Appeal 2007-1366
Application 90/005,090
1 attached to the Declaration in the official PTO record and an Exhibit 3 was
2 not located in a review of that record.8 Based upon the record before us,
3 Patentee failed to prove unexpected results.
4 In any event, taking the declaration statements in ¶ 9 at face value, the
5 declaration does not establish that the materials were comparable and
6 differed only in the cross-linking agent. To show unexpected results, a
7 comparison of the invention with the prior art must be under identical
8 conditions except for the novel features of the invention. In re Brown,
9 459 F.2d 531, 173 USPQ 685 (CCPA 1972).
10 Patentee also relies on ¶¶ 8-10 of the Neefe declaration to show
11 commercial success, long felt need and copying by others. Reply Brief in
12 Response to Supplemental Examiner’s Answer filed September 9, 2005,
13 p. 3, p. 20.
14 Secondary considerations such as commercial success, long felt need,
15 and copying by others, while relevant to the obviousness inquiry, must be
16 proved with clear and convincing evidence. Snow, 471 F.2d at 1404,
17 176 USPQ at 331; Miegel, 404 F.2d at 381, 159 USPQ at 717; Heyna,
18 360 F.2d at 228, 149 USPQ at 697; Lohr, 317 F.2d at 388, 137 USPQ at
19 550-551. Patentee has provided only conclusory statements. With respect to
20 commercial success, Patentee has not provided evidence of actual sales,
21 market share, growth in market share, replacing earlier units sold by others
22 or of dollar amounts, and no evidence of a nexus between sales and the
8 There appears to be three documents attached to the declaration. The
documents marked Exhibit 1 and Exhibit 2 are single page documents
showing reproductions of chemical structure models. The third document is
titled “Declaration of Sutton under 37 CFR § 1.132.” The relevance of this
document to the appeal is not readily apparent.
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