In re Glatt Air Techniques, Inc.: Single Embodiment Commercial Success

By Jason Rantanen

In re Glatt Air Techniques, Inc. (Fed. Cir. 2011)
Panel: Newman, Prost (author), Moore

Glatt Air Techniques involves the reexamination of Patent No. 5,236,503, relating to an improvement to an apparatus known as a Wurster coater used to coat particles such as pharmaceutical ingredients.  The improvement comprises a shield means, such as a physical shield or air wall, positioned adjacent the spray nozzle that prevents particles from prematurely entering the stream of the coating spray before the spray pattern has fully developed, thus causing blockages in the apparatus.  During reexamination, the examiner rejected the claim at issue as obvious in light of the prior art, a determination that was upheld by the Board of Patent Appeals and Interferences.  In reaching its conclusion, the Board also rejected Glatt's commercial success evidence because it related only to a single embodiment – a physical shield – and the claim also covered the use of an air wall.  Thus, the Board concluded, the evidence was not commensurate in scope with the claim.

On appeal, the CAFC first found that the Board had failed to establish a prima facie case of obviousness.  It also disagreed with the Board's rejection of Glatt's evidence of commercial success, expanding on its past holding that "commensurate" does not mean "every" embodiment.   "The fact that Glatt’s commercial products only contain one type of shielding means does not make its commercial success evidence irrelevant. Under the PTO’s logic, there would never be commercial success evidence for a claim that covers more than one embodiment."  Slip Op. at 10.  Citing past precedent, the CAFC went on to state that "we have consistently held that a patent applicant “need not sell every conceivable embodiment of the claims in order to rely upon evidence of commercial success.” Id. (quoting In re DBC, 545 F.3d 1373, 1384 (Fed. Cir. 2008).  Thus, "commercial success evidence should be considered should be considered 'so long as what was sold was within the scope of the claims.'” Id.

Comment: Note that simply being commensurate with the scope of the claim does not necessarily satisfy the nexus requirement, as illustrated by the outcome of In re DBC.

Update: PharmaPatents Blog provides a detailed discussion of the CAFC's reversal of the Board's prima facie case of obviusness, asking whether there was anything else the applicant could have done to avoid a rejection by the examiner and Board.   

39 thoughts on “In re Glatt Air Techniques, Inc.: Single Embodiment Commercial Success

  1. I think the “non-US” adjective above should help your “wondering”, blimey.

    Let’s stick to the gold standard O patents, mm’K?

  2. ping, I’m wondering whether you lump English law in with trash European law, and wondering just how much you would purge if you were to clean out all the Euro law but leave the English law undisturbed. Considering how much English law there is these days in European patent law, it might indeed be a minimal loss, as you say.

  3. You’d make a fine examiner Maxi, course we would have to purge your mind of all that euro-trash non-US law, but that would be a minimal loss.

  4. “MD, I’m interested, sort of. But based on what I’ve read I’m inclined to agree that the patent is invalid in view of Naunapper.”

    That’s shocking. Examiner Mooney is inclined to agree, that based on what he’s read, which is probably nothing more than a skimming of the Patently O post, the patent is invalid.

  5. MD, I’m interested, sort of. But based on what I’ve read I’m inclined to agree that the patent is invalid in view of Naunapper.

  6. lulz you have the advantage of me there. I have read only the Decision, the patent and Naunapper. Upthread, I gather from Brinckerhoff something about a Glatt “would not have” type Declaration given in evidence, but then another commenter tells us that it was not the evidence relied upon by J. Prost, and I haven’t see any “reasons argued” yet.

    Must I go myself to the wrapper at the PTO, or have I over-read them?

    Sorry you are bored. Perhaps another reader is more interested?

  7. “2. Naunapper belongs to Glatt. In the patent, Glatt tells us all about numerous prior art documents, but not about its own novelty destroying document. Do you find that noteworthy?”

    No. Because Naunapper wasn’t “novelty destroying” for the reasons argued by applicant and noted by J. Prost.

    Your attempts at being provocative are more boring than ever.

  8. I’m not that clever.

    I’ll say if even Dim can see the traps you lay.

    Careful there Maxi in taking down your empty trap, ya might fall into it yourself.

    (mental picture of Maxie hanging upside down with one leg tied to the sprung trap, waiting for one of the other horsemen to ride by and cut him down.)

    Maxie – here’s a hint – rotate your arms and pretend you are a windmill.

  9. Two more trick questions for you Light:

    1. If what the BPAI thought is indeed as Anon reports it to be, why then didn’t the BPAI run a novelty objection?

    2. Naunapper belongs to Glatt. In the patent, Glatt tells us all about numerous prior art documents, but not about its own novelty destroying document. Do you find that noteworthy?

  10. Light, you are reading far too much into my postings. I’m not that clever. Think of me as the little boy watching the procession and asking awkward questions. Perhaps those questions will reveal that the Emperor has no clothes, perhaps not. Answers are all I seek.

    You will grasp that “readily apparent” doesnot satisfy. Have you looked at Naunapper Fig 5 through the eyes of one who does fluidized beds and particle coating? Have you read Naunapper and the patent in suit? What do you think, as a person skilled in the art? Is Naunapper capable of shielding, or not?

  11. MaxDrei,

    I have a question for you:

    Was your proposition at 6:07 PM meant to be a trick question?

    The reason why I ask is because your logic – as given in your proposition does not fail – it is your trying to draw your proposition too closely to the instant case that fails.

    To wit, you state “Naunapper discloses the identical structure. Applicant teaches that a cylinder of uprising gas surrounding the nozzle is all you need, to “shield” the nozzle.

    But those are not the facts of the instant case. There was not an identical disclosure and teaching of identicalness, as you have alluded to. I see how you have set the trap of the trick with your earlier question to me, but without going into a more detailed study than I wish to do, I would say that the instant case does not support your inferential leap.

    Without more, I would rest with the CAFC and with m-p-f lulz who makes the pertinent point that the Office has the case to prove, not the applicant.

    I would say that you have laid out a nice subtle trick, possibly one a professor of patent law might use on a quiz.

  12. I believe that is basically what the BPAI said. But the court said it was “readily apparent” that it was wrong in that the same function was not disclosed.

  13. How about this for a proposition: The structure disclosed by the Applicant (in the app as filed) is a cylinder of uprising gas, surrounding the nozzle in the up-bed. Naunapper discloses the identical structure. Applicant teaches that a cylinder of uprising gas surrounding the nozzle is all you need, to “shield” the nozzle. Thus, the needed “substantial evidence” is supplied by Glatt, in the app as filed. What better source of evidence can there be? Claimed subject matter not novel (even when M+F).

    Where does my logic fail?

  14. “That is a conclusion. Back it up with facts, please.”

    The burden is on the PTO to establish by substantial evidence that the prior art reference performs the identical function and the structure corresponds to the structure disclosed by the applicant or is equivalent thereto. The PTO failed. So you’ll have to forgive me for not backing up my position with facts. I don’t have to.

  15. I am sorry MaxDrei, I do not know the origin of “teaching” in the context of novelty. Perhaps Ned can answer this one.

  16. Every answer prompts further questions. Thanks, Light, for playing.

    In the context of the law of novelty, where do I find the origin of that interesting word “teaches”? Does it come from the Statute or from caselaw?

    Sorry you do not understand my sad comment. Never mind. Not important.

  17. Question: Presumably it is now too late for the PTO to put such evidence together?

    Answer: No. An application does not go to patent after the decision at the Board of Appeals. The application is returned to the examiner for the examiner to “carry into effect the decision” “as the condition of the proceeding may require” (see 37 CFR 41.54).

    The examiner always* has the option (with approval from the Director) to reopen prosecution and put that evidence that you refer to together. See 37 CFR 1.198.

    (* – this “always” is limited “to consideration of matters not already adjudicated, sufficient cause being shown“) — or “under the provisions of § 1.114 or § 41.50“.

    Question: Can a printed prior publication “disclose” something while falling short of “teaching” it?

    Answer: No. The reference either teaches it or it does not. It may teach something inherently though.

    I do not understand your sadness comment.

  18. Thanks Light. The CAFC reprimanded the PTO for a lack of “substantial evidence” that Naunapper “teaches” shielding. So, I imagine that for the CAFC a novelty attack is precluded, until substantial evidence of the capabilities of Naunapper is adduced. Who will do that? Presumably it is now too late for the PTO to put such evidence together?

    Can a printed prior publication “disclose” something while falling short of “teaching” it. Is this what “inherency” is all about? Did the PTO ever run the argument that a degree of shielding is “inherent” in Naunapper Fig 5, whenever the flap valve 13 is open, ie in the position for breaking up agglomerates?

    I remain suspicious that the PTO did not fancy the novelty attack so ran the obviousness attack instead, thinking that such a close call on 102 ought inevitably to fall on 103. If so, that’s a bit sad.

  19. Question: if the BPAI had discerned a lack of novelty over Naunapper, what would it have done? Remanded?

    Answer: The BPAI has more than one option, but in your scenario, I believe that the one that they would take would be to make the rejection themselves. See 37 CFR 41.50.

  20. I have looked at Naunapper. No doubt about it, the rising cylinder of gas around the spray nozzle has substantial capability to “shield” the spray pattern that is issuing from the nozzle against the entrance of particles. But how much shielding depends on the specification of the gas flow. The proper objection was that the claimed subject matter lacked novelty over Naunapper (subject to the M+F defence being run by Anon). Public PAIR is down so I can’t see if a novelty objection was ever made.

    Of course, a claim-around (if the M+F novelty defence fails) to establish mere novelty is child’s play.

    I see this case as useful for the proposition that not all subject matter that barely survives 102 is vulnerable to attack under 103. Once Applicant has a claim that is novel, Naunapper is hopeless as an obviousness attack.

    Question: if the BPAI had discerned a lack of novelty over Naunapper, what would it have done? Remanded?

  21. “Glatt submitted a decaration explaing how/why Naunapper’s airflow would not form an “air wall” that performs the shielding function.”

    That declaration had nothing to do with what the PTO relied on (Fig. 5). The court did not even mention the declaration – either in the oral argument or in the decision.

    “The claim was m-p-f. The reference didn’t perform the identical function nor was the structure equivalent. End of story.”

    That is a conclusion. Back it up with facts, please.

  22. Neither Glatt nor Naunapper had an “air shield” in their described devices. They both have air flow that circulates the particles into the coating spray and Naunapper teaches that the air flow can be adjusted to break up agglomerates of particles.

    Glatt’s main embodiment had a physical shield. Glatt’s spec taught that an “air wall” also can perform the shielding function. The PTO used that teaching to interpret the means-plus-function “shielding means” term and then decided that the airflow in Naunapper can perform the shielding function, even though Naunapper doesn’t teach that it performs that function and Glatt submitted a decaration explaing how/why Naunapper’s airflow would not form an “air wall” that performs the shielding function.

  23. someone like me wrote the appeal

    lols 6 – nice way to bring in the weekend with major lols.

    Let me guess, you wrote the appeal in a one-word answer.

    How is that law school thing goin for you?

  24. “What are you getting at anyway?”

    Probably that someone like you wrote the replies and original appeal, and someone like me wrote the appeal to the CAFC.

  25. “Will I be surprised to discover that a different law firm was used for the appeal to the CAFC?”

    Will you be? And if so, who would care? What are you getting at anyway?

  26. The claim was m-p-f. The reference didn’t perform the identical function nor was the structure equivalent. End of story.

    So why does the applicant have to appeal all the way to the Fed. Cir. to get the examiner and APJ’s reversed?

  27. Sorry, ping, for not making myself clear. I would like to know whether or not the Naunapper air curtain is capable of “shielding”. We have the USPTO saying adamantly that it is, Glatt saying just as dogmatically that it isn’t, and the CAFC copping out, saying to the PTO that the substantial evidence to validate its assertion was just not there. My point is that the PTO is not going to get such evidence from the Applicant, is it?

    As to EPO-PSA, I do not say that EPO Examiners always get everything right, just that PSA gives them the edge in that department (and that since every case at the EPO gets examined by a 3-member examining division, with all three having to sign the decision either to refuse or allow, there is less room for the maverick views of a single Examiner to hold sway). In fact, I hope EPO examiners go on getting it wrong, for then I can earn my crust, helping the Applicant.

    You don’t want me to reply to your last para, I’m sure.

  28. So what are ya sayin Maxie?

    Typically you are much clearer on how the EPO and its PSA system (or whatev) is so spot on in gettin patent matters right.

    Are ya saying that Sunshine Malcolm is off in the rye field again?

  29. link to register.epoline.org

    ….is a link to the file at the EPO of the family member EP-B-570546. From it one sees that from the outset Naunapper was centre stage, but the FAOM was essentially a Notice of Allowability, for claims just like those before the CAFC. No wonder Glatt felt compelled to fight all the way to the CAFC.

    So far, the only party able to recognise in Naunapper’s apparatus a capacity to shield is the USPTO. Is that recognition perverse, or was the EPO examining division sleeping? Whether an Opponent could have helped the EPO to a different view, closer to that held in the USPTO, we will never know, for the European patent went unopposed.

  30. Did the checking for you, MM. The same law firm did both the appeal brief to the BPAI and the appeal to the Fed Cir.

  31. Half quotes have always bugged me – they show an inherent dishonesty in the person making them.

    Let’s have the rest of the story:

    Naunapper teaches a way to remedy the blockage caused by particle agglomeration using bursts of air. In contrast, Glatt’s invention prevents the agglomeration from occurring in the first place. The Board’s finding that Naunapper teaches shielding the nozzle to prevent particles from prematurely entering into the initial spray pattern is not supported by substantial evidence because Naunapper does not teach shielding. Naunapper’s air source can be used to (1) circulate particles and (2) clear blockages. The air source cannot perform both of these functions simul-taneously, and more importantly, neither of these func-tions constitutes shielding. Because Naunapper does not teach shielding, we conclude that the Board has failed to make a proper prima facie case of obviousness.

    Good day.

  32. Ah yes. I see it now (at the foot of page 8). Thanks Malcolm for the illumination, how the CAFC operates. Makes sense.

  33. MaxDrei How did the CAFC come to the idea that the apparatus was novel?

    C’mon, Max. It’s “readily apparent.”

    That’s all you little people need to know.

  34. Plenty in here apart from the commercial success issue. I like the serendipitous name “glatt” (in German, slippery). How did Glatt get on at the EPO? Does anybody know the serial number of the EPO family member? I see here fun stuff on novelty, clarity of claiming, and sufficiency of disclosure, apart from bare obviousness. And I’m curious how the claim fared against the EPO “problem and solution approach”.

    Thinking of novelty, both Naunapper and the claimed invention are fluidized bed coaters with an air wall. The air wall recited in the claim can shield. The PTO announces that the air wall in Naunapper has some shielding capability (depending on how you operate it). Claimed is an apparatus, not a process. How did the CAFC come to the idea that the apparatus was novel?

    But once you have a novel claim then, clearly, Naunapper cannot render it obvious. again, I wonder what happened at the EPO. Courteney, liked your Paper. Any thoughts on novelty?

  35. It’s good to see the Board get some schooling from the Fed. Cir. For years we’ve seen a steady decline in the quality of Board decisions. Hopefully cases like this one will start to reverse that trend.

  36. The linked declaration talks about Nannaper Fig. 7. Was that even relevant to the case? Maybe that is why the court never mentioned it.

  37. The insight on the requirements for evidence of commerical success is helpful, but I really think this case is interesting for the discussion on the prima facie case of obviousness. The Fed. Cir. found that it was “readily apparrent” that the cited reference did not teach what both the Examiner and the Board had said it did.

    Here’s my article, with links to the reference and the declaration the applicant submitted during prosecution to explain.

    link to pharmapatentsblog.com

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