Appeal No. 1999-0221
Application No. 08/766,847
The appellant has offered evidence in rebuttal to the
examiner’s decision in the form of two declarations from the
inventor, one of which was filed on March 20, 1996 (in a
parent application) and the other on February 10, 1997 (in the
present application). In view of the presentation of such
evidence, we must reweigh the entire merits of the matter of
obviousness and hence consider all of the evidence of record
anew (In re Piasecki, supra). We also are mindful that
evidence of non-obviousness in any given case may be entitled
to more or less weight, depending upon its nature and its
relationship with the merits of the invention. Stratoflex
Inc. v. Aeroquip Corp., 713 F.2d 1530, 1539, 218 USPQ 871, 879
(Fed. Cir. 1983).
The first issue raised by the appellant with regard to
the declarations is that the examiner erroneously has taken
the position that the evidence of unexpected results must be
compared to Feller, the secondary reference, rather than to
Gumkowski, the primary reference (Answer, page 6). On this
issue, we find ourselves in agreement with the appellant, for
the reasons presented on pages 8-14 of the Brief. To
summarize for purposes of this decision, we agree that the
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