Substantial Evidence Found Lacking in Rejection of Means-Plus-Function ClaimYesterday, in In re Glatt Air Techniques, Inc (here), the CAFC reversed the rejection of claim 5 of U.S. Patent 5,236,503. The reversal held that the USPTO’s obviousness rejection was not based on substantial evidence. Moreover, the court reminded the USPTO that evidence of secondary indicia (past post on this topic here) need not cover every conceivable embodiment of a patent.The ‘503 Patent is directed to a spray nozzle technology which provides a circular shield about the spray nozzle to preclude certain particles from entering the spray field prematurely. Claim 5 is written in a Jepson format, and includes a means-plus-function element (don’t try this at home).  The MPF element is a “shielding means.” (read my earlier post on why MPF claims are very desirable in patent reexamination). The  shielding means recites a function of shielding the initial spray pattern developed by said nozzle against the entrance of particles moving upwardly . . . The structure of the specification included both a physical shield and an air barrier.In rejecting claim 5, the USPTO (Control No. 90/008,482) identified a prior art system which utilized a burst of air to clear clogged particles from a nozzle. Claim 5 was rejected as obvious in view of this system. Furthermore, Patentee’s evidence of secondary considerations of non-obviousness was rejected as being related only to the physical barrier embodiment.On appeal, the CAFC explained:The Board properly found that [the art reference] 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. [The art reference] 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 [the art reference] teaches shielding the nozzle to prevent particles from prematurely entering into the initial spray pattern is not supported by substantial evidence because [the art reference] does not teach shielding. [The art reference’s] air source can be used to (1) circulate particles and (2) clear blockages. The air source cannot perform both of these functions simultaneously, and more importantly, neither of these functions constitutes shielding.With respect to the secondary indicia, the CAFC additionally pointed out that,To the extent the PTO asserts that Glatt needed to submit commercial success evidence from multiple embodiments 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 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 embodiment of the claims in order to rely upon evidence of commercial 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)).Although Glatt was successful on appeal, the appeal delay is not without consequence. During the prosecution phase of the patent, while claim 5 was retained in original form, claim 8 was amended  (all other claims subject to reexamination were canceled). Claim 8 was originally indicated as allowable on May 20, 2008, but this claim will not exist in amended form until printed with the reexamination certificate. Thus, the appeal delay has effectively surrendered 3 years of patent term for claim 8 (the printing process will take at least another 12 weeks).

Yesterday, in In re Glatt Air Techniques, Inc (here), the CAFC reversed the rejection of claim 5 of U.S. Patent 5,236,503. The reversal held that the USPTO’s obviousness rejection was not based on substantial evidence. Moreover, the court reminded the USPTO that evidence of secondary indicia (past post on this topic here) need not cover every conceivable embodiment of a patent.

The ‘503 Patent is directed to a spray nozzle technology which provides a circular shield about the spray nozzle to preclude certain particles from entering the spray field prematurely. Claim 5 is written in a Jepson format, and includes a means-plus-function element (don’t try this at home).  The MPF element is a “shielding means.” (read my earlier post on why MPF claims are very desirable in patent reexamination). The  shielding means recites a function of shielding the initial spray pattern developed by said nozzle against the entrance of particles moving upwardly . . . The structure of the specification included both a physical shield and an air barrier.

In rejecting claim 5, the USPTO (Control No. 90/008,482) identified a prior art system which utilized a burst of air to clear clogged particles from a nozzle. Claim 5 was rejected as obvious in view of this system. Furthermore, Patentee’s evidence of secondary considerations of non-obviousness was rejected as being related only to the physical barrier embodiment.

On appeal, the CAFC explained:

The Board properly found that [the art reference] 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. [The art reference] 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 [the art reference] teaches shielding the nozzle to prevent particles from prematurely entering into the initial spray pattern is not supported by substantial evidence because [the art reference] does not teach shielding. [The art reference’s] air source can be used to (1) circulate particles and (2) clear blockages. The air source cannot perform both of these functions simultaneously, and more importantly, neither of these functions constitutes shielding.

With respect to the secondary indicia, the CAFC additionally pointed out that,

To the extent the PTO asserts that Glatt needed to submit commercial success evidence from multiple embodiments 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 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 embodiment of the claims in order to rely upon evidence of commercial 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)).

Although Glatt was successful on appeal, the appeal delay is not without consequence. During the prosecution phase of the patent, while claim 5 was retained in original form, claim 8 was amended  (all other claims subject to reexamination were canceled). Claim 8 was originally indicated as allowable on May 20, 2008, but this claim will not exist in amended form until printed with the reexamination certificate. Thus, the appeal delay has effectively surrendered 3 years of patent term for claim 8 (the printing process will take at least another 12 weeks).