Appeal 2006-1708
Application 10/186,253
1 Objective evidence of nonobviousness including commercial success must
2 be commensurate in scope with the claims. In re Tiffin, 448 F.2d 791, 792, 171
3 USPQ 294, 294 (CCPA 1971). In order to be commensurate in scope with the
4 claims, the commercial success must be due to claimed features, and not due to
5 unclaimed features. Joy Technologies Inc. v. Manbeck, 751 F.Supp. 225, 229, 17
6 USPQ2d 1257, 1260 (D.D.C. 1990), aff’d, 959 F.2d 226, 228, 22 USPQ2d 1153,
7 1156 (Fed. Cir. 1992).
8 Our reviewing court has noted in the past that evidence related solely to the
9 number of units sold provides a very weak showing of commercial success, if any.
10 See In re Huang, 100 F.3d 135, 139-40, 40 USPQ2d 1685, 1689 (Fed. Cir. 1996);
11 Cable Elec. Prods. v. Genmark, Inc., 770 F.2d 1015, 1026-27, 226 USPQ 881, 888
12 (Fed. Cir. 1985) (finding that sales of 5 million units represent a minimal showing
13 of commercial success because "[w]ithout further economic evidence
14 . . . it would be improper to infer that the reported sales represent a substantial
15 share of any definable market"); see also Baxter Travenol Labs., 952 F.2d at 392,
16 21 USPQ2d at 1285 (Fed. Cir. 1991) ("[I]nformation solely on numbers of units
17 sold is insufficient to establish commercial success."); Kansas Jack, Inc. v. Kuhn,
18 719 F.2d 1144, 1151, 219 USPQ 857, 861 (Fed. Cir. 1983) (determination of
19 obviousness not erroneous where evidence of commercial success consisted solely
20 of number of units sold and where no evidence of nexus).
21 A nexus is required between the sales and the merits of the claimed
22 invention. In ex parte proceedings before the Patent and Trademark Office, an
23 applicant must show that the claimed features were responsible for the commercial
24 success of an article if the evidence of nonobviousness is to be accorded substantial
25 weight. Merely showing that there was commercial success of an article which
26 embodied the invention is not sufficient. See Ex parte Remark, 15 USPQ2d 1498,
5
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