Appeal No. 2004-1602
Application No. 09/954,766
bisectional arm with an obtuse angle and stand-alone means (Brief,
page 10). These arguments are not well taken since, as noted by
the examiner (Answer, page 9), Orii is directed to the same type of
device as claimed by appellants and disclosed by Rodriguez, namely
a coil reel hold down device. Appellants’ argument that Orii does
not contain all the claimed features is misplaced since the test
for obviousness is not what each reference discloses or suggests
but what the combined teachings of the prior art references would
have suggested to one of ordinary skill in the art. See In re
Keller, 642 F.2d 413, 425, 208 USPQ 871, 881 (CCPA 1981).
Finally, appellants argue that the affidavit under 37 CFR
§ 1.132 shows secondary evidence of commercial success and thus
necessitates a conclusion that the invention is not obvious
(Brief, pages 10-11 and 13). This evidence is not convincing nor
sufficient to rebut the prima facie case of obviousness established
by the examiner since it merely consists of a sales report. See
In re Huang, 100 F.3d 135, 140, 40 USPQ2d 1685, 1689 (Fed. Cir.
1996)(“Evidence related solely to the number of units sold provides
a very weak showing of commercial success, if any. [Citation
omitted].”). Furthermore, appellants have not established that
these sales are significant, constituting a significant share of
the market, and are due only to the unique characteristics of the
9
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 Next
Last modified: November 3, 2007