United States Court of Appeals
for the Federal Circuit
__________________________
(Reexamination No. 90/008,482)
IN RE GLATT AIR TECHNIQUES, INC.
__________________________
2010-1141
__________________________
Appeal from the United States Patent and Trademark
Office, Board of Patent Appeals and Interferences.
__________________________
Decided: January 5, 2011
__________________________
CHARLES P. KENNEDY, Lerner, David, Littenberg,
Krumholz & Mentlik, LLP, of Westfield, New Jersey
argued for appellant. With him on the brief were MARCUS
J. MILLET and ROY H. WEPNER.
RAYMOND T. CHEN, Solicitor, Office of the Solicitor,
United States Patent and Trademark Office, of Alexan-
dria, Virginia, argued for the Director of the United
States Patent and Trademark Office. With him on the
brief were FRANCES M. LYNCH and WILLIAM LAMARCA,
Associate Solicitors. Of counsel was ROBERT J. MCMANUS,
Associate Solicitor.
__________________________
Before NEWMAN, PROST, and MOORE, Circuit Judges.
IN RE GLATT AIR 2
PROST, Circuit Judge.
Glatt Air Techniques, Inc. (“Glatt”) appeals from the
final decision of the Board of Patent Appeals and Inter-
ferences (“Board”) holding claim 5 in reexamination
number 90/008,482 unpatentable for obviousness under
35 U.S.C. § 103(a). See Ex parte Glatt Air Techniques,
Inc., No. 2009-012215 (B.P.A.I. Sept. 29, 2009) (“Deci-
sion”). Because some of the Board’s key factual findings
relating to its obviousness analysis are not supported by
substantial evidence, and because the Board erred in
concluding that the claims would have been obvious as a
matter of law, we reverse.
3 IN RE GLATT AIR
BACKGROUND
A. The Invention
The invention involves a coating apparatus known as
a Wurster coater used to coat particles, e.g., pharmaceuti-
cal ingredients. Wurster coaters work by spraying the
desired coating material onto particles circulating within
the apparatus. Prior art Wurster coaters, including
Glatt’s own Wurster coating apparatus, suffer from parti-
cle agglomeration, which increases the amount of time it
takes to coat the particles. The agglomeration occurs
because the circulating particles prematurely enter the
stream of coating spray before the spray pattern has fully
developed. This premature entry causes the particles to
become overly wet and to stick together causing blockages
in the apparatus. Glatt’s solution to this problem involves
shielding the coating spray nozzle to prevent the particles
from entering the spray prematurely.
The specification of U.S. Patent No. 5,236,503 (“’503
patent”) describes embodiments of the invention that
contain a cylindrical partition that surrounds the coating
spray nozzle and acts as a physical shield to prevent
premature entry of the circulating particles. The specifi-
cation additionally notes that “other shielding arrange-
ments may be utilized. For example, shielding of the
spray nozzle may be accomplished by formation of an air
wall or stream that surrounds the nozzle and prevents
particles from prematurely entering into the spray pat-
tern.” ’503 patent col.5 ll.3-12.
Glatt’s invention is embodied in claim 5 of the reex-
amination:
IN RE GLATT AIR 4
5. In a fluidized bed coater having a product con-
tainer opening upwardly into an expansion cham-
ber and downwardly into a lower plenum chamber
through an air distribution plate/screen having
openings formed therethrough for upward air flow
from said lower plenum chamber into said product
container, said product container including a sub-
stantially cylindrical partition spaced above said
air distribution plate/screen for defining an inner
upbed area and an outer downbed area, and an
upwardly discharging spray nozzle mounted sub-
stantially centrally within said cylindrical parti-
tion, the improvement comprising shielding
means positioned adjacent said spray nozzle for
shielding the initial spray pattern developed by
said nozzle against the entrance of particles mov-
ing upwardly through the upbed.
’503 patent col.8 l.62-col.9 l.8 (emphasis added).
Claim 5 is written in Jepson format, where the preamble
recites prior Wurster coaters, and the invention is an
improvement, i.e., a shield used in the Wurster coater.
The portion of claim 5 describing this improvement con-
tains a means-plus-function limitation—a “shielding
means.”
B. The Reexamination Proceeding
The ’503 patent issued to Glatt on August 17, 1993.
On February 8, 2007, a third party requested ex parte
reexamination of the patent. The U.S. Patent and
Trademark Office (“PTO”) granted reexamination as to
claims 5-8 and 10 of the ’503 patent. During reexamina-
tion, Glatt canceled claims 6, 7, and 9-11, limiting the
reexamination to unamended claim 5 and amended claim
5 IN RE GLATT AIR
8. The examiner rejected unamended claim 5, but al-
lowed amended claim 8. Glatt appealed the examiner’s
rejection of claim 5 to the Board, which affirmed the
examiner’s rejection.
Because claim 5 is written in Jepson format, the
Wurster coating apparatus described in the claim’s pre-
amble is prior art. See, e.g., In re Ehrreich, 590 F.2d 902,
909 (CCPA 1979) (“[T]he preamble elements in a Jepson-
type claim are impliedly admitted to be old in the art . . .
.”). Accordingly, the examiner rejected claim 5 under 35
U.S.C. § 103(a) as obvious in view of the admitted prior
art from the claim preamble and a single cited reference,
German Patent DE 3323418 (“Naunapper”). J.A. 493.
Looking to the specification of the ’503 patent, the exam-
iner construed claim 5’s “shielding means” to include
“formation of an air wall or stream that surrounds the
nozzle and prevents particles from prematurely entering
into the spray pattern” (“air wall”). J.A. 495. The exam-
iner determined that Naunapper teaches a shielding
means. J.A. 494. According to the examiner, Naunap-
per’s shielding means is “an air wall, or air jacket, sur-
rounding said spray nozzle.” Id. The examiner concluded
that “[i]t would have been obvious to one having ordinary
skill in the art at the time the invention was made to
provide a shielding means . . . as taught by Naunapper . .
. [in the admitted prior art Wurster coater].” Id. Thus,
the examiner’s rejection was based on Naunapper alleg-
edly teaching an air wall shielding means.
In addition to traversing the examiner’s obviousness
rejection, Glatt offered various types of secondary consid-
erations evidence, including evidence of unexpected
results, long-felt need, and commercial success due to the
IN RE GLATT AIR 6
improvement, to rebut the examiner’s prima facie case. 1
The examiner determined that Glatt’s evidence of com-
mercial success was not commensurate in scope with
claim 5. J.A. 499-500. In light of this, and other, alleged
deficiencies in Glatt’s secondary considerations evidence,
the examiner found Glatt’s evidence insufficient to over-
come the prima facie case of obviousness.
Glatt appealed the examiner’s final rejection of claim
5 to the Board, and the Board affirmed the examiner. The
Board agreed that claim 5’s shielding means includes an
air wall. Decision at 12-13. It found that Naunapper
“plainly teaches an arrangement that can provide . . . an
air wall or stream surrounding the [coating spray] nozzle
to address the same or similar problem discussed in the
’503 Patent,” and concluded that the arrangement de-
scribed in Naunapper “would inherently or necessarily be
capable of performing the same function recited for the
claimed ‘shielding means.’” Id. at 13-14. Like the exam-
iner’s rejection, the Board’s determination was based on
its finding that Naunapper teaches shielding the coating
spray nozzle.
The Board also addressed Glatt’s secondary consid-
erations evidence. Id. at 14-15. It noted that none of the
submitted affidavits included a comparison of the claimed
1 Evidence of “‘[s]econdary considerations [such] as
commercial success, long felt but unsolved needs, failure
of others, etc., might be utilized to give light to the cir-
cumstances surrounding the origin of the subject matter
sought to be patented’ and ‘may have relevancy’ as indicia
of obviousness.” Ormco Corp. v. Align Tech., Inc., 463
F.3d 1299, 1311 (Fed. Cir. 2006). Thus, objective evidence
of nonobviousness can be used to rebut a prima facie case
of obviousness. Id.
7 IN RE GLATT AIR
invention against an air wall shield such as the one
taught by Naunapper. The Board agreed that the exam-
iner properly found Glatt’s evidence unpersuasive because
“no evidence demonstrates any unexpected result or
commercial success based on the actual difference be-
tween the claimed invention, as broadly recited, and
Naunapper’s apparatus.” Id. at 15 (emphasis omitted). It
therefore concluded that Glatt’s evidence of nonobvious-
ness was insufficient to outweigh the evidence of obvious-
ness. Id.
Glatt timely appealed. We have jurisdiction under 28
U.S.C. § 1295(a)(4)(A).
DISCUSSION
A claimed invention is unpatentable if the differences
between it and the prior art are such that the subject
matter as a whole would have been obvious at the time
the invention was made to a person having ordinary skill
in the art. 35 U.S.C. § 103(a). We review the Board’s
ultimate determination of obviousness de novo and the
Board’s underlying factual findings for substantial evi-
dence. In re Kotzab, 217 F.3d 1365, 1369 (Fed. Cir. 2000).
In reviewing the record for substantial evidence, this
court takes into account evidence that both justifies and
detracts from the factual determinations. Id. We must
uphold the Board’s determination if a reasonable mind
might accept the evidence as adequate to support the
Board’s factual conclusions. Id.
On appeal, Glatt challenges the Board’s decision on
two primary grounds. First, Glatt contends that the
Board has not made a proper prima facie case of obvious-
ness because Naunapper does not teach shielding the
nozzle to prevent particles from prematurely entering into
IN RE GLATT AIR 8
the initial spray pattern. Second, Glatt argues that the
Board erred by rejecting Glatt’s secondary considerations
evidence. We address each of Glatt’s arguments in turn.
A. Prima Facie Case of Obviousness
As Glatt does not contest that the preamble to claim 5
is admitted prior art, our inquiry is reduced to whether
Glatt’s invention as a whole would have been obvious to a
person of ordinary skill in the art in view of the prior art
Wurster coaters described in the claim and the Naunap-
per reference. See, e.g., In re Fout, 675 F.2d 297, 301
(CCPA 1982). Both Glatt’s invention and Naunapper’s
coating apparatus contain coating spray nozzles. Both
also include an air source located below the coating spray
nozzle. This air is used to circulate the particles in the
apparatus into the spray of coating material. Addition-
ally, Glatt’s invention includes an element that reduces
particle agglomeration—a shielding means that prevents
the circulating particles from prematurely entering the
initial spray pattern. Naunapper contains no such ele-
ment; however, the PTO argues that the air source itself
can be used to generate an air wall that shields the parti-
cles from the initial spray pattern. The PTO indicates
that Naunapper combats the particle agglomeration
problem by temporarily increasing the airflow from the
air source. The “burst” of air generated by this technique
clears blockages by blowing through the agglomeration
and dispersing the particles.
The Board properly found that Naunapper teaches
modulating gas flow in the coating apparatus to control
particle agglomeration. It is readily apparent, however,
that this technique does not shield circulating particles
from entering the initial spray pattern. Naunapper
teaches a way to remedy the blockage caused by particle
9 IN RE GLATT AIR
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.
B. Secondary Considerations
Because the Board has not established a prima facie
case of obviousness, we only briefly address the PTO’s
arguments regarding secondary considerations. Like the
examiner, the PTO contends that Glatt’s secondary con-
siderations evidence was not commensurate with the
scope of claim 5. The PTO construes “shielding means” to
include both a physical shield and an air wall shield. It
notes that Glatt’s submitted evidence relates only to a
single embodiment—a physical shield as contained in
Glatt’s commercially available product. The PTO sug-
gests that Glatt must provide evidence addressing an air
wall shielding means for the submitted evidence to be
commensurate in scope with claim 5.
To the extent the PTO asserts that Glatt needed to
submit commercial success evidence from multiple em-
bodiments for that evidence to be commensurate in scope
with claim 5, this position is not consistent with our
precedent. It seems unlikely that a company would sell a
product containing multiple, redundant embodiments of a
IN RE GLATT AIR 10
patented invention. 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. Rather, we have consistently held that a
patent applicant “need not sell every conceivable embodi-
ment of the claims in order to rely upon evidence of com-
mercial success.” In re DBC, 545 F.3d 1373, 1384 (Fed.
Cir. 2008) (quoting Applied Materials, Inc. v. Adv. Semi-
conductor Materials Am., Inc., 98 F.3d 1563, 1570 (Fed.
Cir. 1996)). Commercial success evidence should be
considered “so long as what was sold was within the scope
of the claims.” Id.
CONCLUSION
Substantial evidence does not support the Board’s
finding that Naunapper expressly or implicitly teaches
using an air wall to shield particles from entering the
initial spray pattern. The Board has not made a proper
prima facie case of obviousness. Accordingly, we reverse.
REVERSED