BPAI Tightens Use of Declarations in Overcoming Obviousness Rejections

Ex Parte Jellá, Appeal No. 2008- 1619 (BPAI, November 3, 2008), Precedential Opinion

The Appellant's claimed invention relates to raised panel door sections for overhead garage doors. Claim 1, reproduced below, is representative of the subject matter on appeal.

1. A door section for an overhead garage door comprising :

a sheet metal layer having a finished height of substantially twenty-eight inches; and

support members coupled to first and second lateral edges of said sheet metal layer.

The prior art taught everything except "a finished height of substantially twenty-eight inches." The BPAI agreed with the Examiner's determination that the claimed finished height of the door section "is a matter of design choice" and that the claimed finished height of twenty-eight inches
would be "a predictable result":

The claimed finished door section height is no more than the result of the substitution of one element (three twenty-eight inch door panel sections) for another known in the field (four twenty-one inch door panel sections) to yield a predictable result (a door section with a finished height of substantially twenty-eight inches).

To rebut the prima facie finding of obviousness, the applicant submitted eight different declarations addressing various reasons for non-obviousness of the claimed configuration. Some of the declarations addressed the "highly visible features" of garage door panels and mentioned a commercial need in the market to have a garage door that "looks different from the traditional raised panel steel garage doors."

The BPAI dismissed these declarations, stating that

Evidence of commercial success for a claimed invention of a utility patent application cannot be shown, however, by industry reaction to the aesthetic appearance of the claimed invention. Such evidence is too subjective to serve as reliable objective evidence of secondary considerations of non-obviousness. Further, the ornamental appearance of a product is the purview of the design patent law. Were we to allow secondary considerations of non-obviousness to be based on the industry's reaction to the ornamental appearance of the claimed invention, we would be blurring the distinction between design and utility patent protection. Objective evidence of secondary considerations of non-obviousness should be tied to the functional aspects of the claimed invention for a utility patent application . . . we hold that unexpected results for the claimed invention of a utility patent application cannot be based on enhanced aesthetic appearance, which is a subjective factor and one more properly reserved for the confines of design patent protection.

With regard to commercial success, the Appellant submitted figures related to number of units sold, 25% increase in sales annually and attested that "eighteen of the top twenty builders" in Southern California were using these panels in new home subdivisions. Again, the Board found these declarations unpersuasive:

The Appellant's evidence of gross sales as an indication of commercial success is weak, at best. The Appellant's proof of unit sales does not indicate whether the numbers sold were a substantial quantity in the relevant market In re Huang, 100 F.3d 135, 140 (Fed. Cir. 1996) (without evidence that the sales are a substantial quantity in the relevant market, "bare sales numbers" are a "weak showing" of commercial success, if any); In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991) ("[I]nformation solely on numbers of units sold is insufficient to establish commercial success."); Kansas Jack, Inc. v. Kuhn, 719 F.2d 1144, 1150-51 (Fed. Cir. 1983) ("The evidence of commercial success consisted solely of the number of units sold. There was no evidence of market share, of growth in market share, of replacing earlier units sold by others or of dollar amounts, and no evidence of a nexus between sales and the merits of the invention. Under such circumstances, consideration of the totality of the evidence, including that relating to commercial success, does not require a holding that the invention would have been nonobvious at the time it was made to one skilled in the art.")

Also, while certain Affidavits addressed "a long-felt and growing need" for the 28 inch panels, the BPAI held that the Appellant failed to make the requisite showing that the need was "persistent":

Establishing long-felt need requires 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. In re Gershon, 372 F.2d 535, 539 (CCPA 1967). The declarations submitted by the Appellant do not show that the need for a different looking door was a persistent one or that others tried to meet the need and failed. While the need for a new look to garage doors may have been a market pressure that existed at the time of the invention, the declarants fail to state how long the need existed in the industry and whether any attempts to meet the need were made by others in the industry.

As such, the BPAI affirmed the obviousness rejections.

Read/download a copy of the opinion here (link)