In Re Glatt Air Techniques, Inc.
630 F.3d 1026
Fed. Cir.2011Background
- Glatt appeals from a Board decision that claim 5 of the '503 patent reexamination is unpatentable for obviousness under 35 U.S.C. § 103(a).
- The invention improves a Wurster coating apparatus by shielding the spray nozzle to prevent premature entry of particles and reduce agglomeration.
- Prior art Wurster coaters suffer from particle agglomeration due to premature exposure to the spray pattern; Glatt’s shielding means aims to solve this problem.
- Claim 5 is written in Jepson format, reciting an improvement over prior Wurster coaters and including a shielding means.
- The reexamination record shows the examiner relied on Naunapper to teach shielding by an air wall and concluded obviousness.
- Glatt argued against the prima facie case of obviousness and submitted secondary considerations evidence (unexpected results, long-felt need, commercial success).
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether Naunapper teaches shielding the nozzle | Glatt asserts Naunapper does not teach shielding. | PTO contends Naunapper can provide an air wall shielding function. | No proper prima facie case; Naunapper does not teach shielding. |
| Whether secondary considerations overcome obviousness | Glatt argues evidence shows nonobviousness (commercial success, etc.). | PTO contends the evidence is not commensurate with claim scope. | Secondary considerations insufficient; not reached due to lack of prima facie case. |
Key Cases Cited
- In re Ehrreich, 590 F.2d 902 (CCPA 1979) (preamble in Jepson-type claims is admitted prior art)
- In re Kotzab, 217 F.3d 1365 (Fed. Cir. 2000) (review standard for obviousness de novo with factual findings)
- Ormco Corp. v. Align Tech., Inc., 463 F.3d 1299 (Fed. Cir. 2006) (secondary considerations may illuminate obviousness)
- Applied Materials, Inc. v. Adv. Semiconductor Materials Am., Inc., 98 F.3d 1563 (Fed. Cir. 1996) (scope of commercial success must be commensurate with claim scope)
- In re DBC, LLC, 545 F.3d 1373 (Fed. Cir. 2008) (commercial success evidence considered with claim scope)