Appeal 2006-2165
Application 10/652,958
molding plastic and have the antimicrobial agent retain its properties after
injection molding, further supports a reasonable expectation of success in the
combination of Kernes’, Blackburn’s or Seabrook’s antimicrobial agent with
Richardson’s injection molded plastic bearing housing. A reasonable
expectation that the combination of prior art references would be successful
further supports a prima facie case of obviousness. In re Merck & Co., Inc.,
800 F.2d 1091, 1097, 231 USPQ 375, 379 (Fed. Cir. 1986).
EVIDENCE OF NON-OBVIOUSNESS: SECONDARY
CONSIDERATIONS
Appellant provides two 37 C.F.R. § 132 declarations, the Shea and
Nisley Declarations, to show evidence of non-obviousness (i.e., secondary
considerations). Specifically, Appellant contends that the declarations
demonstrate the commercial success and copying by others of the claimed
invention so as to overcome the § 103 rejection over Richardson in view of
Kernes, Blackburn or Seabrook, or alternatively over Appellant’s admission
on page 13 of the Specification (Br. 12).
Generally, for evidence of commercial success to be accorded
substantial weight, the evidence must show that the commercial success is
due to the merits of the claimed invention (i.e., the claimed features were
responsible for the success) rather than other economic and commercial
factors unrelated to the technical quality of the patented subject matter.
Ex parte Remark, 15 USPQ2d 1498, 1502-03 (BPAI). To establish a nexus
between the claimed subject matter and commercial success requires more
than a mere showing that there was a commercial success and that the
commercially successful article is embodied in the claimed invention. Id.
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