Secondary Considerations a Tough Sell in Reexamination

Scott Daniels | December 13, 2010

Traversing an obviousness rejection by arguing “secondary considerations” – such as the commercial success of the claimed invention – has always been difficult for patentees in reexamination, especially with the requirement of a nexus between the secondary considerations and the claimed invention.  Just how difficult that argument can be was demonstrated today in the PTO Board’s analysis of the reexamination examiner’s obviousness rejection in Ex parte Smiths Interconnect Components, Inc. 

The claimed invention was a “temperature variable microwave attenuator,” featuring resistors with different temperature coefficients.  The examiner rejected the claims as being obvious over a series of prior art combinations.  The patentee challenged the rejection with a variety of arguments, most notably an assertion that the claimed invention was nonobvious because it had enjoyed a remarkable commercial success: two declarations showed that 10,000,000 of the claimed attenuators had been sold since 1994 at strong profit margins; that the patentee once possessed 100% of the world market for commercial surface mountable temperature variable attenuators; that the patentee still retains substantial portions of that market; and that only the patentee’s attenuators have been certified for US and NATO military and space applications.

The patentee coupled these facts with citations to Federal Circuit precedent in which proof of commercial success of an embodiment of the claimed invention was held to constitute a prima facie case of nexus between success in the market and the claimed invention. 

The Board began by acknowledging that precedent, but found it to be “limited to civil litigation” and inapplicable to ex parte proceedings at the PTO.  Here, the Board found only “a general connection” between the patentee’s commercial success and its claimed invention.  There would be a nexus, the Board said, “if there is proof that the sales were a direct result of the unique characteristics of the claimed invention beyond what was available in the prior art and not attributable to other economic and commercial factors unrelated to the quality of the patented subject matter.”

The Board then gathered steam.  It faulted the patentee for not submitting more information about the relevant market so that the sales figure of 10 million units could be put into perspective.  Next, it challenged the patentee’s assumption that the relevant market was limited to commercial surface mountable temperature variable attenuators, asking whether other types of attenuators ought also to be considered: the patentee should have “provided an indication of its share in the overall attenuator market or the overall temperature variable attenuator market along with providing the size of the markets.”

The Board also suggested that the patentee might have submitted “information related to whether and how much [the patentee’s] sales came at the expense of available prior art attenuators” to give additional context to its sales figures.  Without such additional data, “it would be improper to infer that [the patentee’s] sales represented a substantial share of the relevant market.” 

For good measure, the Board considered and rejected the patentee’s arguments regarding copying and long-felt need. For copying, it found that the existence of infringement suits was not enough and that there must be proof that the copier’s products fall within the scope of the pending claims.  For long-felt need, it found that there must be objective evidence showing “that the need was persistent” and “recognized by those of ordinary skill in the art.”

The message is that the reexamination patentee, hoping to assert secondary considerations, may need to come with a litigation-sized budget.

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