What are the requirements when the claimed invention is not coextensive with the commercial product?
When the claimed invention is not coextensive with the commercial product or process, the applicant must demonstrate a legally sufficient relationship between the claimed feature and the commercial success. This ensures that the commercial success is attributable to the specific aspects of the invention that are claimed.
According to MPEP 716.03(a): “Where the commercially successful product or process is not coextensive with the claimed invention, applicant must show a legally sufficient relationship between the claimed feature and the commercial product or process.” This guidance is based on the case Demaco Corp. v. F. Von Langsdorff Licensing Ltd., 851 F.2d 1387, 7 USPQ2d 1222 (Fed. Cir. 1988).
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