Appeal 2007-1400
Reexamination Control 90/006,825
Patent 6,457,239 B1
McLaughlin does not dispute that the Examiner established a prima
facie case of obviousness. Rather, McLaughlin contends that the evidence
of commercial success established by Mr. McLaughlin's declarations, and
the long-felt but unmet need, established by the lapse of time between the
issuances of Villwock and Eldridge, prove the nonobviousness of the
claimed subject matter. (Br. at 8-11.)
A showing of commercial success, to be relevant as rebuttal evidence
in the face of a prima facie case of obviousness, must demonstrate a nexus
between the merits of the claimed subject matter and the sales. In re Huang,
100 F.3d 135, 140, 40 USPQ2d 1685, 1689 (Fed. Cir. 1996) (requiring
"proof that the sales were a direct result of the unique characteristics of the
claimed invention — as opposed to other economic and commercial factors
unrelated to the quality of the patented subject matter.") Because the PTO
lacks the means or resources to gather evidence that supports or refutes an
applicant's assertion that the sales constitute commercial success, the Federal
Circuit has recognized that the applicant must provide the hard evidence of
commercial success. Id. at 139–40, 40 USPQ 2d at 1689.
In the present case — as in Huang — we have only the inventor's
opinion as to the purchaser's reasons for buying the product. We do not
have, for example, a declaration from Forschner explaining that it purchased
the product because of the claimed features of the invention as opposed to
unrelated economic and commercial factors. Moreover, Mr. McLaughlin
has only told us that the patented invention was the subject of the licensing
agreements. It has not been explained which novel features, or which novel
combination of features, were responsible for the alleged commercial
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