Other Secondary Indicia
In addition to, or in lieu of, unexpected results, it may also be helpful to bolster an argument against an obviousness rejection under 35 U.S.C. § 103 using other
secondary considerations, such as commercial success, long-felt but unresolved needs and the failure of others. The USPTO relies on Applicants to provide evidence
of a nexus between rebuttal evidence and the claimed invention. As the Court of Appeals for the Federal Circuit (CAFC) stated in In re Huang, 100 F.3d 135,
139-140 (Fed. Cir. 1996),
In the ex parte process of examining a patent application, however, the PTO lacks the means or resources to gather evidence which supports or refutes the
applicant’s assertion that the sales constitute commercial success. C.f. Ex parte Remark, 15 USPQ2d 1498, 1503 ([BPAI] 1990) (evidentiary routine of shifting
burdens in civil proceedings inappropriate in ex parte prosecution proceedings because examiner has no available means for adducing evidence). Consequently, the
PTO must rely upon the applicant to provide hard evidence of commercial success.
(See also MPEP § 2145). Accordingly, such evidence is likely best supported by a Declaration under 37 C.F.R. § 1.132 and/or the specification in the rare case that
such evidence is present in the specification.
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In attempting to make an argument of commercial success, some Applicants tend to merely argue that after the patent was granted, a large percentage of products on the
market were changed to exhibit the claimed features. There is a presumption that this is the case when the commercially successful product is the claimed
invention itself (see e.g. Demaco Corp. v. F. Von Langsdorff Licensing Ltd., 851 F.2d 1387, 1392 (Fed. Cir. 1988)). However, where the claims only
cover certain features of a product, no such presumption exists and such evidence is generally insufficient to establish a nexus between such
after-arising wide use and the claimed invention. In the latter case, Applicants must show that the after-arising commercial success was caused by
the introduction of the claimed features.
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On pages [PAGE NUMBERS], the Office Action rejected claims [CLAIM NUMBERS] under 35 U.S.C. § 103(a) as allegedly being obvious over [CITED ART]. Specifically, the
Office Action alleged that “[SPECIFIC REJECTION LANGUAGE HERE].” Applicants respectfully submit that the claimed invention, as supported by the attached declaration
under 37 C.F.R. § 1.132, exhibits commercial success directly resulting from after-arising incorporation of the claimed invention.
In the present case, [PROVIDE EVIDENCE OF COMMERCIAL SUCCESS; FOR INSTANCE, SHOW THAT THE FEATURE/CONFIGURATION WAS NOT PRESENT PREVIOUSLY AND WAS WIDELY ADOPTED AFTER
APPLICATION WAS PUBLISHED, INCORPORATED INTO THE COMPANY’S PRODUCT, ETC.]. The claimed features directly led to this commercial success because [FACTS AND ADVANTAGES].
[IF CLAIMS ARE DIRECTED TO FEATURES OF A PRODUCT AND NOT AN ENTIRE PRODUCT, INCLUDE EVIDENCE ESTABLISHING A NEXUS BETWEEN CLAIMED INVENTION AND COMMERCIAL SUCCESS;
IF CLAIM DIRECTED TO ENTIRE PRODUCT, NOTE TO THE EXAMINER THAT A PRESUMPTION OF COMMERCIAL SUCCESS EXISTS] Thus, the after-arising incorporation of the claimed
invention into competitor’s products directly resulted in commercial success, as evidenced by the attached 37 C.F.R. § 1.132 Declaration and as shown above.
Accordingly, it is respectfully submitted that the rejection is overcome and respectfully requested that the rejection be withdrawn.
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When arguing these factors, it is necessary to directly show that a need for the claimed invention has long existed and/or that others have failed where the claimed
invention succeeded. However, mere absence of the features prior to the claimed invention is insufficient. As stated in Iron Grip Barbell Co., Inc. v. USA
Sports, Inc., “[a]bsent a showing of a long-felt need or the failure of others, the mere passage of time without the claimed invention is not evidence of
nonobviousness” (392 F.3d 1317, 1324-25 (Fed. Cir. 2004); see also MPEP § 2144.05(III)). As with commercial success, a nexus must be shown. In other words, the
claimed invention itself must demonstrably solve the long-felt need and/or succeed where others have failed before.
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On pages [PAGE NUMBERS], the Office Action rejected claims [CLAIM NUMBERS] under 35 U.S.C. § 103(a) as allegedly being obvious over [CITED ART]. Specifically, the
Office Action alleged that “[SPECIFIC REJECTION LANGUAGE HERE].” Applicants respectfully submit that the claimed invention, as supported by the attached declaration
under 37 C.F.R. § 1.132, solves a long-felt need in the industry and succeeds where others have failed.
In the present case, [PROVIDE EVIDENCE OF LONG-FELT NEED AND/OR FAILURE BY OTHERS]. The long-felt need arose from [FACTS] and has been present at least for [TIME
PERIOD] as evidenced by [EVIDENCE]. Further, others have been unable to solve this need. As evidenced by [EVIDENCE], [FACTS SHOWING PREVIOUS FAILURE AND REASONS].
However, the claimed invention was able to meet this need and succeed where others had failed because [CASE-SPECIFIC REASONS]. Thus, the claimed invention addressed
this long-felt need and succeeded where others had failed before, as evidenced by the attached 37 C.F.R. § 1.132 Declaration and as shown above.
Accordingly, it is respectfully submitted that the rejection is overcome and respectfully requested that the rejection be withdrawn.
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