Appeal No. 1997-3667
Application 08/384,469
‘647 taught or would have suggested a P/E actuator having a pre-sintered substrate. Nor do appellants
traverse our finding in the original opinion that JP ‘399 taught or would have suggested elimination of
bonding adhesive in a P/E actuator. Lastly, appellants do not dispute that one of ordinary skill in the art
would have found motivation for combining the teachings and suggestions of GB ‘647 with those of JP
‘399. Simply put, appellants do not dispute that a prima facie case of obviousness has been made,
appellants merely seek to overcome the prima facie case with evidence of secondary considerations in
the way of unexpected results supposedly demonstrated by the April 8, 1994, declaration of Mr.
Takeuchi.
As indicated at page 5 of our original opinion, we previously considered this evidence of
secondary considerations (e.g., unexpected results) in making our determination of the obviousness of
the claimed invention on appeal. Although not explicitly clear from our original opinion, we found the
April 8 declaration to be insufficient to overcome the examiner’s prima facie case of obviousness. For
the reasons which follow, we support our original holding.
At the outset, we note that in overcoming a showing of obviousness under 35 U.S.C. §
103, the Federal Circuit requires a nexus between the merits of the claimed invention and the objective
evidence offered. Cable Elec. Prods. , Inc. v. Genmark, Inc., 770 F.2d 1015, 1026, 226 USPQ 881,
887 (Fed. Cir. 1985); Vandenberg v. Dairy Equip. Co., 740 F.2d 1560, 1567, 224 USPQ 195, 199
(Fed. Cir. 1984). "Secondary considerations are worthy of substantial weight only when there is a
nexus established between the merits of the claimed invention and the evidence proffered on secondary
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