Ex Parte Ward - Page 7

                   Appeal 2006-2165                                                                                                 
                   Application 10/652,958                                                                                           

                   molding plastic and have the antimicrobial agent retain its properties after                                     
                   injection molding, further supports a reasonable expectation of success in the                                   
                   combination of Kernes’, Blackburn’s or Seabrook’s antimicrobial agent with                                       
                   Richardson’s injection molded plastic bearing housing.  A reasonable                                             
                   expectation that the combination of prior art references would be successful                                     
                   further supports a prima facie case of obviousness.  In re Merck & Co., Inc.,                                    
                   800 F.2d 1091, 1097, 231 USPQ 375, 379 (Fed. Cir. 1986).                                                         

                   EVIDENCE OF NON-OBVIOUSNESS: SECONDARY                                                                           
                   CONSIDERATIONS                                                                                                   
                           Appellant provides two 37 C.F.R. § 132 declarations, the Shea and                                        
                   Nisley Declarations, to show evidence of non-obviousness (i.e., secondary                                        
                   considerations).  Specifically, Appellant contends that the declarations                                         
                   demonstrate the commercial success and copying by others of the claimed                                          
                   invention so as to overcome the § 103 rejection over Richardson in view of                                       
                   Kernes, Blackburn or Seabrook, or alternatively over Appellant’s admission                                       
                   on page 13 of the Specification (Br. 12).                                                                        
                           Generally, for evidence of commercial success to be accorded                                             
                   substantial weight, the evidence must show that the commercial success is                                        
                   due to the merits of the claimed invention (i.e., the claimed features were                                      
                   responsible for the success) rather than other economic and commercial                                           
                   factors unrelated to the technical quality of the patented subject matter.                                       
                   Ex parte Remark, 15 USPQ2d 1498, 1502-03 (BPAI).  To establish a nexus                                           
                   between the claimed subject matter and commercial success requires more                                          
                   than a mere showing that there was a commercial success and that the                                             
                   commercially successful article is embodied in the claimed invention.  Id.                                       

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