CAFC reverses Board in Glatt case as to finding of obviousness

The CAFC identified the two issues:

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
the initial spray pattern. Second, Glatt argues that the
Board erred by rejecting Glatt’s secondary considerations
evidence.

The Board had problems on the prima facie case.
The CAFC noted:

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.

Thus, the Board loses on the prima facie case. The Board did
not fare well on secondary considerations either.

The CAFC noted:

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
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.


Keyword: Jepson