Appeal No. 1996-3469
Application No. 08/268,708
Examiner never mentions the declaration, let alone treats
the substance of it. Instead of revaluating the prima
facie case of obviousness in light of the declaration,
examiner dismisses1 it. This is improper. As emphasized by the court in Connell v.
Sears, Roebuck & Co., 722 F.2d 1542, 1549, 220 USPQ 193, 199 (Fed. Cir. 1983):
It is inappropriate and injudicious to disregard any admissible evidence in
any judicial proceeding. Hence, all relevant evidence on the
obviousness issue must be considered before a conclusion is
reached. Stratoflex,
Inc. v. Aeroquip Corp., 713 F.2d 1530,
218 USPQ 871 (Fed. Cir. 1983).
Evidence under 37 CFR ' 1.132 must be considered and, as
mandated by the court in In re Piasecki, 745 F.2d 1468,
1472, 223 USPQ 785, 7882 (Fed. Cir. 1984) and In re Rinehart, 531 F.2d 1048,
1052, 189 USPQ 143, 1473 (CCPA
1 A"The product may be commercially successful, but can still
contain obvious subject matter which it would have been within
the skill of the ordinary worker to vary to achieve the claimed
product.@ Examiner's Answer, p. 8.
2 AIf rebuttal evidence of adequate weight is produced, the
holding of prima facie obviousness, being but a legal inference
from previously uncontradicted evidence, is dissipated.
Regardless of whether the prima facie case would have been
characterized as strong or weak, the examiner must consider all
of the evidence anew.@
3 AFacts established by rebuttal evidence must be evaluated
along with the facts on which the earlier conclusion was
reached, not
against the conclusion itself. Though the tribunal must begin
anew, a final finding of obviousness may of course be reached,
but such finding will rest upon evaluation of all facts in
evidence, uninfluenced by any earlier conclusion reached by an
earlier board upon a different record.@
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