Appeal No. 97-0455
Application No. 08/344,043
non-obviousness, the results must be shown to be unexpected compared with the closest prior art. In re
Baxter Travenol Labs, 952 F.2d 388, 392, 21 USPQ2d 1281, 1285 (Fed. Cir. 1991); In re De Blauwe,
736 F.2d 699, 705, 222 USPQ 191, 196, (Fed. Cir. 1984). The Eisenhauer declaration fails to provide
a comparison with the closest prior art of record, the Davis patents. The only comparative information
provided by Eishenhauer is the statement that lubricants from four other major lubricant and additive
suppliers were evaluated and only lubricants provided by applicant’s assignee (Lubrizol) were satisfactory.
Eisenhauer declaration (Paper 6), p. 2. The compositions of the lubricants which were said to be evaluated
are not disclosed. Thus, it is not possible for us to evaluate whether a comparison has been made with the
closest prior art. Applicant has failed to meet his burden of proving unexpected results with the closest
prior art.
Commercial Success
It is axiomatic that in order to prove commercial success, there must be some proof of the
commercialization of the invention. "[T]he PTO must rely upon the applicant to provide hard evidence of
commercial success." In re Huang, 100 F.3d 135, 139-140, 40 USPQ2d 1685, 1689 (Fed. Cir. 1996).
Applicant has not met this burden. No evidence has been presented of any commercialization of the
subject matter of the claimed invention. The declaration presents only the speculation that the use of the
lubricants will allow “Orbital technology to progress towards high volume automotive applications.”
Eisenhauer declaration ( Paper 6), p. 3. The declaration provides no evidence that either the claimed
lubricants or the Orbital engines have been commercialized.
Long felt but unsolved need - failure by others
The nature of a problem "which persisted in the art", and the inventor's solution, are factors to be
considered in determining whether the invention would have been obvious to a person of ordinary skill in
that art. Northern Telecom Inc. v. Datapoint Corp., 908 F.2d 931, 935, 15 USPQ2d 1321, 1324 (Fed.
Cir. 1990); In re Rothermel, 278 F.2d 393, 397, 125 USPQ 328, 332 (CCPA 1960). Establishing such
a long felt need requires objective evidence that the invention has provided a long-awaited, widely
accepted, and promptly adopted solution to a problem extant in the art, or that others, had tried but failed
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