Appellant Waived Challenge to Improperly Appointed BPAI Members

In Re DBC, [2008-1120] (November 3, 2008) [LINN, Dyk, Stearns] The Federal Circuit affirmed the Board’s determination that the claims would have been obvious, and that DBC waived challenging the appointment of the administrative patent judges of the BPAI.
DISCUSSION: The Federal Circuit found that DBC waived its objection to the composition of the BPAI, by not raising that issue before the BPAI.
The Federal Circuit rejected DBC’s argument that the references did not present a substantial new question of patentability, finding that the additional reference was not cumulative. The Federal Circuit also affirmed the BPAI’s rejection of evidence of commercial success, noting that a proponent must offer proof “that the sales were a direct result of the unique characteristics of the claimed invention—as opposed to other economic and commercial factors unrelated to the quality of the patented subject matter.” The Federal Circuit found that DBC did little more than establish substantial sales, and thus it could not conclude that the BPAI’s decision was not supported by substantial evidence.