Appeal 2007-2577
Application 90/006,344
case of obviousness.72 For instance, in Graham, the court was decidedly
underwhelmed by the secondary considerations in view of the very close
prior art:73
However, these factors do not, in the circumstances of this case,
tip the scales of patentability. The Scoggin invention, as limited
by the Patent Office and accepted by Scoggin, rests upon
exceedingly small and quite non-technical mechanical
differences in a device which was old in the art. At the latest,
those differences were rendered apparent in 1953 by the
appearance of the Livingstone patent, and unsuccessful attempts
to reach a solution to the problems confronting Scoggin made
before that time became wholly irrelevant. It is also irrelevant
that no one apparently chose to avail himself of knowledge
stored in the Patent Office and readily available by the simple
expedient of conducting a patent search-a prudent and
nowadays common preliminary to well organized research.
Moreover, in an ex parte process, the burden of showing with hard evidence
a nexus between commercial success and the claimed invention lies with the
applicant (or in this case, patentee).74 Unlike a party in an invalidity action,
the examiner has little ability to develop independent objective evidence
supporting or refuting a claim of commercial success.
Prazoff offers in evidence two declarations from himself. The
examiner raised three objections to the declaration evidence.75 The first two
are a quibble about whether or not all rope-light sales in the United States
72 Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1372, 82 USPQ2d 1321, 1338
(Fed. Cir. 2007); Newell Cos. v. Kenney Mfg. Co., 864 F.2d 757, 768,
9 USPQ2d 1417, 1426 (Fed. Cir. 1988).
73 Graham, 383 U.S. at 36.
74 In re Huang, 100 F.3d 135, 139-140, 40 USPQ2d 1685, 1689 (Fed. Cir.
1996); Paulsen, 30 F.3d at 1482, 31 USPQ2d at 1676 (reexamination).
75 Acknowledgement of Reply Brief 4 (entered 29 Sept. 2006).
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