Appeal No. 2006-2084
Reexamination Control No. 90/006,360
Resins & Refrac., Inc., 776 F.2d 281, 306, 227 USPQ 657, 674 (Fed. Cir. 1985). A
"nexus" is required between the merits of the claimed invention and the evidence
of secondary considerations in order for the evidence to be given substantial
weight in an obviousness decision. See Stratoflex, 713 F.2d at 1539, 218 USPQ at
879. "Nexus" is a legally and factually sufficient connection between the objective
evidence and the claimed invention, such that the objective evidence should be
considered in the determination of nonobviousness. See Demaco Corp. v. F. Von
Langsdorff Licensing Ltd., 851 F.2d 1387, 1392, 7 USPQ2d 1222, 1226 (Fed. Cir.
1988). The burden of showing nexus is on the applicant or the patent owner. See
In re Huang, 100 F.3d 135, 139-140, 40 USPQ2d 1685, 1689 (Fed. Cir. 1996) ("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. Consequently, the PTO
must rely upon the applicant to provide hard evidence of commercial success."
(Citation omitted.)).
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