Appeal No. 2004-1046
Application No. 09/354,203
has already been used in the industry to establish a prima facie
case of obviousness under 35 U.S.C. § 103(a). Indeed, the
appellant’s argument runs directly counter to the obviousness
statute itself and confuses the provisions of 35 U.S.C. § 102
with those of 35 U.S.C. § 103.
We next consider the appellant’s arguments based on (1)
long felt need and failure of others and (2) commercial success,
both of which, if proven, are indicia of nonobviousness. It is
well settled that once a prima facie case of obviousness is
established, the burden of going forward shifts to the
applicant. In re Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785,
788 (Fed. Cir. 1984); In re Mayne, 104 F.3d 1339, 1343, 41
USPQ2d 1451, 1455 (Fed. Cir. 1997).
To overcome the examiner’s prima facie case of obviousness
based on a long-felt need and failure of others, the appellant
must provide sufficient “tangible evidence to support a
contention that [the claimed] invention actually has provided a
long-awaited, widely-accepted, and promptly-adopted solution to
the problem extant in the art, or that others [] had tried but
failed to solve that problem.” In re Mixon, 470 F.2d 1374,
1377, 176 USPQ 296, 299 (CCPA 1973).
that the examiner has established a prima facie case of
obviousness within the meaning of 35 U.S.C. § 103.
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