Appeal No. 1998-2415 Page 12
Application No. 08/751,798
requirement, as the testing discussed in the declarations was performed on water-added ham luncheon
meat while the claims are directed to slicing of "food sticks," which could include other different types of
meat and cheeses, for example. Thus, the declarations do not establish that any improved yields
observed in slicing water-added ham luncheon meat would also be achieved in slicing other meats and
cheeses falling within the scope of the claimed invention. Additionally, we agree with the examiner that
the limited primary angles tested, which do not even include the end points of the claimed range
"between about 35 and about 60 ," are not sufficient to establish that the improved yields occur overo o
the entire claimed range. See Clemens, 622 F.2d at 1035, 206 USPQ at 296.
In any event, evidence of secondary considerations, such as unexpected results, is but a part of
the "totality of the evidence" that is used to reach the ultimate conclusion of obviousness. See
Richardson-Vicks Inc. v. Upjohn Co., 122 F.3d 1476, 1483, 44 USPQ2d 1181, 1187 (Fed. Cir.
1997).
After reviewing all of the evidence before us, including the totality of appellants' evidence, it is
our conclusion that, on balance, the evidence of nonobviousness fails to outweigh the evidence of
obviousness discussed above and, accordingly, the subject matter of claims 36 and 84-87 would have
been obvious to one of ordinary skill in the art within the meaning of 35 U.S.C. § 103 at the time
appellants' invention was made. See Id.
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