Appeal No. 2004-1240
Application No. 09/742,691
We refer to the examiner’s comments on pages 13-
14 of the answer regarding this Declaration on the
issue of commercial success, and add the following
comments for emphasis.
As stated above, proof of commercial success is
not simply a matter of producing sales figures.
Appellants must provide evidence, such as market
share, growth in market share, and replacement of
earlier sales by others. Kansas Jack, Inc. v. Kuhn,
719 F.2d 1144, 1151, 219 USPQ 857, 861 (Fed. Cir.
1983). Also, evidence of commercial success can be
downgraded where there is no showing that the sales
represent a substantial share of any definable market
or that the profitability is anything out of the
ordinary in the industry involved. Cable Elec.
Prods., Inc. v. Genmark, Inc., 770 F.2d 1015, 1026-
1027, 226 USPQ 881,887 (Fed. Cir. 1985). Eric
Polesuk’s Third Declaration does not provide us with
any of the above-mentioned evidence regarding
appellant’s burden in connection with commercial
success. It would therefore be improper to infer that
reported sales represent a substantial share of any
definable market or that profitability is anything out
of the ordinary in the pertinent industry. Ex parte
Remark, 15 USPQ2d 1498, 1505 (Bd.Pat.App.&Int 1990).
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