PTAB Provides Guidance on Secondary Considerations of Nonobviousness in Precedential Decision

PTAB Guidance patent law bookA finding of a prima facie case of obviousness can be overcome by producing objective evidence of nonobviousness such as unexpected results, commercial success, licensing, copying, praise by others, and long-felt but unresolved need. To overcome the prima facie case of obviousness, the applicant or patent owner must not only establish a nexus between the evidence and the merits of the claimed invention but that the evidence is commensurate in scope with the claims. The Patent Trial and Appeal Board (the “Board”)  designated one decision as precedential and two as informative, all involving cases in which the board found that objective evidence of secondary considerations such as successful commercial product and industry praise overcame a prima facie case of obviousness.

Lectrosonics Inc. v. Zaxcom

In Lectrosonics Inc. v. Zaxcom, the Board allowed the Patent Owner to amend the claims on the basis that the industry praise in the form of an Emmy award helped prove the amended claims are patentable over the prior art.  The challenged claims were directed to a system and method for recording and processing audio when one or more tracks are received from one or more wireless devices. 

The Board found that the Petitioner established a prima facie case of obviousness over the examined prior art for both the original and amended claims. In defense, the Patent Owner argued that objective indicia of nonobviousness of, namely (1) a long-felt need for a wearable, wireless device that could reliably capture sound data from actors recording a movie or television show and the invention recited in the substitute claims satisfied this need, and (2) the industry praise and recognition demonstrate that the claims are patentable over the prior art. The Patent Owner relied on declarations and user manuals as evidence but of note, Patent Owner submitted an Emmy award and a Technical Achievement Award from the Academy of Motion Picture Arts and Sciences as evidence of industry praise.

The Board determined that both forms of evidence were strongly probative in establishing that the objective evidence is tied to the invention recited in the proposed amended claims but not the original claims.  The Board noted that the testimony evidence specifically identified repairing dropouts as a long-felt need and the claim feature of the “replacing” limitation as a basis for the praise and the Emmy award specifically referred to claim feature of providing a backup recording to the original recording and identified the “replacing” limitation.

Ex parte Whirlpool Corp

In the first informative case, the Board overturned the Examiner’s obvious rejection of Whirlpool’s patent for a refrigerator with a freezer compartment containing an ice delivery system.  The Examiner had determined that the Patent Owner’s objective evidence did not outweigh evidence of obviousness because the evidence of industry praise referred to some parts not included in the patent claims.  The Board disagreed citing that “an invention may be praised or commercially successful for reasons other than the claimed invention but a nexus may still exist as long as it can be shown that such praise or success is also due in part to the claimed invention.” The Examiner also had reasoned that the industry praise included parts found in the prior art and that the evidence of long-felt of the failure of anyone to commercialize the claimed features was not probative to patentability. The Board disagreed citing that secondary consideration must result from “what is both claimed and novel,” and that the evidence that 24 years had passed without commercialization was significant to be probative to long felt but unresolved need.  

Ex parte Thompson

In the second informative decision, the Board reversed the Examiner’s obvious rejection in view of secondary considerations of non-obviousness, namely long-felt but unsolved need.  The claims are directed to a cable distribution box that helped to prevent theft in multi-dwelling units. To establish a long-felt need, (1) the need must have been a persistent one that was recognized by ordinarily skilled artisans, (2) the long-felt need must not have been satisfied by another before the claimed invention, and (3) the claimed must actually satisfy the long-felt need. The Board found that the Examiner failed to properly consider the evidence presented in the declarations of a long-felt need for preventing cable theft in the specific context of multi-dwelling units. 


Secondary considerations arguments such as industry praise and commercial success can be a critical tool against obviousness but can be difficult because of the requirement to establish a nexus between a claim and the objective evidence. The industry praise for a feature of an invention may not be apparent until several years after commercialization. These cases highlight strategies for defending challenged claims in post grant proceedings by ensuring claims have sufficient nexus to secondary considerations and providing patent owners a chance to amend claims post grant.


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