Appeal No. 1999-1536 Page 11
Application No. 08/938,592
cannot be the basis for patentability when the differences would have otherwise been obvious.
See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Int. 1985).
Moreover, evidence of secondary considerations, even when present, are 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 the 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 claim 49
would have been obvious to one of ordinary skill in the art within the meaning of
35 U.S.C. § 103 at the time the appellants' invention was made. See Id.
CONCLUSION
To summarize, the decision of the examiner to reject claim 49 under 35 U.S.C. § 103 is
affirmed.
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