Appeal No. 1998-1537
Application No. 08/134,916
plurality of cylindrical portions connected directly to each
other. Although Kyokai does contain the broad statement,
quoted above, to the effect that the method of making the back
claw is suitable for manufacturing the head, hanger and seat
lugs, the structure of these lugs is so different from that of
the back claw that Kyokai would not, in our view, enable one
of ordinary skill to make them. We accordingly conclude that
a prima facie case of obviousness as to claim 1 has not been
made out.
Since a prima facie case of obviousness is lacking, it is
unnecessary to consider the evidence submitted by appellants.
See In re Rinehart, 531 F.2d 1048, 1051-52, 189 USPQ 143, 147
(CCPA 1976). However, if such evidence were considered, it
would bolster our conclusion that the Tseng/Kyokai combination
is non-enabling. As the examiner acknowledges at page 13 of
the answer, appellants have "presented a substantial amount of
evidence concerning long-felt need and failure of others,"4
4Much of this evidence consists of copies of magazine
articles, attached as exhibits to the declaration of Weston M.
Wilcox dated January 3, 1995. The examiner seemingly
dismisses this evidence, characterizing it as being directed
to appellants' method of manufacture, and not to the claimed
11
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 Next
Last modified: November 3, 2007