Today the Board of Patent Appeals and Interferences (BPAI) issued a decision citing the proper use of the commercial success argument (Ex Parte Buttercup Legacy). As a Miami Patent Attorney I constantly stay up to date on new holdings that strengthen my knowledge of the arguments I use to bolster my clients' positions in pursuing a patent. The holding in this case illustrates the proper use of the commercial success argument, wherein an Applicant cites the success of his product in the market in order to support his argument that his invention is patentably distinct.
The BPAI stated that "Appellant's arguments regarding commercial success are not persuasive." Appellant claims were not rejected under 35 U.S.C. § 103(a) but rather under 35 U.S.C. §102. "Arguments directed to secondary considerations are not relevant to a rejection under 35 U.S.C. §102. See Cohesive Technologies Inc. v. Waters Corp., 543 F.3d 1351, 1364 (Fed. Cir. 2008).
On this issue, MPEP §1504.03 states: Once a prima facie case of obviousness has been established, the burden shifts to the applicant to rebut it, if possible, with objective evidence of nonobviousness. Examples of secondary considerations are commercial success, expert testimony and copying of the design by others.
The moral of the story is that you should save your commercial success arguments for your 35 U.S.C. § 103(a) rejections because they don't work for 35 U.S.C. §102 rejections.
