Appeal No. 1999-1536 Page 10
Application No. 08/938,592
with exact switching capability and without manual intervention into the batching process"
(Burnside declaration, paragraph 9), appellants have provided no evidence that the problem was
recognized in the art and that persons in the art tried and failed to solve the problem.
Accordingly, the Burnside declaration is woefully inadequate as evidence of nonobviousness on
the basis that the claimed subject matter satisfies a long-felt, unsolved need.
The Burnside declaration (paragraphs 6 and 7) also points out two advantages of the
"external switcher" (disposed external to the sorting head and disc) of the claimed coin sorter
which are allegedly not exhibited by "internal switcher" mechanisms (disposed within the
confines of the sorting head and disc). First, the external switching arrangement permits the
sorters to be purchased with or without the external switchers and later upgraded or retrofitted
with one or more additional switchers. Second, it is declarant's "understanding" that the
external switchers are more precise than internal switchers. However, even assuming that
these advantages are exhibited by the claimed invention, it appears to us that the external
diverter mechanism of Black also possesses both of these characteristics and appellants have
submitted no evidence that this is not the case. Additionally, the fact that appellants have3
recognized other advantages which flow naturally from following the suggestion of the prior art
3When an article is said to achieve unexpected (i.e. superior) results, those results must logically be shown
as superior compared to the results achieved with other articles. Moreover, an applicant relying on comparative
tests to rebut a prima facie case of obviousness must compare his claimed invention to the closest prior art. In re
De Blauwe, 736 F.2d 699, 705, 222 USPQ 191, 196 (Fed. Cir. 1984).
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