Appeal 2007-2577
Application 90/006,344
use the claimed invention. The second objection notes that advertising
rather than innovation could explain the alleged sales success.
The examiner's quibble about the degree of market dominance is
misplaced. It hardly makes a difference whether all or just nearly all sales
fall within the scope of the claims. What matters more is that massive
copying in the face of an issued patent is equivocal evidence at best.
Prazoff's patent issued in early 2002. When Prazoff declared in 2003 that
substantially all rope lights used his invention, he listed limitations of the
patent claims.76 By definition, added claims 9-11 cannot have broadened the
scope of the patent claims.77 Thus, if we credit Prazoff's testimony, the
market used the structures Prazoff claims despite Prazoff's issued patent
claiming exclusive rights to the structure. In such cases, copying suggests
that the market respects the product, but not the patent.78
The examiner's concern about advertising is more to the point. In the
second declaration, Prazoff states:79
Due to the success of my invention, L'Image [Prazoff's
company] won a 2001 Target Bullseye Award.
The award states, in part:80
76 Declaration of Michael Prazoff 6 (¶16) (submitted 12 May 2003) (1st
Declaration).
77 "No proposed amended or new claim enlarging the scope of a claim of the
patent will be permitted in a reexamination proceeding under this chapter."
§ 305.
78 Cable Elec. Prod. v. Genmark, Inc., 770 F.2d 1015, 1028, 226 USPQ 881,
889 (Fed. Cir. 1985); Vandenberg v. Dairy Equip. Co., 740 F.2d 1560, 1567,
224 USPQ 195, 199 (Fed. Cir. 1984).
79 Second Declaration of Michael Prazoff 4-5 (¶29) (submitted 12 May
2003) (2d Declaration).
80 2d Declaration, attachment.
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