Appeal No. 2004-1753 Page 5
Application No. 09/524,086
The teachings of the applied prior art relied upon by the examiner as establishing
obviousness of the claimed subject matter are adequately set forth on pages 3 and 4 of
the answer and pages 8 to 13 of the brief.
The examiner has not properly considered the evidence of nonobviousness
supplied by the appellants (answer, p. 5). When determining
obviousness/nonobviousness under 35 U.S.C. § 103, the subject matter as a whole
must be weighed. Thus, even if the examiner were to be correct that the "crux of the
invention" was not new, the evidence of nonobviousness submitted by the appellants
still must be considered en route to a determination of obviousness/nonobviousness
under 35 U.S.C. § 103.
In our view, the evidence of nonobviousness supplied by the appellants (see
paragraphs 5-16 of the declaration of Donald G. Gillis dated December 19, 2000)
establishes copying of the claimed invention by the appellants' competitors.1 That
declaration states that twelve companies are marketing a copy of the appellants'
invention and that these twelve companies, along with the appellants' company,
represent the major suppliers of mobile ladders in the United States. When this
1 Copying is an indicium of nonobviousness. See Advanced Display Sys., Inc. v. Kent State Univ.
Kent State University, 212 F.3d 1272, 1285, 54 USPQ2d 1673 (Fed. Cir. 2000); Dow Chemical Co. v.
American Cyanamid Co ., 816 F.2d 617, 622, 2 USPQ2d 1350, 1355 (Fed. Cir. 1987).
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