Author: Michelle Pacholec Ph.D.
Editor: Adriana L. Burgy
Ex parte Jellá, Appeal 2008-1619 (November 3, 2008)
Appellants invention was directed to a panel section of a garage door “substantially twenty-eight inches” in height such that, put together, the garage door would be a three panel door. The prior art taught that doors could be manufactured with “four, five, six and . . . with other numbers of panels.” The Examiner rejected the claims as obvious under 35 U.S.C § 103(a) over the cited references.
In this appeal, decided about a year after the Supreme Court’s decision in KSR, the Board relied heavily on the Court’s decision and failed to even make mention of the teaching, suggestion, motivation test. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007). Appellants made numerous arguments, including that the explicit omission of a three panel door taught away from the invention. The Board disagreed and said that, at most, the reference taught that three-panel doors were not standard and that the door height was a matter of design choice and “no more than the result of the substitution of one element” for another known in the field. The Board stated that the change in the conventional garage door section height is no more than “predictable variation sparked by design incentives” and “an example of market demand driving a design trend [which] the Supreme Court in KSR warned against granting patent protection to advances such as this that would occurring the ordinary course without real innovation.” Moreover, the cited references outline a finite number of predictable solutions.
The Board carefully reviewed the multiple of secondary considerations arguments submitted in three Declarations, rejecting most on the grounds that they lacked sufficient nexus between the merits of the claimed invention and evidence of secondary considerations. Among these, appellants produced declarations from experts expressing skepticism that three-panel doors would work, unexpected results regarding cost-effectiveness and resistance to moisture, as well as sales data of three-panel doors. The Board rejected these are not commensurate in scope with the claims which recited twenty-eight inch panels, not three-panel doors. The Board also rejected evidence of commercial success as lacking evidence of substantial quantity or market share. In presenting evidence of commercial success, appellants submitted declarations regarding the industry reaction to the aesthetic appearance of the invention, which the Board stated was not relevant as it would be “blurring the distinction between design and utility patent protection.” In fact, the Board used this argument against the appellants, citing the market pressure as an incentive of the industry to create a new design trend.
What constitutes sufficient nexus between the merits of the claimed invention and evidence of secondary considerations?
The Board upheld the obviousness rejection.
Evidence of secondary considerations must be both commensurate in scope with the claims and of sufficient nexus to the merits of the claimed invention.
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