ALMOND, Senior Judge.
This is an appeal from the decision of the Patent Office Board of Appeals sustaining the examiner's rejection of claims 5 and 8-10 of appellant's application
Appellant's invention is depicted in Figs. 1 and 2 of the drawings:
The invention is described in the specification as follows:
Claim 9 is the broadest claim in the case and reads as follows (subparagraphing ours):
Claim 8 which depends from claim 9 requires that the article be made of polypropylene and have the dimensions set forth above in the description of the invention. Claim 5 depends from claim 8 and requires that the article's collapsed end be shaped so that it can function as a spreader for the dispensed drop.
Claim 10 is an independent claim which reads substantially the same as claim 9 but for the additional limitation that the collapsed end be shaped to function as a spreader.
The article which is primarily intended to be an aid in serological testing can be used, according to the specification, as follows:
According to appellant's specification, serological testing requiring an accurately dispensed drop was formerly carried out by the following process generally known to the prior art:
The board affirmed the rejection of the claims under 35 U.S.C. § 103 as obvious over Sands et al. (Sands)
Sands discloses a dispensing device for introducing medicaments into body cavities. The following figure from the patent is illustrative of that device:
The tube is closed by flattening at one end forming end portion 6, filled with a medicament 4 and then provided with a seal 7 of wax or other suitable material. A slide 3 is placed on the flattened end. In use, the sealed end of the tube is torn off, alone score line 8 if provided. The opened tube is inserted into the body cavity and the slide advanced to extrude the contents into the body.
Wolman discloses a bulb of compressible material having the capability of dispensing a predetermined volume of liquid. In its simplest form, the bulb is provided with means which limit the extent to which it can be compressed. Since the bulb is filled with enough fluid for several measured discharges, it is this limitation which determines the volume to be dispensed by the bulb.
Gross describes a fluid dispenser made up of a flexible bottle for a reservoir, a closure plug for the bottle and a tube extending through the plug into the bottle. The fluid is dispensed by squeezing the bottle which forces the fluid out through the tube. There is no provision which would adapt the dispenser to discharge a predetermined amount with accuracy.
Although the board affirmed a rejection under section 103, its opinion also indicates that the invention was considered as anticipated by the structure in Sands within the meaning of 35 U.S.C. § 102. The opinion states:
We do not agree that the limitation in the claims expressed as a relationship between the size of the opening and the viscosity of the liquid to be dispensed is of "questionable definiteness." Assuming, as apparently did the board, that there is a relationship between the viscosity of any specific liquid to be dispensed and the size of the opening required if a single drop is to be dispensed, appellant's claims in our view are not indefinite in the sense that the scope of protection sought cannot be ascertained. In any event, the issue is not the definiteness of the limitation but whether the limitation is sufficient to distinguish the claimed structure from the reference. It was about the latter question that the outcome in Law actually revolved.
In our view, the limitation in claims 9 and 10 does distinguish them from the Sands' structure. In this regard we do not disagree with the board's apparent conclusion that an intermediate structure made for the Sands' device could possess the characteristics called for in these claims. However, in view of the purpose for which the Sands' device is intended, it is apparent that it requires no critical dimension which would lead to a structure inherently having
The board's opinion is not devoid of reasoning that would support a rejection under section 103. It states:
We do not agree that it would be obvious to make a structure having all the limitations of the claims on appeal merely because it can also be used as the intermediate structure called for by Sands. Certainly that intermediate does not demand the critical dimensions set forth in the claims. We have also concluded that the claims are not obvious over Sands in view of Wolman and Gross. The board did not feel that it was necessary to rely upon the latter two references to sustain the rejection. We agree that they add little to Sands as none of the art of record is directed to single-drop dispensers and does not suggest the criterion that would be demanded of a tubular structure having that capability.
Appellant made of record below several affidavits alleging commercial success flowing from his invention. We think this evidence is of such a character that it convincingly supports the patentability of the claims over the prior art of record. However, the board treated this evidence in the following manner:
Despite the board's comment on the significance of evidence of commercial success and its view of the "closeness" of the obviousness question in this case, it would appear that it did consider the affidavits on their merits but found no connection between the alleged success and the claimed invention. Recently we have set forth our view of the manner of evaluating evidence of commercial success relative to the question of whether an invention would have been obvious within the meaning of section 103. See In re Fielder, 471 F.2d 640 (CCPA 1973) and cases cited therein. It is not necessary for us to repeat that discussion here.
Directing our attention now to the merits of the evidence of record here, we do not agree with the position implicitly held by the board to the effect that the evidence may be insufficient if the commercial success in question is attributable to the unclaimed method of use rather than the structure of the device itself. We think it would be fair to
A nexus between the merits of the invention and the evidence offered must be established before that evidence becomes relevant to the question of obviousness. In re Caveney, 386 F.2d 917, 55 CCPA 721 (1967). The important question is whether the invention's commercial success is related to advantages flowing from its use which were not available to the purchasing public before the invention was made. If the commercial success is unrelated to the merits of the invention, e. g., if demand is a product solely of advertising, then it cannot be persuasive of nonobviousness.
The evidence of commercial success offered in this case is for the most part embodied in three affidavits. These affidavits were executed by officials of the health departments of Maryland, Pennsylvania and Utah. The thrust of their averments is that their organizations have adopted the claimed device, marketed under the trademark "Dispenstir" as a part of a serological testing kit, in preference to the rubber bulb-capillary tube technique. The affidavits allege that the new device is more rapid (about twice as fast) and more accurate than the procedure they had been using. This meant that labor costs were significantly reduced.
Two other affidavits were executed by an employee of the distributor of Dispenstirs. These affidavits indicate that the health departments of New York City and the State of Colorado, the Provincial Laboratory in Edmonton, Alberta and two Army hospitals have also switched to Dispenstirs. The affidavits also indicate that there is significant demand for Dispenstirs sold separately from the kits. In them it is also alleged that more than 11,000,000 Dispenstirs were sold between September 1, 1969 and October 19, 1970, most as part of a serological kit, and that sales for that period exceeded $490,000. We are convinced that appellant has demonstrated that the success achieved by his invention has grown out of the advantages flowing from its use as recognized by those skilled in the art and is, therefore, relevant to the question of obviousness.
We conclude that the invention would not have been obvious in view of the art of record which, as we have already indicated, is not directed to single-drop dispensers, especially in view of the evidence of commercial success. Accordingly, the board's decision is reversed.