Appeal 2007-0274
Application 10/011,629
THE SECONDARY CONSIDERATIONS ISSUE
Appellants argue that their claimed invention satisfies a long-felt need
not solved by others (Replacement Br. 18) and proffer §1.132 Declarations
by Lermayer (id. at 19), Lalik (id. at 20-21) and Cross (id. at 21-22) in
support of this argument. The Examiner concedes that these Declarations
evince a long-felt need but determines that this long-felt need evidence of
nonobviousness does not outweigh the prior art evidence of obviousness
(Answer 19).
As an initial matter, we observe that that the Appellants state "the
Examiner concedes that the claimed invention satisfies a long-felt need in
the art" ( Reply Br. 11). This is an imprecise statement. The Examiner has
conceded "the fact of long-felt need" (Answer 19) but has not expressed a
determination that the Appellants' claimed invention satisfies this long-felt
need.
We emphasize this last mentioned point because Appellants' proffered
evidence is conflicting on the question of whether a long-felt need is
satisfied by their commercial product, named Firefly, which is said to
represent the claimed invention. Specifically, while the Declaration
evidence indicates that the Firefly product has been generally praised and
well received by users, Exhibit B (i.e., a review article in American Hunter
magazine) of the Lalik Declaration states that "the Firefly has its drawbacks"
(Exhibit B, last page). These drawbacks are: "the brief shelf-life of the
illumination" (id.); "while it's little trouble to recharge, most stand hunters
would rather avoid even that minimal movement" (id.); and "it's not possible
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