Appeal No. 2005-1378 6
Application No. 09/227,242
1451, 1455 (Fed. Cir. 1997); In re Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788
(Fed. Cir. 1984).
The appellants rely on the Rule 132 affidavit executed by Grant Harvey on February
26, 2002 and Exhibit A (HOBART Brothers brochure for “Eclipse ULTIMET 716" weld wire)
to rebut the prima facie case established by the examiner. See the Brief, pages 5-7 and
the Reply Brief, pages 7-11. According to the appellants (Id.), the affidavit and Exhibit A
demonstrate that the claimed subject matter provides (1) commercial success and (2)
long-felt needs and failure by others, either of which, if proven, is an indicia of
nonobviousness.
To overcome the examiner’s prima facie case of obviousness based on commercial
success, the appellants must prove that the claimed invention is commercially successful
and that its sales directly resulted from the merits of the claimed invention. In re Huang,
100 F.3d 135, 139-40, 40 USPQ2d 1685, 1689-90 (Fed. Cir. 1996). However, the
appellants have not proffered any evidence to support the statement in the affidavit that
the sales of “FabCOR80XLS and “Eclipse ULTIMET 716" “are growing substantially” and
“have substantially displaced the use of flux-core weld wire by some customers of ITW
Hobart Canada...”. See the Brief, pages 6-7, the Reply Brief, pages 8-9 and the affidavit,
paragraphs 8, 9 and 10. There is no evidence indicating the actual number of
“FabCOR80XLS and “Eclipse ULTIMET 716" sold, much less their actual share in the weld
wire market. See the affidavit and Exhibit A in their entirety.
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 Next
Last modified: November 3, 2007