Appeal No. 95-2454
Application No. 07/396,733
of the invention. Patents are cited in applications for many purposes. In order to give the fact of numerous
citations any weight it would be necessary to prove the reasons why the patent was cited. We have not
been directed to any such evidence.
In summary, applicant has failed to prove that the specific subject matter of the claims is used for
“wide-scale commercial IC fabrication” or has achieved wide scale industry recognition as a major advance
in the art.
Applicant has also asserted that
the present invention has been, and continues to be, a huge commercial success.
The invention has fulfilled the long-felt need of increasing IC packing density and
has received considerable industry recognition for being able to do so.
Brief, p. 36. As evidence of commercial success, generally relies upon the same publications and patents
relied upon for showing acceptance in the industry. However, we have not been directed to evidence of
market share, growth in market share, or replacing earlier units sold by others or of dollar amounts which
are indicia of commercial success. Kansas Jack, Inc. v. Kuhn, 719 F.2d 1144, 1151, 219 USPQ 857,
861 (Fed. Cir. 1983). Nor have we been directed to evidence of a nexus between the alleged successful
commercialization and the merits of the invention. As we indicated above applicant has not even pointed
out where in the evidence, the specific limitations of the claims are disclosed. Prima facie evidence of a
nexus requires that the purported commercial success flow from the invention as claimed.
As to applicant’s assertion that the claimed invention satisfied a long felt need, again the evidence
falls short. To show long felt need requires evidence that a problem existed in the art without solution, i.e.,
that others had tried and failed to find a solution. In re Mixon, 470 F.2d 1374, 1377, 176 USPQ 296, 299
(CCPA 1973); In re Allen, 324 F.2d 993, 997, 139 USPQ 492, 495 (CCPA 1963). Applicant has not
directed us to evidence which shows that others had tried and failed to solve the problem. Applicant
asserts that the long felt need satisfied by the invention was increased integrated circuit packing density.
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