Appeal No. 2005-0127 Page 5
Application No. 10/077,427
downstream die arrangement, one of ordinary skill in the art would have recognized how to
combine the teachings to produce a microcellular weather stripping.
We conclude that the Examiner has established a prima facie case of obviousness with
respect to the subject matter of claims 1-7 and 15-20.
Appellants rely upon evidence of secondary considerations, namely commercial success,
in an attempt to show non-obviousness. “Evidence of secondary considerations are but a part of
the ‘totality of the evidence’ that is used to reach the ultimate conclusion of obviousness.”
Richardson-Vicks Inc. v. Upjohn Co., 122 F.3d 1476, 1483, 44 USPQ2d 1181, 1187 (Fed. Cir.
1997). The usefulness of this type of evidence lies in the fact that it “serves as a guard against
slipping into hindsight” during the determination of obviousness, Graham v. John Deere Co.,
383 U.S. 1, 17-18 (1966), in that it may demonstrate that the invention, while it appears to be
obvious upon looking back in time with hindsight, really was not. Stratoflex Inc. v. Aeroquip
Corp., 713 F.2d 1530, 1538-39, 218 USPQ 871, 879 (Fed. Cir. 1983). To properly consider
secondary considerations, we must consider all of the evidence under the Graham factors
together. Id.
Appellants’ evidence of commercial success is embodied in the Jyawook Declaration.
The Jyawook Declaration provides evidence that the weather stripping seals were the subject of a
purchase order from DaimlerChrysler (Exhibit A). But the bare numbers provided in the
purchase order provide insufficient information with regard to success in the marketplace. For
instance, it is unknown what proportion of the market the sales represent. Moreover, there is no
Page: Previous 1 2 3 4 5 6 7 8 Next
Last modified: November 3, 2007