. 1984).
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