Appeal No. 2001-0065
Application 09/048,289
The Appellants state that the “highly relevant evidence has been ignored”
(Appeal Brief, page 7, line 10). In the contrary, it appears from the above that the
Examiner has considered the evidence, but found it to be unpersuasive.
We note that the mere existence of commercial use is not sufficient. In Ruiz v.
A.B. Chance, Inc., 234 F.3d 654, 57 USPQ2d 1161 (Fed Cir. 2000) the court illustrated
the methodology and analysis that should occur in regard to secondary considerations
when making an obviousness determination:
Accordingly, we urge the district court to make findings as to: 1) whether
secondary considerations rebut a prima facie case of obviousness; and 2) if the
evidence of secondary considerations is probative, whether there is a nexus
between the claimed invention and commercial success. See Simmons, 739 F.2d
at 1575, 222 USPQ at 746 (" A nexus between the merits of the claimed
invention and evidence of secondary considerations is required in order for the
evidence to be given substantial weight in an obviousness decision.").
In the present instance, the Examiner has followed the Ruiz suggested
methodology. First, he questioned the nexus between the merits of the claimed
invention and the evidence of secondary considerations. Exhibits A and B or the Pikka
declaration are ambiguous at best as to whether they embody the claimed invention.
Both exhibits illustrate either additional undefined processing in the return line, or no
return line at all, as noted in the Examiner’s answer, page 10, lines 14 et seq. No
statement rebutting this is seen in the Reply Brief, and our independent review of the
declaration confirms the Examiner’s position.
The Appellants have stated that the claim language “substantially only conveyed”
places no limitations on other types of treatment which can occur in the branch line
other than refining or accessory oxygen delignification (Appeal Brief, page 7, lines 18-
22).
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