Appeal 2006-2165
Application 10/652,958
citing, In re Thompson, 545 F.2d 1290, 1295, 192 USPQ 275, 277 (CCPA
1976), In re Heldt, 433 F.2d 808, 812, 167 USPQ 676, 679 (CCPA 1970),
In re Noznick, 478 F.2d 1260, 1264, 178 USPQ 43, 46 (CCPA 1973).
Evidence of commercial success based solely on the number of units sold is
insufficient to establish commercial success of the claimed invention. In re
Baxter Travenol Labs, Inc., 952 F.2d 388, 392, 21 USPQ2d 1281, 1285
(Fed. Cir. 1991). Rather, other evidence, such as market share, growth in
market share, replacement of earlier products sold by others, need be
present. Ex parte Anderson, 21 USPQ2d 1241, 1258 (BPAI 1991) citing,
Kansas Jack, Inc. v. Kuhn, 719 F.2d 1144, 1151, 219 USPQ 857, 861 (Fed.
Cir. 1983). See also, In re Huang, 100 F.3d 135, 140, 40 USPQ2d 1685,
1689 (Fed. Cir. 1996).
Appellant’s evidence is insufficient to overcome the § 103 rejection
because Appellant failed to show a sufficient nexus between the proffered
evidence and the claimed invention. Regarding Appellant’s showing of
commercial success of the plastic bearing housing, from the evidence
provided, we cannot determine whether the sales increase discussed in
paragraph 7 of the Shea and Nisley Declarations is due, for example, to
advertising, the lower cost of the plastic bearing housing compared to the
metal bearing housing, or the antimicrobial agent claim feature. Remark,
15 USPQ2d at 1502-03. The extent of Appellant’s demonstration of a nexus
between the alleged commercial success and the claimed invention consists
of Shea’s conclusory statement that the increase in sales of the plastic
bearing housings is “attributable, in large part, to the claimed inclusion of
the antimicrobial agent in the polymeric component” (Shea Declaration ¶
[0008]). Such conclusory statements are insufficient to establish a nexus
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