Appeal No. 1998-2836
Application No. 08/453,211
recognized another advantage which would flow naturally from
following the suggestion of the prior art cannot be the basis
for patentability when the differences would otherwise be
obvious.”)
Having determined that the prior art itself reasonably
establishes a prima facie case of obviousness of claims 1, 3
and 19, 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 one of the inventors,
Michio Ito (see attachment to Paper No. 6), a copy of which is
attached to the main brief.7
7The examiner bears the initial burden of presenting a
prima facie case of obviousness (see In re Rijckaert, supra).
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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