The U.S. Court of Appeals for the Federal Circuit, in reversing a finding of obviousness by the U.S. Patent and Trademark Office Board of Appeals (the Board), 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 Glatt Air Techniques, Inc., Case No. 10-1141 (Fed. Cir., Jan. 5, 2011) (Prost, J.).

Glatt Air Techniques (Glatt) appealed from the final decision of the Board in a reexamination proceeding holding the claimed invention unpatentable as being obvious over prior art. The claimed invention improved over prior art coating apparatus for coating particles by providing a shield configured to prevent particles from prematurely entering the spray pattern. The specification described the claimed shield means to include a cylindrical partition surrounding the coating spray nozzle and acting as a physical shield to prevent premature entry of particles into the spray pattern. The specification also described alternative shielding arrangements, such as shielding the spray nozzle by formation of an air wall or stream configured to prevent the particles from premature entry into the spray.

During the reexamination proceeding, the examiner interpreted the claimed shield means to require “formation of an air wall or stream that surrounds the nozzle and prevents particles from prematurely entering into the spray pattern.” The examiner determined that the prior art teaching of “an air wall, or air jacket, surrounding … spray nozzle” read on the claimed shield means. In addition to traversing the examiner’s obviousness rejection, Glatt offered commercial success type secondary consideration evidence to rebut the examiner’s contention of prima facia obviousness. However, the examiner determined that the secondary consideration evidence was not commensurate in scope with the claimed invention. After the Board agreed with the examiner, Glatt appealed.

In reversing the Board, the Federal Circuit agreed with Glatt that the prior art did not teach the claimed shield means configured to prevent particles from prematurely entering into the spray pattern, but only a way to remove the blockage caused by the particles prematurely entering into the spray pattern. The Federal Circuit also rebuffed the USPTO’s position that secondary considerations must encompass multiple embodiments to be commensurate in scope with the claimed invention. Rather, the Federal Circuit concluded that a patent applicant “needs not to sell every conceivable embodiment of the claims in order to rely upon evidence of commercial success.” The Court explained that commercial success evidence should be considered “so long as what was sold was within the scope of the claims.”