• Federal Circuit Addresses Use of Commercial Success to Rebut a Prima Facie Case of Obviousness
  • April 8, 2011 | Authors: Sean M. Walsh; Mark A. Williamson
  • Law Firm: Fitzpatrick, Cella, Harper & Scinto - Washington Office
  • The Federal Circuit recently reiterated that a patent applicant does not have to show commercial success of every possible embodiment within the scope of the claimed invention to rely on such evidence to rebut a prima facie case of obviousness. In In re Glatt, the Board of Patent Appeals and Interferences (“Board”) affirmed the Examiner’s obviousness rejection, and found that applicant’s evidence of commercial success was not commensurate with the scope of the claim, and therefore insufficient to rebut the obviousness rejection. The Federal Circuit reversed, holding that not only had a prima facie case of obviousness not been established, but that the Board erred by failing to consider the evidence of commercial success. The Federal Circuit held that applicants need not sell every possible embodiment of the claimed invention to rely upon evidence of commercial success to rebut an obviousness rejection. Rather, evidence of commercial success should be considered as indicia of non-obviousness so long as what was sold is within the scope of the claims.