Appeal No. 1997-2041
Application No. 08/337,131
merits of the application and hence consider all the evidence
of record. In re Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785,
788, (Fed. Cir. 1984); In re Rinehardt, 531 F.2d 1048, 1051,
189 USPQ 143, 147 (CCPA 1976).
In Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530,
1538, 218 USPQ 871, 879 (Fed. Cir. 1983), the court said:
[E]vidence rising out of the so-called
“secondary considerations” must always when
present be considered en route to a
determination of obviousness. In re Sernaker,
supra, citing In re Fielder and Underwood, 471
F.2d 640, 176 USPQ 300 (CCPA 1983), see In re
Mageli et al., 470 F.2d 1380, 1384, 176 USPQ
305, 307 (CCPA 1973) (evidence bearing on
issue of nonobviousness “is never of ‘no
moment,’ is always to be considered and
accorded whatever weight it may have.”)
Indeed, evidence of secondary considerations
may often be the most probative and cogent
evidence in the record. It may often establish
that an invention appearing to have been
obvious in light of the prior art was not. It
is to be considered as part of all the
evidence, not just when the decisionmaker
remains in doubt after reviewing the art.
[Emphasis added.]
With that in mind, we now consider the appellant’s
arguments and the appellant’s declaration in support thereof.
We note that it appears from the record before us that the
appellant (Brief, page 4) and the examiner (Answer, page 6)
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