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To Show Nonobviousness, Commercial Success Must Be "Direct Result" Of Patented Subject Matter

Nov.07.2008

In In re DBC (No. 2008-1120; November 3, 2008), the Federal Circuit affirms a final decision of the United States Patent and Trademark Office Board of Patent Appeals and Interferences ("the Board"), which affirmed the examiner's rejection of all pending claims under 35 U.S.C. § 103 as obvious during ex parte reexamination of U.S. Patent No. 6,730,333. The Federal Circuit holds that: (1) DBC waived the argument that the decision of the Board must be vacated because two of the administrative patent judges on the panel were appointed unconstitutionally by failing to raise it before the Board; (2) contrary to the assertion of DBC, the Board's prima facie case of obviousness is based upon a substantial new question of patentability, and the reference newly cited during the ex parte reexamination, together with the other references cited, is substantial evidence fully supporting the Board's finding of a prima facie case of obviousness; and (3) the evidence of commercial success presented by DBC was insufficient to overcome the prima facie case of obviousness of the claimed subject matter.

Regarding commercial success, the Court explained, "We have held on a number of occasions that evidence of commercial success alone is not sufficient to demonstrate nonobviousness of a claimed invention. Rather, the proponent must offer 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.'"

[http://www.cafc.uscourts.gov/opinions/08-1120.pdf]

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Mark Supko
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Email: msupko@crowell.com