Ex parte Jellá

When an ex parte applicant offers secondary-considerations evidence to rebut a prima facie case of obviousness, the applicant bears the burden of establishing a nexus between the claimed invention and that evidence, and the evidence must be commensurate in scope with the claims. Evidence tied to unclaimed features, or to industry reaction to the aesthetic appearance of the claimed invention, cannot support non-obviousness of a utility patent claim. Gross sales figures without market share in the relevant market, which is defined by the scope of the claims, are a weak showing of commercial success. No prior Board precedent is named as overruled; the decision applies and collects Federal Circuit, CCPA and earlier Board authority on nexus and commercial success. For an examiner, the decision confirms that the applicant carries the nexus burden, because the PTO lacks the means to gather evidence supporting or refuting commercial success. For an applicant or appellant, declarations must tie the evidence to features actually recited in the claims, and must include market share in a market defined by claim scope. Sales of a three-panel door did not support a claim to a single door section, and aesthetic acclaim was held unusable for a utility claim. The Board relied on In re Huang, 100 F.3d 135 (Fed. Cir. 1996), Cable Electric Products, Inc. v. Genmark, Inc., 770 F.2d 1015 (Fed. Cir. 1985), and In re Paulsen, 30 F.3d 1475 (Fed. Cir. 1994), among other authority. LEGAL TEST OR STANDARD: Graham factors, including where in evidence secondary considerations. To receive substantial weight, secondary-considerations evidence must be relevant to the subject matter as claimed, and the applicant bears the burden of proof of establishing a nexus between the claimed invention and the evidence. Evidence must be commensurate in scope with the claims, so success must be due to claimed features and not unclaimed ones. An inventor's opinion on why purchasers buy is insufficient, and gross sales figures do not show commercial success absent evidence of market share, time period of sales, or what sales would normally be expected in the market. TRIGGERING FACTS: Claim 1 recited only a door section with a finished height of substantially twenty-eight inches, with no tracks and no three-panel door. The appellant's evidence concerned skepticism about movement on fifteen inch radius tracks, sales of three-panel doors, and enthusiasm for the door's different look. The market share figures were about 1.24 percent of the overall market, or 0.175 percent of the narrower steel carriage house market the appellant proposed. The appellant gave no market data for the relevant market of all steel garage doors. KEY QUOTE: "Evidence of commercial success for a claimed invention of a utility patent application cannot be shown, however, by industry reaction to the aesthetic appearance of the" (Appeal 2008-1619, p. 17) claimed invention. PRIOR PRECEDENT AFFECTED: No prior precedential or informative decision is directly affected. The Board follows Ex parte Remark, 15 USPQ2d 1498, 1503 (Bd. Pat. App. & Int. 1990) as quoted in In re Huang, and Ex parte Standish, 10 USPQ2d 1454, 1458 (BPAI 1988) on sales evidence. PRACTICE TIP: When submitting Rule 132 declarations on secondary considerations, map every asserted result to a limitation actually recited in the claims, and supply market share data for a market defined by claim scope. Where needed, narrow or add claim limitations so the claims match the evidence, and do not rely on aesthetic appeal or unit sales alone.