Ex parte McCann

UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
Ex parte RICHARD J . McCANN
Appeal 2008-0785
Application 101772,136
Technology Center 3700
Decided: May 29,2008
Before MICHAEL R. FLEMING, Chief Administrative Patent Judge, and
WILLIAM F. PATE 111, SALLY C. MEDLEY, LINDA E. HORNER, and
JOSEPH A. FISCHETTI, Administrative Patent Judges.
HORNER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Richard J. McCann (Appellant) seeks our review under 35 U.S.C.
5 134 of the final rejection of claims 1 and 2. We have jurisdiction under 35
U.S.C. 5 6(b) (2002).

Appeal 2008-0785
Application 101772,136
SUMMARY OF DECISION
We AFFIRM.
THE INVENTION
The Appellant's claimed invention is to a folding knife with a
pivoting or retracting blade that is locked into an open position by a latch
member biased by a gas spring (Spec. 1:7-9). Claim 1, reproduced below, is
representative of the subject matter on appeal.
1. 	A knife, comprising:
a handle;
a blade movably secured to the handle so
that the blade is movable along a path of travel
between a closed position and an open position;
a latch member movable between a locked
position in which it extends into the path of travel
of a portion of the blade thereby preventing
movement of the blade and an unlocked position in
which it does not interfere with movement of the
blade;
a gas spring positioned to bias the latch
member into the locked position, the gas spring
comprising a movable wall that partially defines a
substantially sealed, variable volume chamber
containing a gas; and
wherein movement of the latch member
from the locked position to the unlocked position
causes the movable wall to reduce the volume of
the chamber, thereby compressing the gas to create
spring force against the latch member.

Appeal 2008-0785
Application 101772,136
THE REJECTION
The Examiner relies upon the following as evidence of
unpatentability :
Collins 	US 4,45 1,982
Poehlmann 	US 5,964,035
Jun. 5, 1984
Oct. 12, 1999
The Appellant seeks our review of the rejection of claims 1 and 2
under 35 U.S.C. 5 103(a) as unpatentable over Collins and Poehlmann.
ISSUE
The Appellant contends that the Examiner erred in rejecting claims 1
and 2 under 35 U.S.C. 5 103(a) as unpatentable over Collins and Poehlmann,
because the Examiner failed to give the submitted evidence of long felt,
unfilled need proper consideration as objective evidence of nonobviousness
(App. Br. 4). The Appellant further contends that "[nleither Collins nor
Poehlmann teach [sic] 'a movable wall that partially defines a substantially
sealed, variable volume chamber containing a gas' nor that movement of the
bolt or latch member 'causes the movable wall to reduce the volume of the
chamber, thereby compressing the gas to create spring force against the latch
member"' (App. Br. 7). The Appellant further contends that "Poehlmann's
vague and bare reference to a 'pneumatically-forced system' does not
provide sufficient direction to modify Collins to include 'a movable wall that
partially defines a substantially sealed, variable volume chamber containing
a gas' and that movement of the latch member 'causes the movable wall to

Appeal 2008-0785
Application 101772,136
reduce the volume of the chamber, thereby compressing the gas to create
spring force against the latch member' as presently claimed" (App. Br. 8).
The Examiner found Collins teaches all of the elements of the claimed
invention except the use of a gas spring, and that Poehlmann teaches
replacing a metal spring with a pneumatic or hydraulic biasing means for the
purpose of biasing a locking mechanism on a folding knife (Ans. 3). The
Examiner concluded that it would have been obvious to modify the knife of
Collins with a locking mechanism biased by a gas spring, as taught in
Poehlmann, because such a modification would require only routine skill in
the art, and using a pneumatic or hydraulic biasing means with a piston
would be more resilient to wear and less likely to break or deform when
pushed or pulled to extremes (Ans. 3). 	The Examiner further found that it
would be inherent in the design of a pneumatic spring that the variable
volume chamber would be sealed as otherwise no gas would be compressed
to make a spring as all the gas in the chamber would be forced out when the
piston was depressed (Ans. 4). The Examiner considered the Appellant's
objective evidence of nonobviousness, but found that this evidence was not
persuasive (Ans. 5-6).
The issue before us is whether the Appellant has shown that the
Examiner erred in rejecting claims 1 and 2 under 35 U.S.C. 5 103(a) as
unpatentable over Collins and Poehlmann. This issue turns on our
evaluation and weighing of both the evidence relied upon by the Examiner
and the objective evidence of nonobviousness provided by the Appellant.

Appeal 2008-0785
Application 101772,136
FINDINGS OF FACT
We find that the following enumerated findings are supported by at
least a preponderance of the evidence. Ethicon, Znc. v. Quigg, 849 F.2d
1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for
proceedings before the Office).
1. 	Collins discloses a knife having a handle 10 and a blade 12
pivotally connected to the handle so that the blade can be opened
into an open position (Fig. 1) and folded into a slot 18 of the
handle in a closed position (Fig. 6) (Collins, col. 2,ll. 28-34).
2. 	The knife includes an internal bolt mechanism 24 (latch member)
for selectively locking the blade in the open position (Collins,
col. 2, 11. 35-38).
3. 	The bolt 24 is urged toward a first end 17 of the handle by "a
spring or other biasing mechanism 62" (Collins, col. 3,ll. 31-33;
Fig. 5).
4. 	Collins does not disclose a gas spring positioned to bias the bolt 24
into the locked position, where the gas spring comprises a movable
wall that partially defines a substantially sealed, variable volume
chamber containing a gas, and wherein movement of the bolt from
the locked position to the unlocked position causes the movable
wall to reduce the volume of the chamber, thereby compressing the
gas to create spring force against the bolt mechanism 24.
5. 	Poehlmann, likewise, discloses a knife having a handle and a
blade 2 mounted to the handle so as to permit rotation about an
5

Appeal 2008-0785
Application 101772,136
axis from a folded or closed configuration (Fig. 3) to an extended
or open configuration (Fig. 4) (Poehlmann, col. 3,ll. 10-15).
6. 	Poehlmann's knife also includes a key locking mechanism (latch
member) designed to lock the blade in place relative to the handle
when the blade is in the open configuration (Poehlmann, col. 4,
11. 20-41).
7. 	The key locking mechanism uses a helical spring 208 to bias a key
device 6 outwardly such that the locking keys 234 and 236 are
positioned partially in the keyways 238 and 240 of the right handle
plate 1 and partially in the keyways 214 and 216 of the blade 2 to
prevent any rotation of the blade with respect to the handle
(Poehlmann, col. 4,ll. 13-41; Fig. 2).
8. 	To rotate the blade 2, a user compresses the key locking
mechanism to move the key 6 against the bias of spring 208 to a
position such that the keys 234 and 236 reside solely within the
blade keyways 214 and 216 and are clear of the right plate
keyways 238 and 240 (Poehlmann, col. 4,l. 59 - col. 5,l. 14;
Fig. 6A).
9. 	Poehlmann teaches that "[a] biasing or urging means other than
helical spring 208 can be provided such as a compression spring, a
leaf spring, a resiliently deformable plastic or other material and/or
hydraulic or pneumatic forced systems" (Poehlmann, col. 8,
11. 31-35).
10. 	A pneumatic forced system describes a gas spring.
6

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Application 101772,136
11. 	Although Poehlmann discloses using a gas spring to bias the key
locking member into the locked position, it does not expound on
the particular construction or operation of the gas spring, viz,
having a movable wall that partially defines a substantially sealed,
variable volume chamber containing a gas, and wherein movement
of the key locking member from the locked position to the
unlocked position causes the movable wall to reduce the volume of
the chamber, thereby compressing the gas to create spring force
against the key locking member.
12. 	A person of ordinary skill in the art would have known that metal
biasing springs used in locking mechanisms fail as a result of
fatigue andlor breakage (McCann Decl. 1:¶¶5, 13; Declaration of
Charles W. Karwan 1:¶5).
13. 	A person having ordinary skill in the art would have been familiar
with the conventional construction of gas springs in the form of a
sealed piston unit filled with gas wherein the compressibility of the
gas supplies the force for the piston assembly to function as a
spring (Karwan Decl. 2:¶6).
14. 	A person having ordinary skill in the art would have been familiar
with common gas springs at the time of the invention, including
the conventional construction of gas springs comprising a movable
wall that partially defines a substantially-sealed, variable volume
chamber containing a gas, wherein the movable wall reduces the
volume of the chamber, thereby compressing the gas to create a
7

Appeal 2008-0785
Application 101772,136
biasing spring force. See e.g., U.S. Patent No. 4,240,619 to
Wirges, issued December 23, 1980, which was made of record by
the Examiner in the Final Office Action (Final Office Action 4).
15. 	Wirges discusses conventional gas springs used in the trunk lids of
automobiles in the background section of the patent, in which a gas
spring is arranged between the body and a pivotally-mounted trunk
lid, and gas pressure in the spring causes the lid to swing upward
from its lowermost position when the trunk lock is opened
(Wirges, col. 1, 11. 24-28).
16. 	Wirges describes that "[iln the most common gas springs in current
practical use, the gas pressure is sufficient fully to open the lid and
to hold it in the open position although the biasing force of the
expanding gas in the spring decreases as the lid rises" (Wirges,
col. 1, 11. 28-32).
17. 	One having ordinary skill in the art would understand that to
implement such a common gas spring wherein the gas pressure in
the spring is sufficient to open the trunk lid when the trunk is
unlocked due to expanding gas pressure, that one would need a
sealed, variable volume container with a piston disposed therein,
such that the compressed gas in the container provides the biasing
force to open and maintain the lid in the open position due to the
expansion of the gas in the container.

Appeal 2008-0785
Application 101772,136
PRINCIPLES OF LAW
"Section 103 forbids issuance of a patent when 'the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains."' 	KSR Znt'l Co. v. Telejlex Znc., 127 S.Ct. 1727,
1734 (2007). The question of obviousness is resolved on the basis of
underlying factual determinations including (1) the scope and content of the
prior art, (2) any differences between the claimed subject matter and the
prior art, (3) the level of skill in the art, and (4) where in evidence, so-called
secondary considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18
(1966). See also KSR, 127 S.Ct. at 1734 ("While the sequence of these
questions might be reordered in any particular case, the [Graham] factors
continue to define the inquiry that controls.")
In KSR, the Supreme Court emphasized "the need for caution in
granting a patent based on the combination of elements found in the prior
art," id. at 1739, and discussed circumstances in which a patent might be
determined to be obvious. In particular, the Supreme Court emphasized that
"the principles laid down in Graham reaffirmed the 'functional approach' of
Hotchkiss, 11 How. 248." KSR, 127 S.Ct. at 1739 (citing Graham, 383 U.S.
at 12 (emphasis added)), and reaffirmed principles based on its precedent
that "[tlhe combination of familiar elements according to known methods is

Appeal 2008-0785
Application 101772,136
likely to be obvious when it does no more than yield predictable results." Id.
The Court explained:
When a work is available in one field of endeavor,
design incentives and other market forces can
prompt variations of it, either in the same field or a
different one. If a person of ordinary skill can
implement a predictable variation, 5 103 likely
bars its patentability. For the same reason, if a
technique has been used to improve one device,
and a person of ordinary skill in the art would
recognize that it would improve similar devices in
the same way, using the technique is obvious
unless its actual application is beyond his or her
skill.
Id. at 1740. The operative question in this "functional approach" is thus
"whether the improvement is more than the predictable use of prior art
elements according to their established functions." Id.
The Supreme Court stated that there are "[tlhree cases decided after
Graham [that] illustrate the application of this doctrine." Id. at 1739. "In
United States v. Adams, . . . [tlhe Court recognized that when a patent claims
a structure already known in the prior art that is altered by the mere
substitution of one element for another known in the field, the combination
must do more than yield a predictable result." Id. at 1739-40. "Sakraida
and Anderson 's-Black Rock are illustrative - a court must ask whether the
improvement is more than the predictable use of prior art elements according
to their established function." Id. at 1740.
The Supreme Court stated that "[f]ollowing these principles may be
more difficult in other cases than it is here because the claimed subject
10

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Application 101772,136
matter may involve more than the simple substitution of one known element
for another or the mere application of a known technique to a piece of prior
art ready for the improvement." Id. The Court explained:
Often, it will be necessary for a court to look to
interrelated teachings of multiple patents; the
effects of demands known to the design
community or present in the marketplace; and the
background knowledge possessed by a person
having ordinary skill in the art, all in order to
determine whether there was an apparent reason to
combine the known elements in the fashion
claimed by the patent at issue.
Id. at 1740-41. The Court noted that "[tlo facilitate review, this analysis
should be made explicit." Id. (citing In re Kahn, 441 F.3d 977, 988 (Fed.
Cir. 2006) ("[R]ejections on obviousness grounds cannot be sustained by
mere conclusory statements; instead, there must be some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness")). However, "the analysis need not seek out precise teachings
directed to the specific subject matter of the challenged claim, for a court
can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ." Id.
The Federal Circuit recently concluded that it would have been
obvious to combine (1) a mechanical device for actuating a phonograph to
play back sounds associated with a letter in a word on a puzzle piece with
(2) an electronic, processor-driven device capable of playing the sound
associated with a first letter of a word in a book. Leapfrog Ent., Inc. v.
Fisher-Price, Inc., 485 F.3d 1157, 1161 (Fed. Cir. 2007) ("[a]ccommodating
11

Appeal 2008-0785
Application 101772,136
a prior art mechanical device that accomplishes [a desired] goal to modern
electronics would have been reasonably obvious to one of ordinary skill in
designing children's learning devices"). In reaching that conclusion, the
Federal Circuit recognized that "[aln obviousness determination is not the
result of a rigid formula disassociated from the consideration of the facts of a
case. Indeed, the common sense of those skilled in the art demonstrates why
some combinations would have been obvious where others would not." 	Id.
at 1161 (citing KSR, 127 S.Ct. 1727, 1739 ("The combination of familiar
elements according to known methods is likely to be obvious when it does
no more than yield predictable results.")). 	The Federal Circuit relied in part
on the fact that Leapfrog had presented no evidence that the inclusion of a
reader in the combined device was "uniquely challenging or difficult for one
of ordinary skill in the art" or "represented an unobvious step over the prior
art." Id. (citing KSR, 127 S.Ct. at 1740-41).
Scope and Content
In determining the scope and content of the prior art, we consider not
only whether the elements are found expressly in the prior art reference, but
also whether the elements are found inherently therein. "To establish
inherency, the extrinsic evidence must make clear that the missing
descriptive matter is necessarily present in the thing described in the
reference, and that it would be so recognized by persons of ordinary skill.
Inherency, however, may not be established by probabilities or possibilities.

Appeal 2008-0785
Application 101772,136
The mere fact that a certain thing may result from a given set of
circumstances is not sufficient." In re Robertson, 169 F.3d 743, 745 (Fed.
Cir. 1999) (citations omitted) (internal quotation marks omitted).
Level of Ordinary Skill in the Art
In determining the level of ordinary skill in the art, we consider
various factors to shed light on what a hypothetical person of ordinary skill
would have known at the time of the invention.
The person of ordinary skill in the art is a
hypothetical person who is presumed to know the
relevant prior art. Custom Accessories, Inc. v.
Jefrey-Allan Indus., Inc., 807 F.2d 955, 962, 1
USPQ2d 1196, 1201 (Fed. Cir. 1986). 	In
determining this skill level, the [Board] may
consider various factors including "type of
problems encountered in the art; prior art solutions
to those problems; rapidity with which innovations
are made; sophistication of the technology; and
educational level of active workers in the field."
Id. In a given case, every factor may not be
present, and one or more factors may predominate.
Id. at 962-63, 1 USPQ2d at 1201.
In re GPAC, 57 F.3d 1573, 1579 (Fed. Cir. 1995). "A person of ordinary
skill is also a person of ordinary creativity, not an automaton." KSR, 127
Secondary Considerations
In our determination of obviousness under 35 U.S.C. 5 103, we also
carefully weigh, in addition to the evidence relied upon by the Examiner, the

Appeal 2008-0785
Application 101772,136
objective evidence of nonobviousness provided by Appellant.
To be given substantial weight in the determination of obviousness or
nonobviousness, evidence of secondary considerations must be relevant to
the subject matter as claimed, and therefore the examiner must determine
whether there is a nexus between the merits of the claimed invention and the
evidence of secondary considerations. Ashland Oil, Inc. v. Delta Resins &
Refractories, Inc., 776 F.2d 281, 305 n.42 (Fed. Cir. 1985), cert. denied, 475
U.S. 1017 (1986). In particular, an applicant asserting secondary
considerations to support its contention of nonobviousness bears the burden
of proof of establishing a nexus between the claimed invention and evidence
of secondary considerations. For example, in the case of evidence of
commercial success, the Federal Circuit has acknowledged that the applicant
bears the burden of establishing a nexus, stating:
In the ex parte process of examining a patent
application, however, the PTO lacks the means or
resources to gather evidence which supports or
refutes the applicant's assertion that the
sale constitutes commercial success. C.$ Ex parte
Remark, 15 USPQ2d 1498,1503 (Bd. Pat. App. &
Int. 1990)(evidentiary routine of shifting burdens
in civil proceedings inappropriate in ex parte
prosecution proceedings because examiner has no
available means for adducing evidence).
Consequently, the PTO must rely upon the
applicant to provide hard evidence of commercial
success.
In re Huang, 100 F.3d 135, 139-40 (Fed. Cir. 1996). See also In re GPAC,
57 F.3d 1573, 1580 (Fed. Cir. 1995); In re Paulsen, 30 F.3d 1475, 1482

Appeal 2008-0785
Application 101772,136
(Fed. Cir. 1994) (Evidence of commercial success of articles not covered by
the claims subject to the obviousness rejection was not probative of
nonobviousness).
Objective evidence of nonobviousness, including commercial success,
must be commensurate in scope with the claims. In re Tifin, 	448 F.2d 791
(CCPA 1971) (evidence showing commercial success of thermoplastic foam
"cups" used in vending machines was not commensurate in scope with
claims directed to thermoplastic foam "containers" broadly). In order to be
commensurate in scope with the claims, the commercial success must be due
to claimed features, and not due to unclaimed features. Joy Technologies
Znc. v. Manbeck, 751 F. Supp. 225,229 (D.D.C. 1990), afd, 	959 F.2d 226,
228 (Fed. Cir. 1992) (Features responsible for commercial success were
recited only in allowed dependent claims, and therefore the evidence of
commercial success was not commensurate in scope with the broad claims at
issue.). An inventor's opinion as to the purchaser's reason for buying the
product is insufficient to demonstrate a nexus between the sales and the
claimed invention. In re Huang, 100 F.3d 135, 140 (Fed. Cir. 1996).
Further, gross sales figures do not show commercial success absent evidence
as to market share, Cable Electric Products, Znc. v. Genrnark, Znc., 770 F.2d
1015 (Fed. Cir. 1985), or as to the time period during which the product was
sold, or as to what sales would normally be expected in the market, Ex parte
Standish, 10 USPQ2d 1454 (BPAI 1988).
Establishing long-felt need requires objective evidence that an
art-recognized problem existed in the art for a long period of time without
15

Appeal 2008-0785
Application 101772,136
solution. In particular, the evidence must show that the need was a
persistent one that was recognized by those of ordinary skill in the art. In re
Gershon, 372 F.2d 535,539 (CCPA 1967). The relevance of long-felt need
and the failure of others to the issue of obviousness depend on several
factors. First, the need must have been a persistent one that was recognized
by those of ordinary skill in the art. Orthopedic Equipment Co. v. All
Orthopedic Appliances, Inc., 707 F.2d 1376 (Fed. Cir. 1983); see also In re
Gershon, 372 F.2d 535,539 (CCPA 1967). Second, the long-felt need must
not have been satisfied by another before the invention by applicant. Newel1
Companies v. Kenney Mfg. Co., 864 F.2d 757,768 (Fed. Cir. 1988) ("[Olnce
another supplied the key element, there was no long-felt need or, indeed, a
problem to be solved.") Third, the invention must in fact satisfy the long-
felt need. In re Cavanagh, 436 F.2d 491 (CCPA 1971). "[Llong-felt need is
analyzed as of the date of an articulated identified problem and evidence of
efforts to solve that problem." 	Texas Instruments, Inc. v. ITC, 988 F.2d
1165, 1178 (Fed. Cir. 1993).
ANALYSIS
The Appellant states claims 1 and 2 stand and fall together (App.
Br. 3). As such, we select claim 1 as the representative claim.
Scope and Content of the Prior Art
Collins discloses a knife having all of the elements of claim 1 except
that it shows using a metal spring rather than a gas spring to bias the latch
16

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Application 101772,136
member (Facts 1-3). Collins teaches, however, that the latch member can be
biased by "a spring or other biasing mechanism" (Fact 3). Poehlmann,
likewise, discloses a folding knife having a blade that can be locked in place
relative to the handle and that uses a helical spring to bias the locking
mechanism (Facts 5-8). Poehlmann further teaches that "[a] biasing or
urging means other than helical spring 208 can be provided such as a
compression spring, a leaf spring, a resiliently deformable plastic or other
material and/or hydraulic or pneumatic forced systems" (Fact 9). A
pneumatic forced system describes a gas spring (Fact 10).
Dzflerences between the Prior Art and the Claimed Invention
Although Collins suggests using biasing means other than a metal
spring (Fact 3), it does not specifically disclose using a gas spring as a
biasing force on its latch member (Fact 4). Poehlmann discloses using a gas
spring to bias its key locking member into the locked position (Facts 9, 10).
Poehlmann does not, however, expound on the particular construction or
operation of the gas spring, viz, having a movable wall that partially defines
a substantially sealed, variable volume chamber containing a gas, and
wherein movement of the key locking member from the locked position to
the unlocked position causes the movable wall to reduce the volume of the
chamber, thereby compressing the gas to create spring force against the key
locking member (Fact 11). We find, however, that a person having ordinary
skill in the art would have been familiar with common gas springs at the
time of the invention, including the conventional construction of gas springs
17

Appeal 2008-0785
Application 101772,136
comprising a movable wall that partially defines a substantially-sealed,
variable volume chamber containing a gas, wherein the movable wall
reduces the volume of the chamber, thereby compressing the gas to create a
biasing spring force (Facts 14-17). See KSR, 127 S.Ct. at 1742 ("A person
of ordinary skill is also a person of ordinary creativity, not an automaton").
The Appellant appears to argue that the disclosure in Poehlmann to
use a pneumatic forced system is not enabling and thus not properly
considered in a determination of obviousness (Reply Br. 5). A reference
needs not provide an enabling disclosure for conventional devices that are
well known in the art. In this case, the conventional construction of a gas
spring is well known.
Level of Ordinary Skill in the Art
The Appellant asserts that a person of ordinary skill in the art of knife
design is likely to be a general machinist with little or no specialized training
in knife design, but with several years of hands-on experience (Declaration
of Richard J. McCann 1:¶4). The Examiner has not disputed the Appellant's
position, nor has the Examiner proffered a different level of skill in the art.
We find that a person of ordinary skill in the art would have known
that metal biasing springs used in locking mechanisms fail as a result of
fatigue and/or breakage (Fact 12).' 	We further find that a person having
1 We do not rely on the declarations of Messrs. Covert and Cutshaw for this
finding, as they are not persons of ordinary skill in the art of knife design as
defined by Appellant. Mr. Covert has training and experience as an author
and journalist (Covert Decl. 1:¶¶ 4, 5), and Mr. Cutshaw has training and
18

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Application 101772,136
ordinary skill in the art would have been familiar with the conventional
construction of gas springs in the form of a sealed piston unit filled with gas
wherein the compressibility of the gas supplies the force for the piston
assembly to function as a spring (Fact 13).
Prima Facie Case
As we found supra, the knife disclosed in Collins is the same as the
claimed knife except that it employs a metal spring for the biasing
mechanism. Poehlmann teaches using a gas spring in place of a metal spring
as a biasing force in a foldable knife. As such, the Examiner's suggested
modification to the knife of Collins to use the gas spring of Poehlmann is
nothing more than the mere substitution of one element for another known in
the field. See KSR, 127 S.Ct. at 1740 ("when a patent claims a structure
already known in the prior art that is altered by the mere substitution of one
element for another known in the field, the combination must do more than
yield a predictable result"). The Appellant has not provided any evidence to
show that the use of the gas spring in place of the conventional metal spring
yielded unexpected results or was beyond the skill of one having ordinary
skill in the art.
We further found supra that those skilled in the art would have been
familiar with the conventional construction of a gas spring, comprising a
movable wall that partially defines a substantially-sealed, variable volume
experience in technical and strategic intelligence (Cutshaw Decl. l:¶¶ 4, 5).
Neither is a general machinist with several years of hands-on experience in
knife design.
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Application 101772,136
chamber containing a gas, wherein the movable wall reduces the volume of
the chamber, thereby compressing the gas to create a biasing spring force.
As such, it would have been obvious to one having ordinary skill in the art,
when implementing the substitution of a gas spring for the metal spring in
Collins, to have used the conventional gas spring as was well known in the
art. Thus, we have determined that the Examiner has set forth a prima facie
case of obviousness of claimed subject matter.
Inasmuch as we have concluded that the subject matter of Appellant's
claims 1 and 2 are prima facie obvious, and because Appellant has furnished
evidence in rebuttal of obviousness, we now turn to consider this evidence.
When such evidence is presented, it is our duty to consider all evidence
anew. See, e.g., In re Eli Lilly and Co., 902 F.2d 943 (Fed. Cir. 1990). We
are also mindful that objective evidence of nonobviousness in any given case
may be entitled to more or less weight depending on its nature and its
relationship with the merits of the invention. See Strato$ex 	Znc. v. Aeroquip
Corp., 713 F.2d 1530 (Fed. Cir. 1983).
Secondary Considerations
We recognize that evidence of secondary considerations, such as that
presented by the Appellant, must be considered in route to a determination
of obviousnesslnonobviousness under 35 U.S.C. 5 103. Accordingly, we
consider anew the issue of obviousness under 35 U.S.C. 5 103, carefully
evaluating and weighing both the evidence relied upon by the Examiner and
the objective evidence of nonobviousness provided by the Appellant.
20

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Application 101772,136
The Appellant presents evidence of commercial success and long-felt,
but unmet, need. We first examine the Appellant's evidence of commercial
success.
The Appellant states that he has sold seven limited production knives
and that he recently displayed his knife at a trade show and it garnered
"substantial interest" (App. Br. 10-11; McCann Decl. 2-3:¶¶10,1 2).2 As
acknowledged by the Appellant himself, this evidence of commercial
success is scant (App. Br. 11, noting that "commercial success is not the
primary argument in support of the secondary considerations of
nonobviousness in this case").
We must first examine whether the Appellant met its burden of
establishing a nexus between the claimed invention and the evidence of
secondary considerations. In re Huang, 100 F.3d at 139-40. We first note
that the evidence provided by the Appellant provides no connection between
the claimed knife and the Appellant's 	old air^^ knife, which is the basis for
2 The McCann Declaration refers to "Statements" of Kim Breed and John
Larsen purporting to demonstrate the industry's interest in the Appellant's
knife and that the locking mechanism of the knife is unique and nonobvious
and provides a solution to the long-felt need of breakage of coil and leaf
springs (McCann Decl. 3:¶¶13,14). These Statements do not include the
language required by 18 U.S.C. 5 1001. The reason for requiring evidence
in declaration or affidavit form is to obtain the assurances that any
statements or representations made are correct, as provided by 35 U.S.C.
5 25 and 18 U.S.C. 5 1001. As such, we will not consider the information
provided in these Statements in our weighing of the evidence of secondary
considerations of nonobviousness.

Appeal 2008-0785
Application 101772,136
the evidence of commercial success. In particular, the Appellant has not
submitted sufficient evidence to show how the commercial embodiment of
the knife is constructed and whether it is the same as the claimed knife
having a movable wall that partially defines a substantially sealed, variable
volume chamber containing a gas and wherein movement of the latch
member from the locked position to the unlocked position causes the
movable wall to reduce the volume of the chamber, thereby compressing the
gas to create spring force against the latch member.
The Appellant submitted an article written by John Larsen reviewing
the Appellant's "Air-Lock" pocket knife, presumably to bolster his argument
of commercial success by demonstrating approval by the industry and to
show a nexus between the alleged commercial success and the use of a gas
spring in the knife, as ~ l a i m e d . ~	The Larsen article was submitted for the
first time in the record as an attachment to the Appellant's Appeal Brief, and
no mention of it was made in the Evidence Appendix. In the Appeal Brief,
the Appellant states:
Since making this statement, Mr. Larsen authored
an article published in the January 2007 edition of
Tactical Knives magazine lauding the uniqueness
of the gas spring of Mr. McCann's knife. Because
this article was not previously available, it was not
in the record before the Examiner and, therefore, is
not in the record before the Board.
3 Larsen, John A., "The Air-Lock Pocket Knife," Tactical Knives 38-41
(date unknown).
22

Appeal 2008-0785
Application 101772,136
(App. Br. 14). Our rules for filing an appeal to the Board require that the
Appellant file with its Appeal Brief "[aln appendix containing copies of any
evidence submitted pursuant to [37 C.F.R.] $ 5 1.130, 1.131, or 1.132 of this
title or of any other evidence entered by the examiner and relied upon by the
appellant in the appeal, along with a statement setting forth where in the
record that evidence was entered in the record by the examiner." 	37 C.F.R.
5 41.37(c)(l)(vii) (2007). The rules further state that "[rleference to
unentered evidence is not permitted in the brief," 37 C.F.R.
5 41.37(c)(l)(ix), and "[a] brief shall not include any new or non-admitted
evidence, or any new or non-admitted affidavit or other evidence." 37
C.F.R. 5 41.37(~)(2).Our rules do provide for the filing of evidence with
the Examiner after the filing of a notice of appeal, but prior to filing an
Appeal Brief. See 37 C.F.R. 5 41.33. The Appellant did not file the Appeal
Brief until March 28, 2007, presumably at least three months after the article
became available; however, the Appellant did not make the showing to the
Examiner required under this rule to justify that the article should be entered
in the record. The Appellant thus correctly stated in the Appeal Brief that
the article is not in the record before us, and as such, we will not consider
the article. 	The Appellant has directed us to no other evidence that his
customers purchased the knife because of its inventive features (i.e., gas
spring construction) and the advantages flowing therefrom.
Further, even if we are to consider the evidence of commercial
success as sufficiently connected to the claimed knife, the Appellant has
provided evidence of only seven sales of his limited production ($400) knife
23

Appeal 2008-0785
Application 101772,136
and has proffered no evidence of sales of his production ($200) knife. The
Appellant has also failed to provide persuasive evidence as to market share
so as to put the evidence of gross sales figures into perspective in the context
of the particular market at hand. As such, we find the Appellant's evidence
of commercial success to be of no value to our determination of
nonobviousness.
We next review the Appellant's evidence of long-felt need and failure
of others. Upon review of all of the evidence of long-felt need submitted by
the Appellant we have no idea of exactly when the articulated problem, viz,
failure of metal springs in locking mechanisms used in foldable knives, was
first identified. As such, we have no way of knowing just how long the need
for a solution to the problem existed. "[Llong-felt need is analyzed as of the
date of an articulated identified problem and evidence of efforts to solve that
problem." 	Texas Instruments, Znc. v. ZTC, 988 F.2d 1165, 1178 (Fed. Cir.
1993).
The declarations submitted by the Appellant demonstrate only that the
need for a solution to the articulated problem existed as of May 18, 2006, the
day on which the earliest declaration was signed. This is not evidence of a
"long-felt" need nor does it evince that the need was a persistent one in the
art. Orthopedic Equipment, 707 F.2d 1376; see also In re Gershon, 372
F.2d at 539.
Further, the Appellant has proffered no persuasive evidence that
others in the industry had made attempts to solve the articulated problem and
failed. The Declarations merely state that the problem of spring failure was
24

Appeal 2008-0785
Application 101772,136
known in the art at the time the declarations were signed. None of the
declarants, including those who were journalists and are presumably familiar
with the prior art in knife designs, offered supporting evidence that others
had attempted to solve this problem. The only evidence offered was to state
that to their knowledge no one had solved the problem the same way that the
Appellant solved it. 	Thus, the evidence of long-felt need proffered by the
Appellant is not sufficient to show the duration of the problem or the efforts
and/or resources expended during that time to solve the problem.
Further, the Poehlmann reference appears to satisfy the long-felt need
by teaching that other mechanisms, aside from metal springs that are subject
to failure, can be used as a spring force in a folding knife (Fact 9). Newell
Companies, 864 F.2d at 768 ("[Olnce another supplied the key element,
there was no long-felt need or, indeed, a problem to be solved.")
Obviousness Determination
Having now considered all the evidence presented by Appellant
against obviousness and weighing all the evidence anew, it is our conclusion
that the evidence for obviousness greatly outweighs the evidence against
obviousness. See In re Fenton, 451 F.2d 640, 643 (CCPA 1971) (the court
balanced the Patent Office's case against the strength of appellant's objective
evidence of non-obviousness.) Accordingly, it is our legal conclusion that
the subject matter of claims 1 and 2 are unpatentable under 35 U.S.C. 5 103.
The Appellant attempted in some of the declarations to submit opinion
evidence from the declarants as to the ultimate legal conclusion of

Appeal 2008-0785
Application 101772,136
obviousness. As we found supra, Messrs. Covert and Cutshaw are not
persons having ordinary skill in the art under the Appellant's own definition
of such, and thus their opinions as to the obviousness or nonobviousness of
the subject matter of the Appellant's claimed invention are of no value.
Further, contrary to the mischaracterization in paragraph 14 of the McCann
Declaration, the Larsen Statement does not purport to state that the locking
mechanism of the claimed invention is "nonobvious." Further, Mr. Larsen
also does not qualify as one having ordinary skill in the art according to the
Appellant's own definition. Finally, the opinion evidence of
nonobviousness proffered in the Karwan Declaration is conclusory with
insufficient factual basis to support the assertions made. For example, Mr.
Karwan does not state that he reviewed the Collins and Poehlmann
references, nor does he state his understanding of the legal standard for
nonobviousness.
The Appellant also argues that this case is analogous to the facts
before the Court in Eibel Process Company v. Minnesota & Ontario Paper
Co., 261 U.S. 45 (1923) and before the Court of Customs and Patent
Appeals in In re Conover, 304 F.2d 680 (CCPA 1962). We disagree. In
Eibel and Conover, it was the discovery of the source of the problems in the
prior art, not before known, that made the claimed remedies non-obvious.
See Eibel, 261 U.S. at 67-68 and Conover, 304 F.2d at 681-82. In this case,
the Appellant has provided evidence from multiple declarants attesting to the
fact that the source of the problem in the art of foldable knives, viz, the
failure of the metal biasing springs due to fatigue and breakage, was well
26

Appeal 2008-0785
Application 101772,136
known in the art at the time of the i n ~ e n t i o n . ~	AS such, the Appellant's
invention, unlike in these prior cases, does not rest, in part, upon the
discovery of the source of the problem with the prior art.
Based on our review and consideration of all of the evidence before
us, we conclude that the subject matter of claim 1 would have been obvious
to one having ordinary skill in the art at the time the invention was made,
and thus we sustain the Examiner's rejection of claims 1 and 2 under
35 U.S.C. 5 103(a) as unpatentable over Collins and Poehlmann.
CONCLUSIONS OF LAW
We conclude the Appellant has failed to show that the Examiner erred
in rejecting claims 1 and 2 under 35 U.S.C. 5 103(a) as unpatentable over
Collins and Poehlmann.
DECISION
The decision of the Examiner to reject claims 1 and 2 is affirmed. No
time period for taking any subsequent action in connection with this appeal
may be extended under 37 C.F.R. 5 1.136(a). See 37 C.F.R.
5 1.136(a)(l)(iv) (2007).
AFFIRMED
vsh
4 See Karwan Decl. ¶ 5, Covert Decl. ¶ 7, and Cutshaw Decl. ¶ 7.
27

Appeal 2008-0785
Application 10/772,136
JAMES C. EAVES JR.
GREENEBAUM DOLL & MCDONALD PLLC
3500 NATIONAL CITY TOWER
101 SOUTH FIFTH STREET
LOUISVILLE KY 40202