Appeal No. 2005-1416 Page 7
Application No. 09/771,782
In weighing secondary considerations along with the other evidence, the
secondary considerations must be carefully appraised as to evidentiary value. EWP
Corp. v. Reliance Universal, Inc., 755 F.2d 898, 908, 225 USPQ 20, 26 (Fed. Cir.
1985). In some cases, evidence of secondary considerations is highly probative on
the question of obviousness. Richardson-Vicks, 122 F.3d at 1483, 44 USPQ2d at
1187. However, the existence of such evidence does not control the obviousness
determination, it remains in the realm of secondary considerations. Id. A nexus
between the merits of the claimed invention and the evidence of secondary
considerations is required in order for the evidence to be given substantial weight in
an obviousness decision. Stratoflex, 713 F.2d at 1539, 218 USPQ at 879.
Looking at the totality of the evidence, we conclude that the evidence of
licensing to others, copying by others, and commercial success does not outweigh the
evidence of obviousness. Here, claim 37, the sole independent claim, is directed to a
method of making a necklace employing a mold of sports projectile shaped beads for
a necklace. The declarations do not discuss the subject matter of the independent
claim 37, specifically. The discussion of the copying of the invention by others and
the licensing of the invention to others is not directed to the claimed method of making
a necklace.3
3 Appellant has presented several declaration to discuss the various aspects of the secondary
considerations. We will limit our discussion to a representative declaration for each of the discussed
secondary consideration.
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 Next
Last modified: November 3, 2007