Appeal No. 2004-1046
Application No. 09/354,203
The appellant does not dispute the examiner’s determination
that there is some motivation, suggestion, or teaching in the
applied prior art that would have led one of ordinary skill in
the art to combine the admitted prior art with Acea, Valentino,
or Hays, thus arriving at a drywall bench encompassed by
appealed claim 7. Rather, the appellant argues that “[i]f the
present invention were obvious, [] it would already be in use in
the industry inasmuch as there is no practical reason, such as
cost or difficulty of manufacture that would explain its
absence” and that “the claimed combination is not obvious
inasmuch as there has been a long felt need in the art for
Applicant’s invention, and, further, Applicant has enjoyed
outstanding commercial success with his invention.” (Appeal
brief filed Nov. 24, 2003, page 9; reply brief filed Aug. 19,
2002, paper 19, page 2.)4
The appellant’s position lacks merit. The appellant does
not cite, and we are unaware of, any legal authority supporting
the notion that an examiner must show that a claimed invention
claims and decide this appeal on the basis of this claim alone.
37 CFR § 1.192(c)(7) (2003)(effective Apr. 21, 1995).
4 The appellant submits that “the argument [] focuses on
‘objective indicia of unobviousness’” and that “the present
appeal can essentially be reduced to an issue of ‘secondary
considerations’” (appeal brief, pages 5 and 9), thus conceding
4
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