Ex parte Wright

Informative decision only: persuasive authority, not binding precedent. When an applicant offers secondary-considerations evidence (commercial success, copying, long-felt need) against a prima facie case of obviousness, the Board re-evaluates the obviousness evidence against that countervailing evidence, and will give it little weight where it consists only of unit sales figures, an unsupported belief about market share, or speculation, and lacks a nexus between the claimed invention's merits and the evidence. Because the declarant showed no market share, no nexus and no substantive evidence of copying or long-felt need, the preponderance of the evidence still favored obviousness. No prior Board precedent is named in the decision as directly addressing this issue; the Board applies Federal Circuit and CCPA authority on secondary considerations. For the examiner, the decision shows that a prima facie case stands once the applicant's objective-evidence declaration is shown to lack market-share proof and a nexus. For the applicant or appellant, bare sales numbers, a declarant's feeling about market share, speculation about a third party's motives, and exhibits that merely show prior art or an embodiment of the claims will not carry secondary considerations. The Board relied on In re Oetiker, In re Baxter Travenol Labs. and Cable Elec. Prods., Inc. v. Genmark, Inc. for re-weighing the evidence, for the insufficiency of unit-sales data, and for the nexus requirement. LEGAL TEST OR STANDARD: After finding a prima facie case of obviousness, the Board re-evaluates the evidence for obviousness against the appellant's countervailing evidence of non-obviousness (In re Oetiker). On commercial success, information solely on numbers of units sold is insufficient, economic evidence of market share is needed, and a nexus is required between the merits of the claimed invention and the evidence offered (In re Baxter Travenol Labs.; Cable Elec. Prods., Inc. v. Genmark, Inc.). Copying requires substantive evidence of product copying. The Board then decides whether the preponderance of the evidence weighs in favor of obviousness. TRIGGERING FACTS: The examiner established a prima facie case of obviousness over Thompson and Skelton, and Crowell for claims 11-21. The appellant offered Wright declarations asserting commercial success, copying, attempts to remove patent pending labels, and long-felt need. The declaration gave sales figures for 2000, 2001 and the first five months of 2002, and stated that the declarant felt the invention had about 99 percent of the market, with no supporting economic evidence. Exhibit B was an e-mail about Hilton policy, Exhibit C showed prior art forms, and Exhibit D showed an embodiment of the claimed invention. The statement that Hilton acted to bid out production was belief without evidence. KEY QUOTE: "Declarant does not support this statement or "feeling" with any substantive economic evidence." (p. 12) PRIOR PRECEDENT AFFECTED: No prior precedential or informative decision is directly affected. The Board applied In re Oetiker, 977 F.2d 1443 (Fed. Cir. 1992), In re Baxter Travenol Labs., 952 F.2d 388 (Fed. Cir. 1991), and Cable Elec. Prods., Inc. v. Genmark, Inc., 770 F.2d 1015 (Fed. Cir. 1985). PRACTICE TIP: When submitting a declaration on secondary considerations, supply concrete economic evidence of market share and of the nexus to the claimed features, not just unit sales or the declarant's belief, and back up copying and long-felt need claims with substantive evidence rather than speculation or exhibits that show only prior art or an embodiment.