Influence of Secondary Considerations in Overcoming Prima Facie Case of Obviousness

June 22, 2012

What This Means To You

  • Evidence of secondary considerations can be a powerful tool in overcoming obviousness rejections.
  • Push back on Examiners if a strong case of obviousness is not properly established.


In Wm. Wrigley Jr. Co. v. Cadbury Adams USA LLC, the US Court of Appeals for the Federal Circuit (Federal Circuit) assessed the impact of secondary considerations in an obviousness analysis, emphasizing the need for a strong connection between the claimed invention and evidence of commercial success to overcome an obviousness rejection.

Case Background

Wrigley filed suit against Cadbury for infringement of its patent directed to chewing gum compositions having a desired cooling sensation. The district court granted Cadbury’s motion for summary judgment of invalidity of its patent based on both obviousness and anticipation. The Federal Circuit affirmed.

Decision Analysis

Wrigley argued that its claimed chewing gum composition provided an unexpected cooling effect in view of the prior art. In addition, Wrigley also presented evidence of secondary considerations, including commercial success of its product and internal Cadbury documents showing direct copying of Wrigley’s product.

As previous cases determined, secondary considerations of nonobviousness include commercial success of the invention, satisfaction of a long-felt but unsolved need by the invention, and failures of others attempting to solve the problem addressed by the invention.

In this case, however, the Federal Circuit held that Wrigley’s secondary considerations were not sufficient to overcome the strong showing of obviousness in the prior art. The Court stated that Wrigley failed to establish a link between its claimed invention and evidence of commercial success, pointing to factors other than the cooling effect that contributed to the commercial success of the product.

One of the Federal Circuit judges (Judge Newman) disagreed with the majority opinion, arguing that Wrigley had presented sufficient evidence of secondary considerations to rebut the prima facie case of obviousness. Judge Newman criticized the district court for concluding that a prima facie case of obviousness was established based on prior art alone, and for improperly shifting the burden of proof to the patent holder.


Despite the outcome of this case, evidence of secondary considerations can be a powerful tool in overcoming obviousness rejections. We recommend presenting such evidence when available to rebut a prima facie case of obviousness.