Ex Parte Ward - Page 8

                   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                                       

                                                                 8                                                                  

Page:  Previous  1  2  3  4  5  6  7  8  9  10  11  12  13  14  Next

Last modified: September 9, 2013