Appeal No. 2004-1240
Application No. 09/742,691
a nexus between the evidence and the merits of the
invention, i.e., that the customer bought the product
because of the features of the claimed invention.
Evidence showing that the customer bought the product
because of features of the claimed invention is
necessary. In re Huang, 100 F.3d 135, 139, 40 USPQ2d
1685, 1690 (Fed. Cir. 1996).
The Tanas and Benbasette Declarations do touch
upon the long-felt need consideration. For example,
Tanas indicates that an art recognized problem was
that corrugated cutting edges produced an inaccurate
edge to the foil and generated a lot of waste. The
problem was such that Tanas had to purchase “several
expensive devices to properly dispense the foil”.
Benbassette states that “[t]he prior art product we
switched from, utilized a corrugated cutting edge
that our operators found to be too cumbersome to work
with.”
F. The Weight of the Prima Facie Case of Obviousness
Versus the Weight of the Rebuttal Evidence
As stated, supra, 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., supra.
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
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