tiffin, remark, huang, cable

REVERSED

3600 Transportation, Construction, Electronic Commerce, Agriculture, National Security, and License & Review

3673 Ex Parte Martin 11/221,324 SCHAFER 102(b)/103(a) BEYERS COSTIN, P.C. EXAMINER SANTOS, ROBERT G

AFFIRMED

1600 Biotechnology and Organic Chemistry

1644 Ex Parte Seed et al 10/960,442 FREDMAN 102(b)/102(e)/103(a) QUINE INTELLECTUAL PROPERTY LAW GROUP, P.C. EXAMINER DAHLE, CHUN WU

See In re Tiffin, 448 F.2d 791, 792 (CCPA 1971) (“objective evidence of non-obviousness must be commensurate in scope with the claims which the evidence is offered to support”)(evidence showing commercial success of thermoplastic foam “cups” used in vending machines was not commensurate in scope with claims directed to thermoplastic foam “containers” broadly). ...

In the case of evidence of commercial success, the Federal Circuit has acknowledged that the Appellant bears the burden of establishing a nexus, stating:

In the ex parte process of examining a patent application… the PTO lacks the means or resources to gather evidence which supports or refutes the applicant's assertion that the sales constitute commercial success. Cf. Ex parte Remark, 15 USPQ2d 1498, 1503 (Bd. Pat. App. & Int. 1990) (evidentiary routine of shifting burdens in civil proceedings inappropriate in ex parte prosecution proceedings because examiner has no available means for adducing evidence). Consequently, the PTO must rely upon the applicant to provide hard evidence of commercial success.

In re Huang, 100 F.3d 135, 139-40 (Fed. Cir. 1996). ...

Rather than supporting a conclusion of obviousness, copying could have occurred out of a general lack of concern for patent property, in which case it weighs neither for nor against the nonobviousness of a specific patent. It may have occurred out of contempt for the specific patent in question, only arguably demonstrating obviousness, or for the ability or willingness of the patentee financially or otherwise to enforce the patent right, which would call for deeper inquiry. Even widespread copying could weigh toward opposite conclusions, depending on the attitudes existing toward patent property and the accepted practices in the industry in question. It is simplistic to assert that copying per se should bolster the validity of a patent.
Cable Elec. Products, Inc. v. Genmark, Inc., 770 F.2d 1015, 1028 (Fed. Cir. 1985).
1648 Ex Parte Jones et al 10/326,908 SCHEINER 103(a) NIXON & VANDERHYE, PC EXAMINER HORNING, MICHELLE S
2100 Computer Architecture and Software
2166 Ex Parte Blaker et al 09/845,432 HOMERE 101/102(b) MYERS BIGEL SIBLEY & SAJOVEC EXAMINER AHLUWALIA, NAVNEET K
2800 Semiconductors, Electrical and Optical Systems and Components
2838 Ex Parte Lindstrom 10/557,666 BAUMEISTER 102(b)/103(a) OSTROLENK FABER GERB & SOFFEN EXAMINER ZHANG, JUE

REHEARING

DENIED

2400 Networking, Mulitplexing, Cable, and Security

2448 Ex Parte Hessmer et al 09/954,423 HOMERE 103(a) LEYDIG VOIT & MAYER, LTD EXAMINER NGUYEN, THANH T