The Federal Circuit's opinion in In re Glatt Air Techniques, Inc., discussed in dicta the scope of commercial success evidence necessary to rebut a prima facie case of obviousness. The court confirmed that commercial success of an invention can be based on a single embodiment and further clarified application of 35 U.S.C. ? 103 (obviousness) post-KSR.
KSR and the Obviousness Inquiry
After the US Supreme Court's ruling in KSR International v. Teleflex Inc., many patent applicants were concerned that the Court had made it much more difficult to establish that an invention would not have been obvious in light of the prior art. In KSR, the Supreme Court reviewed the "teaching, suggestion, or motivation" test (TSM test) for determining a combination of prior art teachings and rejected a rigid application of the TSM test in all inquiries regarding obviousness. Rather, the US Supreme Court stated that the obviousness inquiry should be broadly construed, and where an invention is the result of a combination of known elements, the invention must yield more than predictable results to be patented. This inquiry can also include whether there was a design need or market pressure to solve a problem for which there are a finite number of identifiable predictable solutions.
The KSR decision provided little guidance on what could be reliable indicia of non-obviousness. Typical attacks on the nature of the teachings of the cited art were endorsed. Where the prior art teaches away from combining certain elements, a successful means of combining them was more likely than not to be non-obvious. The KSR decision also endorsed the likely non-obviousness of an invention based on the combination of two known elements, where the combination cannot be made in the manner described in the prior art.
The KSR decision also provided little guidance on the appropriate use of secondary considerations of non-obviousness post-KSR. Typically, secondary considerations of non-obviousness could be offered to rebut a prima facie case of obviousness. Such evidence may include evidence of commercial success, long-felt but unsolved needs, failure of others and unexpected results. The weight to be given any evidence was to be made on a case-by-case basis. The mere fact that an applicant had presented evidence did not mean that the evidence was dispositive of the issue of obviousness.
In re Glatt Air Techniques - the Initial Rejections
Patent applicant, Glatt Air Techniques, Inc., appealed from a final decision of the Board of Patent Appeals and Interferences holding claim 5 of US Patent No. 5,236,503 (the '503 patent) obvious under 35 U.S.C. ? 103 in a reexamination proceeding. The invention at issue related to an improved device to coat particles in a fluidized bed coater, known as a Wurster coater. Wurster coaters work by spraying the desired coating material onto particles circulating within the apparatus. Prior art devices suffered from particle agglomeration caused by circulating particles prematurely entering the stream of coating spray before the spray pattern was fully developed. The invention of claim 5 avoided agglomeration by shielding the coating spray nozzle to prevent particles from entering the spray prematurely.
Because claim 5 was drafted in Jepson format, the claim itself identified the prior art and then stated the alleged improvement over the prior art. The PTO rejected the claim as obvious over the admitted prior art recited in the claim preamble and a single cited reference, German Patent DE 3323418 (the "Naunapper" reference). The PTO argued that claim 5, as construed, includes an air shield, as taught by Naunapper. Naunapper taught "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." The office concluded that the arrangement described in Naunapper would inherently or necessarily be capable of performing the same function recited for the claimed shielding means.
To overcome this rejection, Glatt Air Techniques submitted evidence of objective indicia of non-obviousness. The PTO also rejected this evidence because none of the submitted affidavits included a comparison of the claimed invention against an air wall shield such as the one taught by Naunapper.
Reversal by the Federal Circuit
The Federal Circuit reversed the PTO's rejection of obviousness over the cited art. The Federal Circuit determined that the Naunapper reference did not teach shielding the nozzle to prevent particles from prematurely entering the initial spray pattern. The Federal Circuit determined that the air source disclosed by Naunapper could be used to circulate particles and clear blockages, but not shield the particles to prevent agglomeration as required by claim 5. The Federal Circuit held that therefore, the PTO failed to make a proper prima facie case of obviousness.
With respect to secondary considerations, the Federal Circuit noted that the PTO incorrectly dismissed Glatt's evidence of commercial success because it was directed to a single embodiment. The Federal Circuit stated that the court has consistently held that a patent applicant "need not sell every conceivable embodiment of the claims in order to rely upon evidence of commercial success ... Commercial success evidence should be considered so long as what was sold was within the scope of the claims."
The Federal Circuit's holding and dicta in In re Glatt are good news for patent applicants, especially those seeking to patent mechanical inventions which combine or improve on existing known technologies. The cited art in In re Glatt was not patent-defeating because it did not serve the same purpose as the claimed invention. Moreover, where evidence of commercial success is available, it need only be from a single embodiment, even if there are multiple embodiments of the claimed invention.
Antoinette F. Konski is a partner with Foley & Lardner LLP.
Read Antoinette Konski's previous column.