Appeal No. 2005-1024 Page 10
Application No. 10/156,291
The combined teachings of any of Burk, Volk and Koziol and Mazzocco would
have suggested to one of ordinary skill in the art a molded aspheric lens molded from
soft bio-compatible material to achieve the refraction or vision correction advantages of
the aspheric shape as well as the implantation advantages of a soft, deformable lens.
We thus conclude that the teachings of the applied references are sufficient to establish
a prima facie case of obviousness5 of the subject matter of claim 26. We recognize,
however, that evidence of secondary considerations, such as that presented by the
appellants in this application, must be considered en route to an ultimate determination
of obviousness or nonobviousness under 35 U.S.C. § 103. Accordingly, we consider
anew the issue of obviousness under 35 U.S.C. § 103, carefully evaluating and
weighing both the evidence relied upon by the examiner and the evidence provided by
the appellant. See In re Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir.
1984) and Stratoflex Inc. v. Aeroquip Corp., 713 F.2d 1530, 1538, 218 USPQ 871, 879
(Fed. Cir. 1983).
The appellants refer on page 14 of their brief to a declaration by Lee T. Nordan,
two declarations of Larry W. Blake and a declaration by Hector E. Stickar as allegedly
establishing that the cited prior art would not have enabled one of ordinary skill in the art
5 Like the Court in In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992),
we recognize that the concept of a "prima facie" case of obviousness is a procedural tool of patent
examination which allocates the burdens of going forward as between the examiner and the appellant, and
that the determinative issue regarding patentability in this, and any case based on obviousness, is whether
the record as a whole, by a preponderance of the evidence with due consideration to persuasiveness of
argument and secondary evidence, supports the legal conclusion that the invention claimed would have
been obvious at the time the invention was made to a person having ordinary skill in the art.
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