Appeal No. 2004-1240
Application No. 09/742,691
the invention addresses a long-felt need, and proof of
the failure of other to produce the invention. See
M.P.E.P § 716; In re GPAC Inc., 57 F.3d 1573, 1580, 35
USPQ2d 1116, 1121 (Fed.Cir. 1995). With regard to the
issue of “failure of others”, as stated supra, the
M.P.E.P. requires that the examiner determine whether
failure by others was merely attributable to a lack of
interest, M.P.E.P. § 716, and a showing of long-felt
need should convince the examiner that it was not.
Other types of secondary considerations include
copying and initial disbelief and/or acclaim by
experts. In order to credit such objective evidence,
the appellant must establish a nexus between the
evidence and the merits of the inventions. See GPAC,
57 F.3d at 1580, 35 USPQ2d at 1121 (Fed.Cir. 1995).
Even when the required nexus is established, however,
persuasive secondary considerations still may not
outweigh a strong showing of obviousness based on the
other Graham factors. See, e.g., Richardson-Vicks
Inc. v. Upjohn Co., F.3d 1476, 44 USPQ2d 1181 (Fed.
Cir. 1997). The weight of the legitimate inferences
from the art of record are compared with the weight of
the rebuttal evidence to determine whether the
rebuttal evidence overcomes the prima facie case. In
re Lindell, 385 F. 2d 453, 455, 155 USPQ 521, 524
(CCPA 1967).
Appellant discusses several Declarations in the
brief. We have carefully read each of these
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