Ex parte Whirlpool Corp.

Informative decision only: persuasive authority, not binding precedent. When objective evidence of nonobviousness (industry praise, commercial success, long-felt need, copying) is tied to a commercial embodiment that practices the claim, a nexus exists if the praise or success is due at least in part to what is both claimed and novel in the claim, even if the product was also praised for unclaimed features. The Board also held that praise for a feature known in the art can still show nexus when that feature is part of the claimed and novel combination, and that the time between the prior art's publication and the claimed invention can be an objective indicator of nonobviousness. No prior Board precedent is named in the text on this issue. The Board applied Federal Circuit nexus law to correct an Examiner's narrow view of nexus. For a requester or examiner, pointing to unclaimed features, or to a claim element known in the art, will not defeat nexus if the evidence also reflects the claimed and novel combination. Also, saying that lack of commercialization after the prior art is irrelevant is wrong. For the patent owner, evidence of praise, success, need, and copying tied to a product that practices the claim can be given weight even if mixed with praise for unclaimed features, and here that evidence led to reversal. The Board relied on In re Kao, 639 F.3d 1057 (Fed. Cir. 2011), Apple Inc. v. Int'l Trade Comm'n, 725 F.3d 1356 (Fed. Cir. 2013), and Leo Pharma., Ltd. v. Rea, 726 F.3d 1346 (Fed. Cir. 2013). LEGAL TEST OR STANDARD: Secondary considerations are weighed along with the prior art. The proponent must establish a nexus between the evidence and the merits of the claimed invention. Under Kao, there is no nexus where the secondary consideration results from something other than what is both claimed and novel in the claim. A nexus may still exist if the praise or success is also due in part to the claimed invention. The time between prior art publication and the claimed invention can also be an objective indicator of nonobviousness. TRIGGERING FACTS: Reexamination of a patent for a refrigerator door-mounted ice delivery system. The patent owner showed that its IDI refrigerators practice claim 1 and submitted 11 declarations on industry praise, copying by the requester, commercial success, and long-felt need. Some praise was for unclaimed features such as a removable bin, but the praise was undisputedly also due to the claimed door-mounted ice bin. The door-mounted bin was known in the art, but the claimed novelty was the combination with an ice maker above it. Twenty-four years passed between Yasukawa's publication and the patent's filing. KEY QUOTE: "What is claimed and novel in claim 1 is, at a minimum, the combination of an ice maker mounted above a door-mounted ice storage bin." (p. 16) PRIOR PRECEDENT AFFECTED: No prior precedential or informative decision is directly affected. PRACTICE TIP: When offering secondary-considerations evidence, show that the product practices the claim and tie the praise, sales, need, and copying to the claimed and novel combination, even if other unclaimed features also drew praise. If a known feature is part of the claimed combination, explain why the evidence reflects the combination as a whole.