Appeal 2007-1907
Reexamination Control No. 90/007,178
Patent 6,730,333 B1
1 A nexus is required between the commercial success and the claimed
2 invention. Ruiz v. A.B. Chance, Inc. 234 F.3d 654 (Fed. Cir. 2000). This is
3 to ensure that the secondary considerations are really due to the claimed
4 invention, and not some other factor.
5 Objective evidence of nonobviousness including commercial success
6 must be commensurate in scope with the claims. In re Tiffin, 448 F.2d 791,
7 171 USPQ 294 (CCPA 1971) (evidence showing commercial success of
8 thermoplastic foam "cups" used in vending machines was not commensurate
9 in scope with claims directed to thermoplastic foam "containers" broadly).
10 Additionally, commercial success must be the result of the claimed
11 and novel features. Ormco Corp. v. Align Tech., Inc., 463 F.3d 1299, [GET
12 PIN] 79 USPQ2d 1931, 1941-42 (Fed. Cir. 2006) (Evidence of commercial
13 success not credible where success was based on features that were not
14 new); J.T. Eaton & Co. v. Atlantic Paste & Glue Co., 106 F.3d 1563, 1571,
15 41 USPQ2d 1641, 1647 (Fed. Cir. 1997) (“[T]he asserted commercial
16 success of the product must be due to the merits of the claimed invention
17 beyond what was readily available in the prior art.”).
18 The difference between the prior art and the claimed composition is
19 the addition of mangosteen juice to a beverage containing mangosteen rind
20 and orange juice. Appellants’ evidence of commercial success must
21 demonstrate that the success was due to the novel feature of the claimed
22 invention, the addition of the mangosteen juice to a known mangosteen rind
23 nutraceutical beverage. As discussed below, it does not.
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