How does the scope of commercial success relate to patent claims?
The scope of commercial success must be commensurate with the scope of the patent claims to be considered as evidence of non-obviousness. MPEP 716.03(a) states:
The commercial success must be due to claimed features, and not due to unclaimed features. Joy Technologies Inc. v. Manbeck, 751 F. Supp. 225, 229, 17 USPQ2d 1257, 1260 (D.D.C. 1990)
This means that:
- The successful product must embody the claimed invention
- The features responsible for the success must be those specified in the claims
- If the commercial success is due to an unclaimed feature, it is not evidence of non-obviousness
- If the claimed invention is only a part of the commercial product, the applicant must show that the success is due to that part
Examiners will carefully evaluate whether the scope of the commercial success aligns with the scope of the claims to ensure that the evidence is truly probative of non-obviousness for the invention as claimed.
To learn more: