Appeal No. 2003-1347 Page 7
Application No. 09/825,044
be directed to the issue of the long felt need for the invention which is relevant to the
obviousness of the invention only. However, establishing the long felt need requires
objective evidence that an art recognized problem existed in the art for a long period of
time without solution. The relevance of the long felt need and the failure of others to
address the issue of obviousness depends on several factors. The need must have
been a persistent one that was recognized by those of ordinary skill in the art. In re
Gershon, 372 F.2d 535, 539, 152 USPQ 602, 605 (CCPA 1967)("Since the alleged
problem in this case was first recognized by appellants, and others apparently have not
yet become aware of its existence, it goes without saying that there could not possibly
be any evidence of either a long felt need in the . . . art for a solution to a problem of
dubious existence or failure of others skilled in the art who unsuccessfully attempted to
solve a problem of which they were not aware."); Orthopedic Equipment Co., Inc. v. All
Orthopedic Appliances, Inc., 707 F.2d 1376, 217 USPQ 1281 (Fed. Cir. 1983)
(Although the claimed invention achieved the desirable result of reducing inventories,
there was no evidence of any prior unsuccessful attempts to do so.).
The Gregory affidavit does not address whether the need for the appellants
invention was a persistent one nor does it address whether there were prior
unsuccessful attempts to address the need. Therefore, the affidavit is entitled to little
weight. In sum, the affidavit is insufficient to overcome the strength of the evidence of
obviousness in this case.
In light of the above, the rejection of claim 9, and claims 7, 8, 10 and 11 which
fall therewith, is affirmed.
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