The burden on an Appellant is seemingly high when arguing commercial success as a secondary consideration of nonobviousness in an ex parte PTAB appeal. The decision in Ex parte Thatcher, Appeal No. 2015-002163 (April 4, 2017) is an example of the PTAB remaining unpersuaded by arguments of commercial success.
The patent application at issue claims a powered mopping and cleaning machine. The Examiner rejected all claims as being obvious over the combination of two prior art references. On appeal, the Appellant did not argue that the Examiner failed to establish a prima facie case of obviousness, but instead attempted to rebut the prima facie case of obviousness with evidence of commercial success.
In order to rebut a prima facia case of obviousness with evidence of commercial success, the Applicant must show both that a product embodying the claim is commercially successful and that there is a nexus between the claim and the commercial success of the product. During prosecution, the Applicant submitted six declarations. In an attempt to show commercial success, one of the declarations was made by the owner of the assignee of the patent application indicating that sales rose from 75 units and $90,000 in gross sales in 2007 to 102 units and $185,000 in gross sales in just the first half of 2011. In what appears to be an attempt to establish the nexus between the claim and the commercial success, four of the declarations were made by customers indicating that the customers leased products covered by the claim language from the assignee of the patent application.
Citing several Federal Circuit decisions, the PTAB noted that the mere increase in unit sales does not prove market success. One factor that does show market success is an increase in market share, but the increase in unit sales alone does not prove the amount of market share much less an increase in market share. On that note, the Appellant had argued that there are no similar products on the market and, as such, the product at issue held 100% of the relevant market. The PTAB rejected this argument, noting that the Appellant’s Reply Brief mentioned competitors, and that the four declarations by customers each compared the commercial product to a traditional mop and bucket. Based on those factors, the PTAB concluded that competition existed and the product did not hold 100% of the relevant market. Accordingly, since the sales information did not address market share, the PTAB concluded that the evidence of commercial success was not strong enough to rebut the prima facie case of obviousness.
This case illustrates that the rebuttal of a prima facie case of obviousness based on commercial success is very fact specific, and is seemingly a high burden on the Applicant.