Appeal No. 1998-1015
Application No. 08/208,912
as long as it is taught that the selection will result in the disclosed effect. Merck & Co.,
Inc. v. Biocraft Lab Inc. 874 F.2d 804, 807, 10 USPQ2d 1843, 1846 (Fed. Cir. 1989); In
re Corkill 771 F2d 1496, 1500, 226 USPQ 1005, 1008 (Fed. Cir. 1985).
Appellants rely upon the rule 132 declaration of Jim Wagner as evidence of
commercial success in order to rebut the prima facie case of obviousness.
Commercial success is but one evidentiary consideration that of itself is not
primarily determinative of nonobviousness. In re Rynkiewicz 390 F.2d 742, 746, 156
USPQ 462, 465, (CCPA 1968). In the present case, even assuming, for the sake of
argument, that appellants' declaration evidences commercial success, we do not find
that such evidence outweighs the substantial evidence of obviousness represented by
the applied prior art. Furthermore, we concur with the examiner's assessment of the
declaration that it falls short of establishing the commercial success of the myriad of
toys within the scope of the appealed claims. For instance, the appealed claims
embrace all quasi-reversible thermochromic coloring materials, whereas the declaration
is silent regarding the specific coloring materials used with the Color FX toys. Also,
while paragraph 3 of the declaration states the total sales of Color FX vehicles were
12.7 million dollars for 1993 and 1994, this information is of little probative value in the
absence of an adequate showing as to the reasons behind such sales. See Cable
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