Appeal 2007-1400
Reexamination Control 90/006,825
Patent 6,457,239 B1
success. We conclude that Huang has failed to establish the nexus between
the claimed subject matter and the sales that would be necessary to rebut the
prima facie case of obviousness.
Even assuming that McLaughlin had sufficiently demonstrated a
nexus between the claimed subject matter and the sales, McLaughlin has not
provided sufficient information for us to determine whether the sales
represent commercial success. We have not been provided with any
indication whether the 50,000 or 60,000 units per year represent a substantial
quantity in the relevant market. For example, we have been provided only
the scantiest evidence as to what is the nature of the market—who are the
buyers, what are comparable products, and how do the features and costs of
the comparable products compare to the features and costs of the patented
products. These issues are particularly important in the present
circumstances where the principal buyer of the product is a company that
intends to resell the product: it is not going to use the product itself (e.g., in a
chain of restaurants). Thus, the principal buyer here is wagering that it can
resell enough units to other purchasers that it can make a reasonable profit.
The purchasing decisions of such a commercial buyer are certain to be more
complicated, and therefore likely to be more remote from the particular
qualities of the product than the personal sales alleged by Mr. McLaughlin.
Moreover, Mr. McLaughlin's sales are too vague in number and
circumstances to weigh strongly in our considerations.
We conclude that the Examiner's prima facie case of obviousness has
not been rebutted by evidence of commercial success.
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