Appeal 2007-2783
Reexamination 90/005,509
Patent 5,533,499
A nexus is required between the merits of the claimed invention and
any objective evidence of nonobviousness offered, if that evidence is to be
given substantial weight enroute to a conclusion on obviousness. Stratoflex,
Inc. v. Aeroquip Corp., 713 F.2d 1530, 1539, 218 USPQ 871, 879 (Fed. Cir.
1983). Commercial success is relevant only if it flows from the merits of the
invention claimed. Sjolund v. Musland, 847 F.2d 1573, 1582, 6 USPQ2d
2020, 2028 (Fed. Cir. 1988). Objective evidence must be commensurate in
scope with the invention claimed. In re Kulling, 897 F.2d 1147, 1149, 14
USPQ2d 1056, 1058 (Fed. Cir. 1990); see also In re Tiffin, 448 F.2d 791,
792, 171 USPQ 294, 294 (CCPA 1971).
Argument of counsel cannot take the place of evidence lacking in the
record. Meitzner v. Mindick, 549 F.2d 775, 782, 193 USPQ 17, 22 (CCPA),
cert. denied., 434 U.S. 854; see also In re Pearson, 494 F.2d 1399, 1405,
181 USPQ 641, 646 (CCPA 1974) (AAttorney=s argument in a brief cannot
take the place of evidence.@).
F. Analysis
In this case, as in any appeal from an Examiner’s rejection, the
patentee must demonstrate error in the rejections on appeal.
Hereinafter, when we refer to Iriarte by page and line number, the
reference is directed to the English translation of the cited Spanish Utility
Model, that is of record.
The Anticipation Rejection
Claims 1, 8, 49 and 53 have been rejected as anticipated by Iriarte.
Claim 8 depends from claim 1. Claims 1, 8, and 49 have been argued by the
patentee as a group, based on the assertion that according these claims “a
7
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