Appeal 2003-2019
Application 90/004,933
evidence supports the propositions of Appellant with regard to Perrin and
Product Alert, Shine alone provides evidence of unpatentability.
Appellant further argues that our “failure to find a nexus between the
merits of Requestor-Patentee's invention and evidence of secondary
considerations is submitted to be clear error.”5 (Request 5-6). According to
Appellant, we failed to take into account recent precedent (Id). But the cases
cited by Appellant are all appeals from district court proceedings, the burden
during civil court proceedings is different than the burden we are to meet.
As explained in In re Huang, 100 F.3d 135, 139-40, 40 U.S.P.Q.2d 1685,
1689 (Fed. Cir. 1996):
In deciding whether or not a claimed invention is
obvious, we have instructed the Patent and Trademark Office
(PTO) that it must consider objective evidence of
nonobviousness - e.g. commercial success. In re Sernaker,
702 F.2d 989, 996, 217 USPQ 1, 7 (Fed.Cir.1983). In the
ex parte process of examining a patent application, however,
the PTO lacks the means or resources to gather evidence which
supports or refutes the applicant's assertion that the sales
constitute commercial success. Cf. Ex parte Remark,
15 USPQ2d 1498, 1503 (Bd. Pat. App. & Int. 1990)
(evidentiary routine of shifting burdens in civil proceedings
inappropriate in ex parte prosecution proceedings because
examiner has no available means for adducing evidence).
Consequently, the PTO must rely upon the applicant to provide
hard evidence of commercial success.
5 Note that factual findings by the Board are reviewed for substantial
evidence not clear error. Dickinson v. Zurko, 527 U.S. 150 (1999); In re
Gartside, 203 F.3d 1305, 1315, 53 USPQ2d 1769, 1775 (Fed.Cir.2000).
7
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