Appeal No. 2003-1234
Application 09/755,519
agree with appellant that opinion evidence is entitled to weight
in an obviousness determination. Opinions by persons in the
chemistry field, as in the declaration, are entitled to more
weight than those of a lay person in this case. Nevertheless, on
balance, the evidence does not persuade us of nonobviousness.
Objective evidence of nonobviousness (also called "secondary
considerations") must always be considered in making an
obviousness decision, Stratoflex, Inc. v. Aeroquip Corp.,
713 F.2d 1530, 1538-39, 218 USPQ 871, 879 (Fed. Cir. 1983),
although it need not be necessarily conclusive. Ashland Oil,
Inc. v. Delta Resins & Refrac., Inc., 776 F.2d 281, 306,
227 USPQ 657, 674 (Fed. Cir. 1985). A "nexus" is required
between the merits of the claimed invention and the evidence of
secondary considerations in order for the evidence to be given
substantial weight in an obviousness decision. Stratoflex,
713 F.2d at 1539, 218 USPQ at 879. "Nexus" is a legally and
factually sufficient connection between the objective evidence
and the claimed invention, such that the objective evidence
should be considered in the determination of nonobviousness.
Demaco Corp. v. F. Von Langsdorff Licensing Ltd., 851 F.2d 1387,
1392, 7 USPQ2d 1222. 126 (Fed. Cir. 1988). The burden of showing
nexus is on the applicant. Ex parte Remark, 15 USPQ2d 1498, 1503
(Bd. Pat. App. & Inter. 1990).
- 10 -
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 Next
Last modified: November 3, 2007