Wednesday, January 29, 2014

Ex parte Dick on secondary considerations

Ex parte Dick

As to long-felt need:

The burden also rests with Appellants to establish long-felt need with objective evidence that an art-recognized problem existed in the art for a long period of time without solution. In particular, the evidence must show that the need was a persistent one that was recognized by those of ordinary skill in the art. Orthopedic Equip. Co. v. All Orthopedic Appliances, Inc., 707 F.2d 1376, 1383 (Fed. Cir. 1983); see also In re Gershon, 372 F.2d 535, 538 (CCPA 1967). Further, the claimed invention must in fact satisfy the long-felt need. In re Cavanagh, 436 F.2d 491, 496 (CCPA 1971).

Commercial success is also not apparent where there is demand for a product that fills a need, and the claimed product merely satisfies that need, e.g., for more versatile designs for removable lampshade covers. See In re Fielder, 471 F.2d 640, 646 (CCPA 1973) (“In any event, it is not at all clear from the evidence that any successful use which might be credited stems from the advent of the claimed ballots as distinguished from the contemporary drive toward the greater use of automated data processing techniques. A nexus between the claimed invention and the alleged success has not been established.”).

Of secondary considerations

In addition, we emphasize that, although secondary considerations such as unexpected results must be taken into account, they do not necessarily control the obviousness conclusion. See Agrizap, Inc., v. Woodstream Corp., 520 F.3d at 1344; see also, Sud-Chemie, Inc. v. Multisorb Techs., Inc., 554 F.3d 1001, 1009 (Fed. Cir. 2009) (“[E]vidence of unexpected results and other secondary considerations will not necessarily overcome a strong prima facie showing of obviousness”); Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1372 (Fed. Cir. 2007) (“[T]his secondary consideration does not overcome the strong showing of obviousness in this case. Although secondary considerations must be taken into account, they do not necessarily control the obviousness conclusion.”); see also Newell Cos., Inc. v. Kenney Mfg. Co., 864 F.2d 757, 769 (Fed. Cir. 1988).


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