Appeal No. 2004-1836 Page 8
Application No. 09/590,815
Tiffin, 448 F.2d at 792, 171 USPQ at 294 ("cups" in the objective evidence versus
"containers" in the claims)) or if the objective evidence contains limitations or elements
not recited in the claims. See White v. Jeffrey Mining Machinery Co., 723 F.2d 1553,
1559, 220 USPQ 703, 706 (Fed. Cir. 1983), cert. denied, 469 U.S. 825 (1984); In re
Fenn, 639 F.2d 762, 765, 208 USPQ 470, 472 (CCPA 1981).
In this case, the evidence of nonobviousness2 clearly lacks nexus with claims 33
and 34 since it is directed to the commercial embodiment which is set forth in claim 1.3
As such, the evidence of nonobviousness is entitled to little weight. Evidence of
nonobviousness, although being a factor that certainly must be considered, is not
necessarily controlling. See Newell Cos., Inc. v. Kenney Mfg. Co., 864 F.2d 757, 768, 9
USPQ2d 1417, 1426 (Fed. Cir. 1988), cert. denied, 493 U.S. 814 (1989).
In view of the foregoing, we are satisfied that when all the evidence and
arguments are considered, the evidence of nonobviousness fails to outweigh the
evidence of obviousness as in Richardson-Vicks Inc. v. Upjohn Co., 122 F.3d 1476, 44
USPQ2d 1181 (Fed. Cir. 1997) and EWP Corp. v. Reliance Universal, Inc., 755 F.2d
898, 225 USPQ 20 (Fed. Cir.), cert. denied, 474 U.S. 843 (1985). Upon weighing all the
2 The declaration of the appellant filed October 28, 2002 (Paper No. 17).
3 See paragraph 2 of the declaration.
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