Ex Parte Tsengas - Page 6




             Appeal No. 2004-1836                                                          Page 6              
             Application No. 09/590,815                                                                        


             a planar surface" is not present in claims 33 and 34.  Likewise, the argued limitation of         
             claim 8 of apertures in both the bottom portion and the top portion is not present in             
             claims 33 and 34.  Thus, the appellant has not presented any argument as to why the               
             subject matter of claims 33 and 34 are allowable over the combined teachings of Saad              
             and Burshtain as applied in the rejection under appeal.                                           


                   Objective evidence of nonobviousness must always be considered, when                        
             present, as part of the obviousness determination.  Stratoflex, Inc. v. Aeroquip Corp.,           
             713 F.2d 1530, 1538-39, 218 USPQ 871, 879 (Fed. Cir. 1983).  A "nexus" is required                
             between the merits of the claimed invention and the objective evidence in order for the           
             evidence to be given substantial weight in the obviousness determination.  Stratoflex,            
             713 F.2d at 1539, 218 USPQ at 879 ("A nexus is required ... if that [objective] evidence          
             is to be given substantial weight....");  W.L. Gore & Associates, Inc. v. Garlock, Inc., 721      
             F.2d 1540, 1555, 220 USPQ 303, 314 (Fed. Cir. 1983), cert. denied, 469 U.S. 851                   
             (1984) ("The objective evidence of nonobviousness ... may in a given case be entitled to          
             more weight or less, depending on its nature and its relationship to the merits of the            
             invention.").  See also In re Felton, 484 F.2d 495, 501, 179 USPQ 295, 299 (CCPA                  
             1973) ("A nexus between the merits of the invention and the evidence offered must be              
             established before that evidence becomes relevant to the question of obviousness.")  A            
             "nexus" is a legally and factually sufficient connection between the objective evidence           








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