Ex Parte Polesuk

Board of Patent Appeals and Interferences

Jun 18, 2004

09742691 (B.P.A.I. Jun. 18, 2004)

The opinion in support of the decision being entered
today was not written for publication and is not
binding precedent of the Board.

Paper No. 25

UNITED STATES PATENT AND TRADEMARK OFFICE

_______________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________

Ex parte ERIC POLESUK
_______________

Appeal No. 2004-1240
Application No. 09/742,691
_______________

ON BRIEF
_______________

Before OWENS, JEFFREY T. SMITH, and PAWLIKOWSKI,
Administrative Patent Judges.

PAWLIKOWSKI, Administrative Patent Judge.

DECISION ON APPEAL

This is a decision on appeal under 35 U.S.C.
§ 134 from the examiner’s final rejection of claims 1,
3, and 4.
A copy of each of claims 1, 3, and 4 is set forth
below.

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Application No. 09/742,691

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1. A hair foil package dispenser comprising:
a container;
a roll of hair foil having a width between
approximately 3.5” to 6.0”;
an opening in said container;
an integrated cutting blade.

3. The package dispenser of claim 1 wherein
said integrated cutting blade is made of metal or
plastic.

4. The package dispenser of claim 1 wherein
said container has an insert for placing a lid of said
container.

The examiner relies upon the following
references as evidence of unpatentability:

Budny 3,974,947 Aug. 17, 1976
Clatterbuck 4,095,730 Jun. 20, 1978
Fischer 4,715,519 Dec. 29, 1987

Appellant’s specification, page 1, last full paragraph
and page 2, first full paragraph, and the image
reproduced on page 4 of the answer which represents a
prior art dispenser submitted by appellant
(hereinafter, “AAPA”).

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Claim 1 stands rejected under 35 U.S.C. § 102(b)
as being anticipated by AAPA, or in the alternative,
under 35 U.S.C. § 103 as being obvious over AAPA in
view of Budny or Clatterbuck.
Claim 3 stands rejected under 35 U.S.C. § 103 as
being obvious over AAPA in view of Budny.
Claim 4 stands rejected under 35 U.S.C. § 103 as
being obvious over AAPA in view of Fischer.
Our reference to appellant’s brief is the brief
filed on August 11, 2003 (Paper No. 21). To the
extent any given claim is separately argued by
appellant, we consider such claim in this appeal. 37
CFR § 1.192 (7) and (8) (2003).

OPINION
For the reasons set forth in the answer, and
below, we affirm each of the rejections.

I. 35 U.S.C. § 102(b)/103 rejection of claim 1

In the instant case, critical to the
determinations made herein, is the meaning of the
phrase “an integrated cutting blade”, which is recited
in claim 1.
Beginning on page 6 of the answer, the examiner
refers to the reproduced image1 (set forth on page 4 of

1 On page 3 of the answer, the examiner indicates that this
image is an image of a prior art dispenser submitted by
appellant.
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the answer), and states that this image shows a jagged
edge that is integrated, and the jagged edge is
inherently a cutting blade in that it cuts foil.
Appellant argues that such a jagged edge is not an
“integrated cutting blade”. Brief, page 5 and Eric
Polesuk’s Second Declaration. Hence, the meaning of
this phrase “an integrated cutting blade” is disputed.
We note that the meaning and scope of a claim is
ascertained in light of the specification. That is,
in determining the patentability of claims, the PTO
gives claim language its “broadest reasonable
interpretation” consistent with the specification and
claims. In re Morris, 127 F.3d 1048, 1054, 44 USPQ2d
1023, 1027 (Fed. Cir. 1997) (citations omitted).
There is a heavy presumption that a claim term carries
its ordinary and customary meaning. Amgen, Inc. v.
Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1325, 65
USPQ2d 1385, 1394 (Fed. Cir. 2003).
In the instant case, appellant’s specification
does not explicitly describe how the integrated
cutting blade is attached to dispenser 5 depicted in
Figure 1. Figure 1 does illustrate dispenser 5 having
blade 50 thereon. Hence, a blade is connected to
dispenser 5 in some way.
We turn to the dictionary as a useful tool for
determining the ordinary and customary meaning of the
word “integrated”. The definition of the word
“integrate” is “to unite with something else”. See
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page 606 of Merriam-Webster’s Collegiate Dictionary,
10th Edition (2000). Hence, an integrated structure is
a union of more than one piece. The examiner does not
explain how the serrated edge depicted in the picture
on page 4 of the answer is a piece that is united to
something else (e.g., to the box). To the contrary,
the reproduced image shows a unitary piece, not pieces
united together. Hence, we find that the examiner has
not properly interpreted appellant’s claim (the
examiner simply states that the cutting device [of the
AAPA] is integrated “in that it is part of the box”,
answer, page 7).
We also find that the AAPA does not disclose an
“integrated” cutting blade in view of our claim
interpretation as discussed above. The AAPA is a
unitary piece. Therefore, we determine that the AAPA
does not anticipate the claimed invention.2
We turn now to the obviousness rejection of claim
1. The examiner relies upon AAPA in view of Budny or
Clatterbuck. Both Budny and Clatterbuck disclose an
“integrated” cutting blade in that the cutting means
is united with another piece. See Figure 1 of
Clatterback (knife edge 18 is secured to container
12) and see Figure 1 of Budny (cutting means 44 is

2 As an aside, the word “blade” means “a cutting part of an
implement.” See page 120 of the Merriam-Webster’s Collegiate
Dictionary, 10th Edition (2000). As pointed out by the examiner,
the serrated edge depicted, for example, in the reproduced image
on page 4 of the answer, cuts foil. Hence, it is a cutting part
of an instrument, and therefore falls within the aforementioned
definition of a “blade”.
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secured to carton 10).
Budny also teaches that cutting means 44 is most
preferably a metal or plastic cutter bar “for
controllable tearing off desired lengths of the roll
material”. See column 3, lines 12-16. The roll
material can be polymeric film, wax paper, metal foil,
and the like. See Abstract. Hence, Budny provides
sufficient motivation to substitute the serrated
cutting edge of the AAPA for an integrated metal
cutting blade for controllable tearing off of foil.
In this way, the art recognized problem associated
with the prior art (difficulties in achieving
desirable tearing/cutting of foil, as, e.g., discussed
in the Tanas Declaration) is alleviated. We note that
obviousness can be established by combining or
modifying the teachings of the prior art to produce
the claimed invention where there is some teaching,
suggesting, or motivation to do so found either in the
reference or in the knowledge generally available to
one of ordinary skill in the art. In re Fine, 837 F.2d
1071, 1074, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988).
Here, Budny provides the motivation to do so. Hence,
we determine that that combination of applied prior
art supports a prima facie case of obviousness. We
therefore affirm the obviousness rejection of claim 1.

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II. The rejection of claim 3 under 35 U.S.C. § 103 in
view of AAPA in view of Budny

On page 11 of the brief, appellant refers to his
same arguments used in the above-discussed rejection
of claim 1 of Section I of this decision, to address
this rejection. Therefore, for the very same reasons
that we affirmed the above-mentioned obviousness
rejection, we affirm this rejection.

III. The rejection of claim 4 under 35 U.S.C. § 103
as being obvious over AAPA in view of Fischer

In the rejection of claim 4, the examiner relies
upon Fischer for teaching the subject matter of claim
4. We address appellant’s specific comments on
Fischer on pages 11-12 of the brief. Here, appellant
argues the particular limitation of claim 4 regarding
“wherein said container has an insert for placing a
lid of said container” is not suggested by Fischer.
Brief, pages 11-12.
At the bottom of page 11 and at the top of page
12 of the brief, appellant argues that item 68 of
Fischer is not an insert, nor does it form an insert
for the lid. Appellant states that the opening, 69,
formed by flap 68 is for the sheet material to be
dispensed, not the lid to be placed. On page 16 of
the answer, the examiner agrees that item 68 of
Fischer is not an insert.
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Appellant’s specification discloses that
“[i]nsert 30 is provided for placing the lid (not
shown in the figure) of the package 5”. Figure 1
depicts package dispenser 5. Hence, we are not
certain as to how the lid is inserted into insert 30.
We do know that, in determining the patentability of
claims, the PTO gives claim language its “broadest
reasonable interpretation” consistent with the
specification and claims. In re Morris, 127 F.3d
1048, 1054, 44 USPQ2d 1023, 1027 (Fed. Cir. 1997)
(citations omitted). There is a heavy presumption
that a claim term carries its ordinary and customary
meaning. Amgen, Inc. v. Hoechst Marion Roussel, Inc.,
314 F.3d at 1327, 65 USPQ2d at 1394. Here, it is
therefore reasonable to interpret claim 4 as requiring
an insert into which a lid is inserted.
We find that in column 5 beginning at line 20 of
Fischer, top wall panel 18 (which is the lid for the
box depicted in figure 2 of Fischer) has tuck flaps 62
and 64 that are inserted between rear wall end flaps
38, 40 and front wall end flaps 32, 34. The area
between the rear wall end flaps 38, 40 and front wall
end flaps 32, 34 are inserts because the tuck flaps 62
and 64 are inserted therein. In this manner, lift
flap 68/overlap wall panel of dispenser 10 can be
arranged as depicted in Figure 3 of Fischer. That is,
lift flap 68/overlap wall panel of dispenser 10 is
inserted into an insert(s), which is all that is
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required by claim 4.
We observe that on page 12 of the brief,
appellant argues that “the Declaration of Mr. Anders
states that there is no motivation to modify the prior
art to include the teaching of [Fischer]”. We have
reviewed the Anders Declaration and do not find such a
statement. For argument sake, however, the prior art
of Budny, for example, has a lid 22 having a wall
section 24 which is detachably secured along a line of
glue spots 26. Fischer teaches an equivalent means of
detachable securement (use of inserts).
In view of the above, we affirm the obviousness
rejection of claim 4.

IV. Rebuttal evidence

A prima facie case of obviousness is rebuttable
by proof that the claimed invention possesses
unexpectedly advantageous or superior properties.3 In
re Papesch, 315 F.2d 381, 386-87, 137 USPQ 43, 47-48
(CCPA 1963). Objective indicia of unobviousness can
be in the form of affidavits submitting evidence of
secondary considerations, and must be considered by
the examiner. See M.P.E.P. § 716. Such evidence of
secondary considerations includes proof of commercial
success of the claimed subject matter, a showing that

3 We review the rebuttal evidence with regard to the obviousness
rejections of record.
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the invention addresses a long-felt need, and proof of
the failure of other to produce the invention. See
M.P.E.P § 716; In re GPAC Inc., 57 F.3d 1573, 1580, 35
USPQ2d 1116, 1121 (Fed.Cir. 1995). With regard to the
issue of “failure of others”, as stated supra, the
M.P.E.P. requires that the examiner determine whether
failure by others was merely attributable to a lack of
interest, M.P.E.P. § 716, and a showing of long-felt
need should convince the examiner that it was not.
Other types of secondary considerations include
copying and initial disbelief and/or acclaim by
experts. In order to credit such objective evidence,
the appellant must establish a nexus between the
evidence and the merits of the inventions. See GPAC,
57 F.3d at 1580, 35 USPQ2d at 1121 (Fed.Cir. 1995).
Even when the required nexus is established, however,
persuasive secondary considerations still may not
outweigh a strong showing of obviousness based on the
other Graham factors. See, e.g., Richardson-Vicks
Inc. v. Upjohn Co., F.3d 1476, 44 USPQ2d 1181 (Fed.
Cir. 1997). The weight of the legitimate inferences
from the art of record are compared with the weight of
the rebuttal evidence to determine whether the
rebuttal evidence overcomes the prima facie case. In
re Lindell, 385 F. 2d 453, 455, 155 USPQ 521, 524
(CCPA 1967).
Appellant discusses several Declarations in the
brief. We have carefully read each of these
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Declarations in their entirety, and have read both
appellant’s and the examiner’s position on each of
these Declarations, and our determinations are set
forth below.

A. Eric Polesuk’s Second Declaration
With regard to Eric Polesuk’s Second Declaration,
appellant summarizes the statements made in this
Declaration, beginning on page 5 of the brief, as
follows.
Polesuk submits that a jagged-like pattern
formed in the cardboard of the box is not
considered an integrated cutting blade; simply a
rough edge. Second Declaration, paragraph 2.
Polesuk also states that although self-
dispensing boxes having an integrated cutting
blade have been around in the food service
industry for many years for the purpose of
cutting rolls of aluminum foil and plastic film,
no such device was used in the Beauty Industry
and dispensed from a box having a width between
approximately 3.5” to 6.0”. Second Declaration,
paragraph 3. Polesuk states that prior to the
present invention, there was no self-dispensing
box for the Beauty Industry having the features
of the present invention, and concludes that it
could not have been obvious to a person in the
Beauty Industry who had knowledge of the prior
art to have made the product of the present
invention. Second Declaration, paragraph 3.
Polesuk states that other persons in the Beauty
Industry had been trying to solve the problem of
efficiently dispensing hair foil for many years.
Persons in the Beauty Industry had knowledge of
dispensers for rolls of aluminum foil and
plastic films used in the food service industry.
These same persons had knowledge of the hair
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foil dispensers (AAPA) which had jagged edges.
But no one of skill in the Beauty Industry had
ever created a dispenser as claimed in the
present invention. Polesuk states that it was
not until the product of the present invention
was being sold in commerce that several
competitors copied the product and began to use
the integrated cutting edge as their major
selling feature. Second Declaration, paragraph
4. Polesuk states that the commercial success
of the hair foil package dispenser of the
present invention is not based on any promotion
or advertising or any other business events.
Although Product Club offers for sale the
product claimed in the present invention on
their website, the sales of the product on their
website are less than one half of one percent
(.5%) of the total sales. The commercial
success of the present invention is based on the
self-dispensing package having the integrated
cutting blade. Second Declaration, paragraph 5.

The above statements made by Eric Polesuk touch
on several secondary considerations, e.g., commercial
success and failure by others/long-felt need.
With regard to the issue of commercial success,
an appellant should not make broad statements about
commercial success, but rather should provide specific
details. See, e.g., Ex parte Remark, 15 USPQ2d 1498,
1505 (Bd.Pat.App. & Int. 1990). For example, proof of
commercial success is not simply a matter of producing
sales figures. Appellant must provide evidence, such
as market share, growth in market share, and
replacement of earlier sales by others. Kansas Jack,
Inc. v. Kuhn, 719 F.2d 1144, 1151, 219 USPQ 857, 861
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(Fed. Cir. 1983). Also, evidence of commercial
success can be downgraded where there is no showing
that the sales represent a substantial share of any
definable market or that the profitability is anything
out of the ordinary in the industry involved. Cable
Elec. Prods., Inc. v. Genmark, Inc., 770 F.2d 1015,
1026-1027, 226 USPQ 881,887 (Fed. Cir. 1985). Eric
Polesuk’s Second Declaration does not provide us with
any of the above-mentioned evidence regarding
appellant’s burden in connection with commercial
success. It would therefore be improper to infer that
reported sales represent a substantial share of any
definable market or that profitability is anything out
of the ordinary in the pertinent industry. Ex parte
Remark, 15 USPQ2d 1498, 1505 (Bd.Pat.App.&Int 1990).
With regard to the issue of “failure of others”,
as stated supra, the issue is whether the failure by
others was merely attributable to a lack of interest,
M.P.E.P. § 716, and a showing of long-felt need should
show that the “failure by others” was not due to a
lack of interest. Eric Polesuk does state that other
persons in the Beauty Industry had been trying to
solve the problem of efficiently dispensing hair foil
for many years. This broad statement is not specific
to any long-felt need of appellant’s particular hair
foil package dispenser having an integrated cutting
blade. Because the “long-felt need” showing is weak,
we also conclude that the “failure of others” showing
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has little impact in favor of appellant’s position.

B. Eric Polesuk’s Third Declaration
With regard to Eric Polesuk’s Third Declaration,
appellant summarizes the statements made in this
Declaration, beginning on page 5 of the brief, as
follows.

Polesuk states that for the past 11 years, Product
Club, the assignee of the present invention, has
been a supplier of key sundry products for the
Beauty Industry. Thousands of salons use the roll
foil of the present invention and have benefited
from the improved cutting mechanism found on every
self-dispensing box. To satisfy the demand Product
Club has created, Product Club stocks upward of
30,000 rolls of hair foil at its corporate
distribution center. To accommodate the needs of
both the big and small end-users, Product Club
offers its rolls of hair foil in 3 different
lengths, (sizes); 5” X 250’; 5” X 722’, and 5” X
1,450’. Since the rolls of hair foil are offered
in many different colors, the product line now
consists of 11 SKU’s (shelf counting units). In a
very short amount of time, roll foil has become a
significant portion of sales at Product Club and is
up 300%, when comparing 1st half 2000, versus 1st
half 2001, due to the product that is claimed in
the present invention. The commercial success of
the hair foil package dispenser claimed in the
present invention is not based on an increase in
advertising for this product or any other single
business event. Product Club does attend annual
tradeshows where its products are featured and does
periodically advertise its products in industry
journals. However, advertising dollars as a
percent of sales has not increased for the roll of
hair foil. Third Declaration, paragraphs 1-4.

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We refer to the examiner’s comments on pages 13-
14 of the answer regarding this Declaration on the
issue of commercial success, and add the following
comments for emphasis.
As stated above, proof of commercial success is
not simply a matter of producing sales figures.
Appellants must provide evidence, such as market
share, growth in market share, and replacement of
earlier sales by others. Kansas Jack, Inc. v. Kuhn,
719 F.2d 1144, 1151, 219 USPQ 857, 861 (Fed. Cir.
1983). Also, evidence of commercial success can be
downgraded where there is no showing that the sales
represent a substantial share of any definable market
or that the profitability is anything out of the
ordinary in the industry involved. Cable Elec.
Prods., Inc. v. Genmark, Inc., 770 F.2d 1015, 1026-
1027, 226 USPQ 881,887 (Fed. Cir. 1985). Eric
Polesuk’s Third Declaration does not provide us with
any of the above-mentioned evidence regarding
appellant’s burden in connection with commercial
success. It would therefore be improper to infer that
reported sales represent a substantial share of any
definable market or that profitability is anything out
of the ordinary in the pertinent industry. Ex parte
Remark, 15 USPQ2d 1498, 1505 (Bd.Pat.App.&Int 1990).

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C. Eric Polesuk’s Other Declaration having
Attachment A

Appellant discusses Attachment A, beginning on
page 9 of the brief, summarized as follows. Appellant
states that Attachment A shows the introduction dates
of the competitor’s dispensers, after the filing date
of the present application. Appellant states that the
fact that dispensers of foil were sold in the food
industry was known by everyone who wraps their food
products at home. Appellant states that Attachment A
demonstrates that the success of the roll foil
dispenser business is not related to the selling
price, as in most cases, the prices of Product Club
are higher than the competition. Appellant states
that Attachment A also shows that the success of roll
foil is not related to the colors, as the five colors
chosen are industry standards. Appellant states that
Attachment A shows that the success of the roll foil
business is not related to the overall length of roll
foil that is offered for sale as this is also industry
standard. Brief, page 9. Appellant also states that
a further indication of non-obviousness is copying.
Appellant states that as shown by Attachment A,
Product Club introduced the dispenser of the present
application in January of 2000. The other companies
in the industry who offered the dispenser with the
metal cutting edge began introducing them from March
2001 to July 2001. Brief pages 9-10. See also
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Attachment A on page 2 of Eric Polesuk’s Declaration
of Paper #18.
With regard to the issue of commercial success,
we find that this Declaration fails for the same
reasons discussed in Section IV. A. and B., above.
With regard to the issue of copying, more than
just copying is generally needed to establish
unobviousness. See In re GPAC Inc. 57 F.3d 1573,
1580, 35 USPQ2d 1116, 1121-22 (Fed. Cir. 1995). Also,
Attachment A does not indicate the circumstances in
which the other companies began selling their
dispensers. It is possible that these companies
independently designed their disepensers without
knowledge of appellant’s dispenser. Appellant does
not provide proof that in fact copying took place.

D. Scott Anders Declaration

With regard to Scott Anders Declaration,
appellant discusses this Declaration, beginning on
page 7 of the brief, as follows.

Scott Anders is the president of a leading US
company, which specializes in the manufacturing
and production of aluminum products, including,
institutional/industrial roll foil and a
multitude of food service containers comprised of
aluminum such as oven roasters, loaf pans, baking
pans, pie pans, and take out containers. Anders
Declaration, paragraph 1. One of the product
lines sold by Scot Anders’ company is
institutional/ household roll aluminum foil,
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which is sold exclusively into the food service
industry and retail food outlets for wrapping
food products. These rolls are offered in two
industry standard widths, 12 inches and 18
inches, and come in various different lengths.
Anders Declaration, paragraph 2. Scott Anders’
company is vertically integrated in the
production of roll foil as follows: rewinding
and slitting of master parent rolls into
commercially acceptable food service widths and
lengths, fastening an integrated metal cutting
edge to the foil dispenser boxes, assembling the
boxes, filling the boxes with roll foil, and
final pack-out for shipping to customers. Since
the company applies their own metal cutting edge
to the dispenser box, Scott Anders’ company
considers themselves to be experts in the area of
foil dispensers. Anders Declaration, paragraph 3.
Scott Anders has read and reviewed the Budny and
Clatterbuck patents. Scott Anders has reviewed
the hair foil package from Product Club covered
by the present patent application. In the
opinion of Scott Anders, Product Club’s hair foil
package represents a new, and non-obvious use,
for an existing application. Anders Declaration,
paragraph 4. Hair foil, which is claimed to be
from 3.5 and 6 inches wide has never been used in
the food service industry for the size is too
small and not practical for wrapping food
products. A roll of aluminum foil packaged in a
self dispensing box, containing an integrated
cutting blade, being of a width ranging from 3.5
to 6 inches, has never been utilized before in
the food service industry, or any other category
that he is aware of. Therefore, it is the
opinion of Scott Anders that Product Club’s
product covered by the present patent application
is unique and not obvious over Budny and
Clatterbuck or any other prior art. Anders
Declaration, paragraph 5. Food service roll foil
has been around for decades, but always in a
width greater than what is claimed in Product
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Club’s patent application. It is apparent that
the use of foil in the beauty industry requires
very specific sizing that the food industry has
never required. Anders declaration, paragraph 6.

In this Declaration, Scott Anders states that he
has reviewed the secondary references of Budny and
Clatterbuck, and provides his personal opinion that
appellant’s claimed invention represents a new and
unobvious use for an existing application. Scott
Anders also attests that it is his opinion that
appellant’s claimed invention is unobvious over the
prior art.
Hence, the Scott Anders Declaration represents an
expression of a personal opinion as to the
patentability of appellant’s claimed subject matter.
While “some weight ought to be given to a persuasively
supported statement of one skilled in the art on what
was not obvious to him”, legitimate inferences from
the art of record are weighed against opinions
expressed by a declarant. In re Lindell, 385 F. 2d
453, 455, 155 USPQ 521, 524 (CCPA 1967.
In the instant case, the obviousness rejection of
claim 1 includes the combination of the AAPA in view
of Clatterbuck or Budny. We refer to our discussion
of the prima facie case of obviousness involving the
combination of the AAPA in view of Clatterbuck or
Budny as set forth on pages 5-6 of this decision. As
we stated therein, the obviousness rejection is
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supported soundly by sufficient motivation found in
the prior art. Therefore, the legitimate inferences
from the art of record are too strong to be affected
by the weight to which the Anders affidavit is
entitled. In re Lindell, 385 F. 2d 453, 455, 155 USPQ
521, 524 (CCPA 1967.

E. Declarations of Sorbie, Tanas, and Benbassette

With regard to the Declarations of Sorbie,
Benbassette and Tanas, appellant states that these
declarants state that there were no foil dispensers
with integrated cutting blades used to dispense hair
foil for the Beauty Industry, having the features of
the claimed invention. Brief, page 9. Appellant
states that these declarants indicate that the
integrated metal cutting edge was instrumental in
their buying decisions. Brief, page 10. We refer to
pages 10 –11 of the brief, and to each Declaration,
regarding the specific statements made by each of
these declarants. Each of these Declarations are
summarized below.
The Sorbie Declaration contains statements
applauding the integrated metal cutting edge that
enables “to cut the foil quickly, efficiently, and
precisely”.
The Tanas Declaration contains statements
pointing out that previous products produced an
inaccurate edge to the foil and generated a lot of
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waste. Tanas states that “[i]n order to solve this
problem, I was forced to purchase several expensive
devices to properly dispense the foil. The systems in
addition to their cost, are bulky and take up valuable
counter space at the workstation. Earlier this year, I
tried a roll of hair foil from the Product Club. The
metal edge allows us to cut foil and to achieve the
end result we need, without the expense and
inconvenience of the system we had previously bought”.
The Benbassette Declaration contains statements
applauding the metal cutting edge of Product Club’s
dispenser that provides for cutting of foil accurately
and expeditiously and thus saves time, while
minimizing waste. Benbassette states that “[t]he
prior art product we switched from, utilized a
corrugated cutting edge that our operators found to be
too cumbersome to work with.”
The examiner’s position on each of these
declarations is set forth on page 12 of the answer.
The Declarations of Sorbie, Tanas, and
Benbassette represent the personal opinion of each
declarant. We therefore evaluate these declarations
in the same manner as we evaluated the opinion of
Scott Anders in the Anders Declaration, discussed,
supra. Each of the declarants states that they
purchased appellant’s roll foil product because of
the integrated cutting blade. Such statements are
relevant regarding whether appellant has established
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a nexus between the evidence and the merits of the
invention, i.e., that the customer bought the product
because of the features of the claimed invention.
Evidence showing that the customer bought the product
because of features of the claimed invention is
necessary. In re Huang, 100 F.3d 135, 139, 40 USPQ2d
1685, 1690 (Fed. Cir. 1996).
The Tanas and Benbasette Declarations do touch
upon the long-felt need consideration. For example,
Tanas indicates that an art recognized problem was
that corrugated cutting edges produced an inaccurate
edge to the foil and generated a lot of waste. The
problem was such that Tanas had to purchase “several
expensive devices to properly dispense the foil”.
Benbassette states that “[t]he prior art product we
switched from, utilized a corrugated cutting edge
that our operators found to be too cumbersome to work
with.”

F. The Weight of the Prima Facie Case of Obviousness
Versus the Weight of the Rebuttal Evidence

As stated, supra, persuasive secondary
considerations still may not outweigh a strong showing
of obviousness based on the other Graham factors.
See, e.g., Richardson-Vicks Inc. v. Upjohn Co., supra.
The weight of the legitimate inferences from the art
of record are compared with the weight of the rebuttal
evidence to determine whether the rebuttal evidence
Appeal No. 2004-1240
Application No. 09/742,691

23
overcomes the prima facie case. In re Lindell, 385 F.
2d 453, 455, 155 USPQ 521, 524 (CCPA 1967.
In the instant case, as stated, supra, the prima
facie case is supported soundly by the art of record.
On the other hand, appellant has not provided
convincing “commercial success” or “copying” evidence,
as discussed above. Some of the Declarations touch
upon the “long-felt need” consideration with some
merit (Tanas, Benbassette Declarations). However, the
rebuttal evidence as a whole does not outweigh the
thrust of the prima facie case of obviousness. We
therefore determine that the rebuttal evidence does
not overcome the prima face case of obviousness.

Appeal No. 2004-1240
Application No. 09/742,691

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V. Conclusion
The anticipation rejection is reversed.
Each of the obviousness rejections is affirmed.
No time period for taking any subsequent action
in connection with this appeal may be extended under
35 CFR § 1.136(a).

AFFIRMED

TERRY J. OWENS )
Administrative Patent Judge )
)
)
)
) BOARD PATENT
JEFFREY T. SMITH ) APPEALS
Administrative Patent Judge ) AND
)INTERFERENCES
)
)
)
BEVERLY A. PAWLIKOWSKI )
Administrative Patent Judge )

BAP:psb

Appeal No. 2004-1240
Application No. 09/742,691

25
Philip M. Weiss
Weiss & Weiss
Suite 201
310 Old Country Road
Garden City, NY 11530