Appeal 2007-3828
Application 10/107,826
compression molding by eliminating the disadvantages of each by using a
single mold for the two steps (Uchiyama, col. 1, ll. 17-48). The Examiner
properly concluded that it would have been obvious to a person of ordinary
skill in the art to utilize injection compression molding techniques in the
formation of the multiwell plate of Pham to gain the advantages disclosed by
Uchiyama (Answer 4-5).
Appellants’ arguments regarding the features of claims 1 and 11 as
not being taught by the combination of Pham and Uchiyama are not
persuasive. We agree with the reasons set forth by the Examiner (Answer
14-15). Furthermore, the limitations highlighted by Appellants in the Brief
are the characteristics that are achieved through the use of that compression
injection molding system.
To further support their position that there is no motivation to modify
the teachings of Pham, Appellants rely upon the Declarations of Hall filed
on December 1, 2004 and September 20, 2006 (Br. 8). We will address
these Declarations separately.
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).
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