Appeal 2007-3669
Application 10/831,671
To further support their position that there is no motivation to arrive at
the claimed invention, Appellants rely upon the Declaration of Dr. Crowder
(Br. 11).
Although factual evidence is preferable to opinion testimony, such
testimony is entitled to consideration and some weight so long as the opinion
is not on the ultimate legal conclusion at issue. While an opinion as to a
legal conclusion is not entitled to any weight, the underlying basis for the
opinion may be persuasive. In re Chilowsky, 306 F.2d 908, 916, 134 USPQ
515, 521 (CCPA 1962); In re Lindell, 385 F.2d 453, 456, 155 USPQ 521,
524 (CCPA 1967) (Although an affiant's or declarant's opinion on the
ultimate legal issue is not evidence in the case, "some weight ought to be
given to a persuasively supported statement of one skilled in the art on what
was not obvious to him." 385 F.2d at 456, 155 USPQ at 524 (emphasis
omitted)).
The Declaration of Dr. Crowder is not persuasive. The Declarant
indicates that “I do not find it logical to combine the three prior art
references. Nor do I find that the three prior art references, either singly or
in combination, make obvious the Applicant’s description of a shadow mask
with multiple shadow mask sections. Since the references do not make the
Applicants’ mask obvious, the Applicant’s [sic, Applicants’] laser annealing
system must necessarily be unique” (Declaration ¶ 10). The Declarant’s
opinion that is directed to the ultimate legal conclusion at issue is not
entitled to any weight. However, we will consider the underlying basis for
the opinion. The Declarant indicated that the relevant portions of the
Specification and the cited references were utilized in developing the stated
opinion (Declaration ¶ 4). The Declarant’s opinion appears to be based
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