Ex parte McCann

Informative decision only: persuasive authority, not binding precedent. When an ex parte applicant relies on commercial success or long-felt need to rebut a prima facie case of obviousness under Graham, the applicant bears the burden of establishing a nexus between the claimed features and the evidence, and the Board will give no weight to gross sales without market-share context or to need evidence that does not show when the problem was identified, how long it persisted, and that it was not already satisfied by others. Evidence not entered in the record before appeal, such as an article first attached to the appeal brief, will not be considered. No prior Board precedent is named as being overruled or modified; the decision collects and applies Federal Circuit, CCPA and earlier Board authority (Ex parte Remark, Ex parte Standish) on secondary considerations. For the examiner, it confirms the PTO may rely on the applicant to supply hard evidence of nexus, because the examiner lacks means to gather it, so an examiner need not disprove commercial success or long-felt need. For the applicant or appellant, it shows that thin sales figures (seven sales of a limited-production knife), declarations dated only from the time of signing, and unsworn statements fail; evidence must be entered before the appeal brief, and the Board will weigh all evidence anew. The Board relied on In re Huang, In re GPAC, Texas Instruments v. ITC, Newell Companies v. Kenney Mfg., In re Gershon, and Graham v. John Deere Co., as the decision cites them. LEGAL TEST OR STANDARD: Obviousness under Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966) turns on (1) the scope and content of the prior art, (2) any differences between the claimed subject matter and the prior art, (3) the level of skill in the art, and (4) where in evidence, so-called secondary considerations. The applicant bears the burden of establishing a nexus; the evidence must be commensurate in scope with the claims and due to claimed features. Long-felt need: First, the need must have been a persistent one that was recognized by those of ordinary skill in the art. Second, the long-felt need must not have been satisfied by another before the invention by applicant. Third, the invention must in fact satisfy the long-felt need. TRIGGERING FACTS: The examiner made a prima facie case from Collins and Poehlmann (substituting a gas spring for a metal spring in a folding knife). The appellant offered commercial success evidence of only seven sales of a $400 limited-production knife, with no evidence of market share and no connection between the claimed knife and the commercial embodiment. Long-felt need evidence showed the problem only as of May 18, 2006, the date of the earliest declaration, with no showing of failed efforts by others. Poehlmann appeared to satisfy the need. An article attached for the first time to the appeal brief was not entered below, and unsworn statements lacking the 18 U.S.C. 1001 language were not considered. KEY QUOTE: "In particular, an applicant asserting secondary considerations to support its contention of nonobviousness bears the burden of proof of establishing a nexus between the claimed invention and evidence of secondary considerations." (p. 14) PRIOR PRECEDENT AFFECTED: No prior Board precedential or informative decision is directly affected. The decision cites Ex parte Remark, 15 USPQ2d 1498, 1503 (Bd. Pat. App. & Int. 1990) (via In re Huang) and Ex parte Standish, 10 USPQ2d 1454 (BPAI 1988) (gross sales figures need market share, sales period or expected sales context), and follows them. PRACTICE TIP: Before filing the appeal brief, get all secondary-considerations evidence entered with the examiner under 37 C.F.R. 41.33 with the required showing; and build the nexus with sworn evidence tying sales to the claimed features, market share, and the date the problem was first identified, how long it persisted, and failed efforts by others.