440-600-1992

Federal Circuit Reverses BPAI Decision on Obviousness Due to Lack of Substantial Evidence

The Federal Circuit recently decided In re Glatt Air Technologies, Inc., which concerned a previous ruling finding Glatt Air Technologies ("Glatt") patent obvious in light of prior art.[1] Glatt developed an improvement upon a coating apparatus used in the coating of pharmaceutical ingredients.[2] Commonly known as a Wurster coater, the device sprays a liquid coating substance while circulating the particles to be coated. However, previous Wurster coaters suffer from the particles receiving excess liquid coating by entering the spray stream too early. This causes them to agglomerate, or stick together, and clog the machine.[3] Glatt solved this dilemma by developing a way to shield the sprayer within the device in order to prevent particles from entering the spray stream prematurely.[4] Glatt's product used a physical barrier to shield the spray stream; however, Glatt's claim 5 also encompassed an air-wall shield.[5]

While the patent was granted in 1993, a third party request for ex parte reexamination was granted in 2007.[6] After reexamination, the only claim remaining at issue was claim 5 and its "shielding means."[7] The examiner rejected claim 5 as obvious in light of a German patent ("Naunapper").[8] Naunapper taught an air pulse for clearing already agglomerated particles from the device, which the examiner used to determined that Glatt's patent was obvious by stating, "'[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.'"[9] Glatt appealed the examiner's decision to the Board of Patent Appeals and Interferences, which affirmed the examiner's holding.[10] In turn, Glatt appealed the Board's decision to the Federal Circuit Court of Appeals.[11]

Upon review of the case, the Federal Circuit found that there was not substantial evidence to support a finding of obviousness.[12] Differentiating the Glatt invention from Naunapper, the Federal Circuit pointed out that the Glatt invention "includes an element that reduces particle agglomeration - a shielding means that prevents the circulating particles from prematurely entering the initial spray pattern."[13] However, Naunapper did not possess a similar element.[14] While it had been advanced by the PTO that the air source utilized by Naunapper for spraying could be temporarily increased (in a quick "burst") in order to clear clogs, the Federal Circuit did not equate this to the shielding element in Glatt.[15] To the contrary, the Court stated that the bursting technique did not prevent blockage, but merely cleared it after it had already formed.[16] "In contrast, Glatt's invention prevents the agglomeration from occurring in the first place."[17] Therefore, the Court reversed and found that the Board had failed to establish a prima facie case for obviousness since the "finding that Naunapper teaches shielding the nozzle to prevent particles from prematurely entering into the initial spray patterns is not support by substantial evidence."[18]

An obviousness challenge can lead to invalidation of some or all of a patent's claims. It is important that a patent's innovative elements are carefully analyzed against relevant prior art to ensure that the patent will be able to withstand such attacks. In this particular case, the Federal Circuit corrected the previous erroneous holdings that compared two elements with different purposes and functions.

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