Appeal 2007-2783
Reexamination 90/005,509
Patent 5,533,499
during the reexamination proceeding which gave rise to the present appeal.
The claims are not the same.
Even assuming that the claims are the same, a product’s simply being
within the scope of a claim does not establish the necessary nexus between
the alleged commercial success and the merits of the claimed invention. An
important feature on which the alleged commercial success might have been
based and not present in the prior art may not be recited in the claim.
Evidence of commercial success must be commensurate in scope with the
claims which the evidence is offered to support. In re Tiffin, 448 F.2d at
792, 171 USPQ at 294 (evidence of commercial success for cups does not
establish nonobviousness of claims drawn broadly to containers). We note
that patentee’s counsel stated, during oral argument, that all of the products
sold as referenced in the declarations are of the type including two spaced-
apart resilient bands in the truss. That is the preferred embodiment disclosed
in the patentee’s specification. Claims drawn to that preferred embodiment,
claims 10-17, have been allowed. None of the claims now on appeal
requires two resilient bands. In any event, we have only the representation
by the Chief Executive Officer of a licensee that the products sold are within
25
Page: Previous 15 16 17 18 19 20 21 22 23 24 25 26 27 28 29 Next
Last modified: September 9, 2013