Single Embodiment Is Sufficient Evidence to Show Commercial Success
January 05, 2011
Last Month at the Federal Circuit - February 2011
Judges: Newman, Prost (author), Moore
[Appealed from: Board]
In In re Glatt Air Techniques, Inc., No. 10-1141 (Fed. Cir. Jan. 5, 2011), the Federal Circuit reversed the Board’s finding of obviousness because it was not supported by substantial evidence. The Court also reversed the Board’s determination that the patentee failed to provide sufficient evidence of commercial success of the broadly claimed invention to demonstrate secondary considerations that would overcome the obviousness determination.
Glatt Air Techniques, Inc. (“Glatt”) owns U.S. Patent No. 5,236,503 (“the ’503 patent”) directed to a Wurster coating apparatus. A Wurster coater is used to coat particles, such as pharmaceutical ingredients, by spraying the coating material onto particles circulating within the apparatus. Wurster coaters are known to suffer from agglomeration that occurs when particles prematurely enter the coating spray before the spray pattern has fully developed. This premature entry causes the particles to become overly wet and stick together, causing blockages. Glatt’s solution, the ’503 patent, shields the coating spray nozzle to prevent premature entry of the particles into the spray. The specification of the ’503 patent describes several embodiments. One embodiment is a cylindrical partition that surrounds the coating spray nozzle and acts as a physical shield. The second is an “air wall” or stream of air that surrounds the nozzle and prevents particles from prematurely entering into the spray pattern. The ’503 patent is written in Jepson format, where the preamble recites prior Wurster coaters as prior art.
A third-party ex parte reexamination request was granted by the PTO in February 2008 for claims 5-8 and 10 of the ’503 patent. During the reexamination, Glatt cancelled claims 6-7 and 9-11, and amended claim 8. The examiner allowed amended claim 8 but rejected claim 5 as obvious in view of German Patent DE 3323418 (“Naunapper”). The Board affirmed the examiner’s rejection based on the determination that Naunapper taught shielding the spray nozzle by creating an air wall or stream surrounding the spray nozzle. The Board also rejected Glatt’s argument of secondary considerations based on commercial success. Glatt appealed the Board’s obviousness determination and the Board’s rejection of Glatt’s secondary considerations evidence.
On appeal, the Court held that Glatt’s invention was not obvious in view of prior art Wurster coaters and Naunapper. According to the Court, Naunapper teaches a Wurster coater that combats particle agglomeration by temporarily increasing the airflow from the air source. This “burst” of air clears blockages by blowing the agglomerated particles though the blocked area and dispersing the particles. In contrast, the Court explained that Glatt’s invention teaches a shielding means that prevents circulating particles from prematurely entering the spray pattern and agglomerating. The Court determined that the Board properly found that Naunapper modulates gas flow to control agglomeration, but erred because Naunapper does not shield circulating particles from entering the initial spray pattern. The Court observed that Naunapper remedies blockages caused by particle agglomeration, while Glatt’s invention prevents agglomeration from occurring in the first place. Rejecting the Board’s finding that Naunapper teaches shielding the nozzle, the Court explained that Naunapper’s teaching can be used to circulate particles and to clear blockages, but not both of these simultaneously. Therefore, the Court held that Naunapper does not teach shielding and reversed the Board’s determination of obviousness. Turning to the issue of secondary considerations, the Court rejected the Board’s determination that Glatt’s secondary considerations evidence was not commensurate with the scope of claim 5. The Court observed that the Board construed “shielding means” in claim 5 to include both physical shields and an air wall shield, and the Board rejected Glatt’s secondary considerations evidence because Glatt presented evidence relating only to a physical shield. The Court rejected the Board’s determination that the evidence of commercial success must be commensurate with the scope of the claim. Noting that a company is unlikely to sell a product containing multiple, redundant embodiments of a patented invention, the Federal Circuit reaffirmed that an applicant does not need to sell every embodiment of the invention to rely on evidence of commercial success. The Court held that commercial success evidence should be considered as long as the product falls within the scope of the claims.
Summary authored by Kevin D. Rodkey, Esq.