Appeal No. 2005-1378 8
Application No. 09/227,242
Further, the appellants have not provided sufficient evidence to prove that the so-
called “growing sales” are a direct result of the unique characteristics (merits) of the
claimed invention and not other economic and commercial factors unrelated to the merits
of the claimed invention. See the Affidavit and Exhibit A in their entirety. Although the
affidavit states that the “growing sales” of FabCOR80XLS and Eclipse ULTIMET 716 are
due to their low fume characteristics, we find no evidence supporting this statement. The
appellants have not shown that factors unrelated to the merits of the claimed invention,
such as advertising and/or unclaimed components (e.g., phosphorus, sulfur and silica), are
not responsible for “growing sales”. Moreover, the affidavit indicates that “growing sales”
may have been due to government regulations. See the affidavit, paragraphs 9 and 10.
Accordingly, we determine that the appellants have not carried their burden of proving
commercial success.
As to the appellants’ argument based on a long-felt need and failure of others, the
appellants must provide sufficient “tangible evidence to support a contention that [the
claimed] invention actually has provided a long-awaited, widely-accepted, and promptly-
adopted solution to the problem extant in the art, or that others had tried but failed to solve
that problem.” In re Mixon, 470 F.2d 1374, 1377, 176 USPQ 296, 299 (CCPA 1973).
However, the appellants have not supplied any tangible 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
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