January 5, 2011
The evidence herein is anecdotal, but the pattern is unmistakable: an incompetent BPAI decision is overturned by the CAFC. Glatt Air Techniques had one of its particle coater patents, 5,236,503, rejected over obviousness in reexam by a third-party requestor. The patent office can't tell the difference between prevention and a remedy. That pretty much sums up the Kappos regime's continuing failure of core competence for quality examination: rejection as prevention, leaving only appeal to the Court for remedy. Pathetic that the USPTO cannot recognize an invention, which thereby damages the sole mission of the patent office: to grant worthy patents.
In re Glatt Air Techniques (CAFC 2010-1141) precedential
The invention involves a coating apparatus known as a Wurster coater used to coat particles, e.g., pharmaceutical 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 particle 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.
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 contains a means-plus-function limitation--a "shielding means."
Because claim 5 is written in Jepson format, the Wurster coating apparatus described in the claim's preamble 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.
In addition to traversing the examiner's obviousness rejection, Glatt offered various types of secondary considerations evidence, including evidence of unexpected results, long-felt need, and commercial success due to the improvement, to rebut the examiner's prima facie case.1
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 circumstances 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.
The Board agreed with the examiner in rejection.
On appeal -
A. Prima Facie Case of Obviousness
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 evidence. 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.
Patent office incompetence is revealed by its inability to appreciate the claimed invention: shielding to prevent, as opposed to remedy.
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 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.
B. Secondary Considerations
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. Semiconductor 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.
Posted by Patent Hawk at January 5, 2011 12:25 PM | Prior Art
The evidence herein is not anecdotal, but the pattern is unmistakable: The BPAI is a part of the executive branch, not the judicial branch. Their paychecks come from the people they "oversee." They lack true judicial independence and often see themselves as glorified super examiners.
Why is anyone surprised with a story like this?
Posted by: Pedantic Pete at January 5, 2011 4:36 PM
I'm glad Glatt pursued this to the Fed. Cir. but not all applicants can afford to do that.
Here's my article on this case.
Posted by: Courtenay Brinckerhoff at January 6, 2011 6:38 AM
I wanted to repeat one segment of your comments here that I think is most critical:
"Still, as long as rejections like this can make it past experienced examiners and the Board, it is applicants who bear the ultimate burden and expense of ensuring that patents that should be granted are granted."
Any ideas on corralling the Broadest Unreasonable Interpretation standard that seems to plague the Office?
Posted by: Pedantic Pete at January 6, 2011 7:42 AM
"see themselves as glorified super examiners."
Nailed that one.
Posted by: Shaking my head at January 8, 2011 6:48 PM
I think you're too harsh on Kappos. He inherited a deeply dysfunctional management hierarchy. The PTO is a big ship and has taken decades -- since I was an Examiner in the early 90s at least -- to get where it is. It will take time to get it back on course. I largely support the changes Kappos has made so far. I hate the way the BPAI is run like a sweat shop with "patent attorney clerks" (see http://ipwatchdog.com/2009/04/28/bpai-judges-get-patent-attorney-clerks/id=2941/). I can only hope overal BPAI quality will improve with time. But I'm glad he's focusing on improving examination, and I have noticed an improvement over the last couple years.
Posted by: Defector at January 9, 2011 6:19 PM
"I think you're too harsh on Kappos."
I agree. I think he is doing a very good job.
But I also think it's time that some serious review of APJ competence was done. Some of them are beyond incompetent.
Posted by: We are the Whalers... at January 10, 2011 9:56 AM
Who is watching the henhouse of APJ competence? Who is held accountable? Whatever happened to the Duffy constitutionality question?
Posted by: Pedantic Pete at January 10, 2011 11:04 AM
"Who is watching the henhouse of APJ competence? Who is held accountable? Whatever happened to the Duffy constitutionality question?"
I don't think anybody is watching. I think it's up to the patent bar and the applicants to appeal cases like this to expose shoddy work product that may issue from the BPAI.
I doubt any APJ gets their rating affected by a reversal like this. When the examiners are reversed, their tendency is to brush it off with, "Ah, the Board doesn't know anything." I'm sure the APJ's just think, "Ah, the Feds don't know anything."
The Duffy issued was addressed/corrected/whitewashed awhile ago.
Posted by: We are the Whalers... at January 10, 2011 12:15 PM
All those exhorting the PTO to "get it right first time" have here a good case to demonstrate their point. Having looked at the Glatt patent and the earlier-published Glatt device (called Naunapper), I see that (on the evidence put forward by Glatt itself) claim 5 lacks novelty. I also see how easy it would have been, for Glatt to have written a novel claim in the first place (or to have amended the claim to cure the lack of novelty and go straight through to issue).
Beats me why Glatt did not mention its own prior art, in and among all the other prior art it discussed in its Background section. Then there would have been no purchase for the third party petitioner for re-exam.
But if the various appeal instances have only an ill-founded obviousness objection to review, then no wonder each appeal instance thinks the lower instance was wrong.
Posted by: MaxDrei at January 12, 2011 1:04 AM
"I see that (on the evidence put forward by Glatt itself) claim 5 lacks novelty."
You're even more boring on this site.
Posted by: We are the Whalers... at January 12, 2011 8:25 AM
Whalers, if you are bored by lively debate whether or not a claim is novel, you might be in the wrong profession. Get a life, I would say.
Posted by: MaxDrei at January 12, 2011 11:56 PM
The only person debating the novelty of the claim is you. That's hardly lively.
The Naunapper reference did not perform the identical function of the m-p-f of the claim. No anticipation.
You insisting on saying, "Yes it did" is not debate. Lively or otherwise. It's just boring.
Posted by: We are the Whalers... at January 13, 2011 9:33 AM
Thanks for that summary Whalers. I see now, how "anticipation" is decided, in the USA. I see better now, why some Americans don't "get" anticipation in other jurisdictions. That helps me in my work.
But I can see now how my anticipation argument might be boring for you. Bad luck.
reminds me. I must look at the PTO file, to see if any novelty attack based on Naunapper was ever advanced by the PTO.
Posted by: MaxDrei at January 13, 2011 11:45 AM
"I see now, how "anticipation" is decided, in the USA. I see better now, why some Americans don't "get" anticipation in other jurisdictions."
In other words, you did not "get" anticipation under US law before now.
Maybe now your posts will include this new-found understanding of US law.
Posted by: Pedantic Pete at January 13, 2011 12:39 PM
"Maybe now your posts will include this new-found understanding of US law."
Don't count on it.
I'm sure there are some differences between the U.S. standard of anticipation (i.e. strict identity of invention) and the ROW lack of novelty standards.
But I'm not interested in hearing about them from boring MaxDrei
Posted by: We are the Whalers... at January 13, 2011 12:58 PM
Readers, excuse my ignorance (and how boring you are finding me) but I'm interested in this expression "strict identity of invention" used by Whalers as the definition of "anticipation" in the USA. It is strikingly like the "same invention" that we find verbatim in the Paris Convention (of which the USA is a signatory). So, this from Whalers did/would/could (whatever word you want to play with)unify US domestic patent law with ROW patent law. Is he right in his harmonisation though?
Posted by: MaxDrei at January 14, 2011 2:44 AM
Sigh. You are tedious. But I guess as I keep responding to you, you'll keep posting. You're like that puppy in the cage at the pet store. So desperate for attention that you'll do cart wheels. And then the poor people who've had the misfortune of engaging you once feel bad that they've got to ignore you in the vain hope that you'll stop.
The standard of anticipation in the U.S. is "identity of invention." In other words, the prior art reference has to show the "identical invention" as is claimed, in as much detail as is recited in the claim.
See the first sentense of section 103(a): A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102...
So under section 102, in order for the reference, prior use, prior (offer for) sale, etc., the allegedly anticipating reference/device must be identical to the invention claimed.
The standard for anticipation is not that the prior art reference/device has "all the elements claimed" as you so often see cited, incorrectly, in, for example BPAI and court decisions. The standard is identity of invention.
Posted by: We are the Whalers... at January 14, 2011 8:56 AM
Well thanks Whalers for the tutorial. I like your argument. I never thought of looking in 103 for the test for anticipation.
In the meantime, to see if a 102 objection was ever put up, I tried Public Pair to read the re-exam papers. Could not get to them. Can one?
Posted by: MaxDrei at January 14, 2011 11:34 AM
You have to check the "Control No." button in Public PAIR for 90008482.
Here it is.
Posted by: We are the Whalers... at January 14, 2011 12:21 PM
OK. That helps mightily. Many thanks Whaler. I have found the PTO file but it is tedious for me so I have only skimmed it. Very likely is that I have missed stuff of importance, but never mind because:
I see now that a 102 Naunapper novelty objection was run, and was overcome by a limitation on the vertical location of the nozzle, above the base plane of the cylindrical partition. Just the amendment I had in mind, actually, to get novelty over Naunapper. No wonder the novelty issue was not pursued to the CAFC. No wonder now, that the CAFC was interested in the Naunapper "technique" rather than the Naunapper apparatus. Shame that the claim that I read in the Decision was not so unambiguously clear that I saw from a first reading of it the necessary placement of the nozzle higher up than the base plane of the Wurster cylindrical partition.
I take from Applicant's behaviour that the novelty test in the USA is, after all, not so very different from the one I know in Europe. Judge Rader will be pleased, given his speech yesterday about the need for American judges to harmonise with the decisions of their brother and sister judges in other jurisdictions (and vice versa, of course).
Whaler, it looks from the record as if the vertical position of the nozzle was decisive and that, absent that very specific narrowing of the claim, the invention of Naunapper was indeed "identical" enough for 102 purposes.
So, I think we are now done and dusted.
Posted by: MaxDrei at January 14, 2011 2:58 PM
"Shame that the claim that I read in the Decision was not so unambiguously clear that I saw from a first reading of it the necessary placement of the nozzle higher up than the base plane of the Wurster cylindrical partition."
No shame. Well, no shame unless you are ashamed of being in the same category as people like Mooney and 6 who read a claim on some blog site and pronounce with great certainty, yet zero analysis, that it is invalid.
Posted by: We are the Whalers... at January 14, 2011 4:03 PM
...and those who pronounce with great certainty, and with no need to invoke any analysis to speak of, that it is NOT invalid. How about those people? I say again, that novelty depended on the amendment to the claim, to move the nozzle vertically upwards (so that the invention was no longer "identical"). That rendered moot all the clap-trap from others, about shielding and inherency. We are done, aren't we?
Posted by: MaxDrei at January 15, 2011 3:02 AM
"and those who pronounce with great certainty, and with no need to invoke any analysis to speak of, that it is NOT invalid."
There is that littel thing about patents being presumed to be valid.
It's called the law, MaxDrei. Perhaps you have heard of that.
IF you don't get that, we haven't even started.
Posted by: Pedantic Pete at January 15, 2011 11:39 AM
"...and those who pronounce with great certainty, and with no need to invoke any analysis to speak of, that it is NOT invalid."
And which particular sock puppets are you referring to that engage in this practice? I'm not aware of any. Maybe you have some in mind.
Posted by: We are the Whalers... at January 15, 2011 3:25 PM
Posted by: MaxDrei at January 15, 2011 5:12 PM