Ex Parte 6,314,754 et al

Patent Trial and Appeal Board

Jun 30, 2015

95001554 (P.T.A.B. Jun. 30, 2015)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
95/001,554 02/22/2011 6,314,754 7296
34313 7590 06/30/2015
ORRICK, HERRINGTON & SUTCLIFFE, LLP
IP PROSECUTION DEPARTMENT
2050 Main Street, Suite 1100
IRVINE, CA 92614
EXAMINER
GRAHAM, MATTHEW C
ART UNIT PAPER NUMBER
3993
MAIL DATE DELIVERY MODE
06/30/2015 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

AIRBUS S.A.S.
Requester, Cross-appellant and Respondent

v.

FIREPASS CORPORATION
Patent Owner, Appellant and Respondent
____________________

Appeal 2014-007484
Reexamination Control No. 95/001,554
Patent 6,314,754 B1
Technology Center 3900
____________________

Before JOHN C. KERINS, DANIEL S. SONG and BRETT C. MARTIN,
Administrative Patent Judges.

SONG, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
This proceeding arose from a request filed February 22, 2011, by the
Requester, Airbus S.A.S., for an inter partes reexamination of Patent
6,314,754 ("the ’754 Patent"), which issued with claims 1-18. Original
claims 1, 2, 4–6 and 8, and new claims 19–101 are subject to the
reexamination and finally rejected. RAN1 PTOL-2066. Claims 3, 7, and 9–
18 are not subject to reexamination. Id.
The Patent Owner, FirePASS Corporation, appeals under 35 U.S.C.
§§ 134(b), 306, and 315(a) (2002) from the rejection of claims 1, 2, 4–6, 8,
19–82, 84–87, 89–93 and 96–99. See PO App. Br. 2.2 The Requester cross-

1 The following abbreviations for certain documents in the record are used
herein as follows:
1. RAN = Right of Appeal Notice
2. PO App. Br. = Patent Owner’s Appeal Brief
3. Req. Resp. Br. = Requester’s Respondent Brief
4. PO Reb. Br. = Patent Owner’s Rebuttal Brief
5. Req. App. Br. = Requester’s Cross-Appeal Brief
6. PO Resp. Br. = Patent Owner’s Respondent Brief
7. Req. Reb. Br. = Requester’s Rebuttal Brief
Also, because the Examiner’s Answer incorporates the RAN by reference,
we cite to the RAN herein.

2 According to the Patent Owner, claims 83, 88, 94–95 and 100–101 were
previously canceled. PO App. Br. 2. Although the Examiner refused entry
of the Amendment and Response that canceled these claims (RAN 2), the
Patent Owner again authorized cancellation of these claims during the Oral
Hearing, and does not appeal the rejections thereof. Thus, because the
rejections of these claims are not appealed, the rejections thereof are
summarily affirmed.

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appeals under 35 U.S.C. §§ 134(c) and 315(b) from the Examiner’s non-
adoption of proposed rejections of claims 78–82, 84–87, 89–93 and 96–99.
See Req. App. Br. 4.
We have jurisdiction of the appeal under 35 U.S.C. §§ 134, 306, and
315. An oral hearing with the counsel for the Patent Owner and the counsel
for the Requester was held before the Patent Trial and Appeal Board on
June 17, 2015, a transcript of which will be entered into the electronic record
in due course.
For the reasons discussed below, we affirm with respect to the Patent
Owner's Appeal, and do not reach the Requester's Cross-Appeal.
THE INVENTION
The ’754 Patent issued to Igor J. Kotliar (November 13, 2001), and is
assigned to Patent Owner. ’754 Patent, p. 1; PO App. Br. 1. The ’754
Patent relates to system for providing low-oxygen (hypoxic) environments3
in computer rooms and other human occupied facilities for preventing and
suppressing a fire before it starts. Col. 1, ll. 12–15.
Claim 1 is representative and reproduced below.
1. A system for providing a breathable fire-extinguishing
environment for fire prevention and fire suppression in
enclosed areas, said system comprising:
an enclosing structure having internal environment
therein containing a gas mixture which is lower in oxygen
content than air outside said structure, and an entry
communicating with said internal environment;

3 At sea level, air has an oxygen content of 20.94%. Col. 4, ll. 13–15.
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an oxygen-extraction device having an inlet taking in an
intake gas mixture and first and second outlets, said first outlet
transmitting a first gas mixture having a higher oxygen content
than the intake gas mixture and said second outlet transmitting
a second gas mixture having a lower oxygen content than the
intake gas mixture;
said second outlet communicating with said internal
environment and transmitting said second mixture to said
internal environment so that said second mixture mixes with the
air in the internal environment;
said first outlet transmitting said first mixture to a
location where it does not mix with the air in the internal
environment;
said internal environment selectively communicating
with the outside atmosphere and emitting excessive internal gas
mixture into outside atmosphere;
said internal environment beg a breathable hypoxic air
composition in human visited or occupied areas having oxygen
content ranging front 12% to 18%.
PO App. Br. Claims Appx., p. 1.

REJECTIONS
Patent Owner appeals the Grounds of Rejection as follows:4
1. Claims 1, 2, 4–6 and 8 under 35 U.S.C. § 102(b) as anticipated by US
Patent 5,887,439 to Kotliar (Mar. 30, 1999) ("Kotliar ’439").

4 For clarity, we utilize the Ground of Rejection numbering used by the
Examiner in the RAN. Correspondingly, Grounds of Rejection 20 and 21
are omitted because they were not adopted by the Examiner (RAN 18). We
again note that the Patent Owner does not appeal claims 83, 88, 94–95 and
100–101. Thus, these claims have been omitted from the listed rejections on
appeal.
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2. Claims 1, 2, 4–6, and 8 under 35 U.S.C. § 102(b) as anticipated by US
Patent 5,799,652 to Kotliar (Sep. 1, 1998) ("Kotliar ’652").
3. Claims 1, 2, 4–6 and 8 under 35 U.S.C. § 103(a) as unpatentable over
Gustafsson5 and Kotliar ’652.
4. Claims 1, 2, 4–6 and 8 under 35 U.S.C. § 103(a) as unpatentable over
Kotliar ’652 and 1167 Report.6
5. Claims 1, 2, 4–6 and 8 under 35 U.S.C. § 103(a) as unpatentable over
Kotliar ’652 and US Patent 3,893,514 to Carhart et al. (July 8, 1975)
("Carhart").
6. Claims 27–34, 57, 77, 89–93, 96–99 under 35 U.S.C. § 314(a) as
enlarging the scope of the claims of the patent being reexamined.
7. Claim 69 under 35 U.S.C. § 112, ¶ 2 as indefinite.
8. Claims 24, 32, 47 and 68 under 35 U.S.C. § 112, ¶ 1, as failing to
comply with the written description requirement.
9. Claims 19–34 under 35 U.S.C. § 102(b) as anticipated by Kotliar
’439.
10. Claims 19–34 under 35 U.S.C. § 102(b) as anticipated by Kotliar
’652.
11. Claims 35–45, 47, 56–66, 68 and 69 under 35 U.S.C. § 103(a) as
unpatentable over Kotliar ’652.

5 Gustafsson et al., Effects of Normobaric Hypoxic Confinement on Visual
and Motor Performance, 68 AVIATION, SPACE AN ENVIRONMENTAL
MEDICINE (November 1997).
6 Knight, D.R., The Medical Hazards of Flame-Suppressant Atmospheres,
NSMRL REPORT 1167 (April 1991).
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12. Claims 46 and 67 under 35 U.S.C. § 103(a) as unpatentable over
Kotliar ’652 and Kotliar ’439.
13. Claims 35–45, 47, 56–66, 68 and 69 under 35 U.S.C. § 103(a) as
unpatentable over Kotliar ’652 and Carhart.
14. Claims 48–54 and 70–76 under 35 U.S.C. § 103(a) as unpatentable
over Kotliar ’652.
15. Claims 48–54 and 70–76 under 35 U.S.C. § 103(a) as unpatentable
over Gustafsson and Kotliar ’652.
16. Claims 48–54 and 70–76 under 35 U.S.C. § 103(a) as unpatentable
over Kotliar ’652 and 1167 Report.
17. Claims 48–54 and 70–76 under 35 U.S.C. § 103(a) as unpatentable
over Kotliar ’652 and Carhart.
18. Claims 48–55 and 70–77 under 35 U.S.C. § 103(a) as unpatentable
over Kotliar ’439.
19. Claims 81, 86, 92 and 98 under 35 U.S.C. § 112, ¶ 1, as failing to
comply with the written description requirement.
22. Claims 78–82, 84–87, 89–93 and 96–99 under 35 U.S.C. § 103(a) as
unpatentable over Kotliar ’652 or Kotliar ’439.
RAN 3–19; PO App. Br. 4–17.

REQUESTER-PROPOSED REJECTIONS NOT ADOPTED
Requester appeals the Examiner’s refusal to adopt additional
rejections as follows:
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1. Claims 78–81, 84–86, 89–92 and 96-98 under 35 U.S.C. § 103(a) as
unpatentable over Kotliar ’652 in view of AFWAL 2060.7
2. Claims 82, 87, 93 and 99 under 35 U.S.C. § 103(a) as unpatentable
over Kotliar ’652 in view of AFWAL 2060 and further in view of
knowledge of one of ordinary skill in the art.
3. Claims 82, 87, 93 and 99 under 35 U.S.C. § 103(a) as unpatentable
over Kotliar ’652 in view of AFWAL 2060 and further in view of
Knight.8
Req. App. Br. 4.
PRINCIPLES OF LAW
"During reexamination, as with original examination, the PTO must
give claims their broadest reasonable construction consistent with the
specification." In re Suitco Surface, Inc., 603 F.3d 1255, 1259 (Fed. Cir.
2010). "Construing claims broadly during prosecution is not unfair to the
applicant (or, in this case, the patentee), because the applicant has the
opportunity to amend the claims to obtain more precise claim coverage." In
re American Academy of Science Tech Center, 367 F.3d 1359, 1364 (Fed.
Cir. 2004).

7 Boeing Military Airplane Co., "Vulnerability Methodology and Protective
Measures for Aircraft Fire and Explosion Hazards," Final Report AFWAL-
TR-85-2060 (1986).
8 Knight, T.C., et al., "The AH-64A Nitrogen Inerting System," AIAA-84-
2480 (1991).
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ANALYSIS OF PATENT OWNER'S APPEAL
We address the Patent Owner's Appeal in an order that is slightly
different than that presented by the parties involved.
Grounds 1 and 2
The Examiner rejected claims 1, 2, 4–6 and 8 as anticipated by each
of Kotliar ’439 and Kotliar ’652. Kotliar ’439 "relates to a process and
equipment for providing a low-oxygen (hypoxic) cleanroom environment for
industrial applications." Col 1, ll. 19–21. Kotliar ’652 "relates to equipment
for providing oxygen-depleted air to a user for hypoxic training or
therapy[.]" Col. 1, ll. 14–20.
Patent Owner does not argue that the claims, as construed by the
Examiner, are patentable over these references. PO App. Br. 4–5. Rather,
Patent Owner argues the claims, when properly construed, require a cooling
unit and the references do not disclose a cooling unit. Id. at 3–4.
Claims 1, 2, 4–6 and 8 do not recite a "cooling unit," and the
Examiner construed them as not requiring it. RAN 19. However, Patent
Owner points out that independent claim 1 (claims 2 and 4–6 being
dependent thereon) recites "an oxygen-extraction device," while independent
claim 8 recites "a gas processing device." PO App. Br. 3. The Patent Owner
argues that a cooling unit is a necessary and contemplated part of the recited
oxygen-extraction device and gas processing device. Id. Patent Owner
bases its argument on the presence of "cooler 25" as part of "hypoxic
generator 20" shown in Figures 5 and 6 of the Specification. Id.; ’754 Patent
col. 5, ll. 29–37. However, we do not read limitations from the specification
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into the claims. Thorner v. Sony Computer Entertainment America LLC,
669 F.3d 1362, 1366-67 (Fed. Cir. 2012). Further, Figure 7 illustrates an
oxygen-extraction device (identified as either "a nitrogen generator or
oxygen concentrator")9 that lacks cooler 25 or any equivalent cooling unit.
’754 Patent col. 7, ll. 21–32, Fig. 7.
Thus, the broadest reasonable construction of "oxygen-extraction
device" and "gas processing device" consistent with the Specification does
not require a cooling unit. Hence, Patent Owner’s argument that the
references do not disclose a cooling unit is not commensurate with the scope
of claims 1, 2, 4–6 and 8, as properly construed. Accordingly, we affirm the
rejections set forth in Grounds of Rejection 1 and 2.
Ground 8
The Examiner rejected claims 24, 32, 47 and 68 for lack of written
description of an enclosing structure in an aircraft that "comprises a storage
facility operating with an inflammable and explosive material that requires
fire safety," or similar limitation recited in the claims. The Examiner states
that such claim language is directed to an aircraft fuel tank, which is not
disclosed in the Specification. RAN 11.
The Patent Owner does not dispute that the claim language is directed
to an aircraft fuel tank but argues that the Specification provides written
descriptive support for it. PO App. Br. 10; PO Reb. Br. 5–6. The Patent
Owner relies on the statement in the Specification that the invention "can be

9 The Specification states that nitrogen generators and oxygen concentrators
are oxygen-extraction devices. ’754 Patent col. 7, ll. 4–6.
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used in any human occupied facility[,] includ[ing] but not limited to: . . .
aircraft[.]" ’754 Patent col. 7, l. 61–col. 8, l. 3. The Patent Owner also relies
on the Declaration of John Brooks (June 20, 2011) ("Brooks Decl."). PO
App. Br. 10; PO Reb. Br. 6. Mr. Brooks testified that one of ordinary skill
would understand fuel tanks to be human occupied facilities because
"[p]ersonnel enter into aircraft fuel tanks for a variety of reasons, including
to clean and service the interior of the fuel tank." Brooks Decl. ¶ 10.
We do not find the Patent Owner's arguments or Mr. Brooks's
testimony persuasive. The ’754 Patent is directed to providing a system for
providing low-oxygen (hypoxic) environments in computer rooms and other
human occupied facilities for preventing and suppressing a fire before it
starts. Col. 1, ll. 12–15. The fact that humans may enter an aircraft fuel tank
to clean or service it does not demonstrate adequate written descriptive
support for the aircraft fuel tank, which is a specific location within an
aircraft. Therefore, we affirm the Examiner's rejection of claims 24, 32, 47
and 68 under Ground of Rejection 8.
Ground 9
The Examiner rejected claims 19–34 as anticipated by Kotliar ’439.
These claims require that the oxygen reduced air have a humidity greater
than the humidity of the intake gas or ambient air. The Examiner found this
limitation met because Kotliar ’439 discloses an air separation device using
the same pressure swing adsorption technology as the ’754 Patent. RAN
12–13. Kotliar ’439 states:
The pressure-swing adsorbtion technology similar to that used
in medical oxygen generators is most suitable for food storage
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and transportation equipment because it does not dehumidify
the gas product like membrane-separation units do.
Kotliar ’439 col. 8, ll. 6-10. The Patent Owner initially argues that not
dehumidifying is not equivalent to humidifying. PO App. Br. 10; PO Reb.
Br. 7. But, the crux of the Examiner’s rejection is that Kotliar ’439 discloses
the same pressure swing adsorption technology as the ’754 Patent, which the
latter acknowledges results in higher humidity. RAN 13. Indeed, the ’754
Patent states:
A number of hypoxic generators needed for a room 11 depends
on the size of a room and a number of operators working at a
time in the room. The best generator suitable for a 1000 ft3
room or 28 m3 room would be the HYP-100/F that will be
available soon from Hypoxico Inc. in New York. HYP-100/F
employs [a] PSA (pressure-swing adsorption) technology in
order to extract part of oxygen from ambient air. . . . Other
advantages of the hypoxic generator include increased humidity
of hypoxic air (no humidifier needed) . . . .
Col. 5, ll. 14–29 (emphasis added).
Thus, we affirm the rejection of claims 19–34 set forth in Ground of
Rejection 9.
Ground 10
The Examiner rejects claims 19–34 as anticipated by Kotliar ’652.
RAN 11. The Patent Owner appeals the Examiner's rejection relying on its
improper claim construction addressed relative to Ground of Rejection 2,
and on amendments that have not been entered. PO App. Br. 11. Thus, we
are not persuaded of any error in Ground of Rejection 10 and we affirm the
same.
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Ground 11
The Examiner rejected claims 35–45, 47, 56–66, 68 and 69 under 35
U.S.C. § 103(a) as unpatentable over Kotliar ’652 (RAN 13–14). These
claims recite a system or method for providing a breathable fire-
extinguishing environment comprising an enclosure structure that is used in
a specific environment. For example, claim 35 recites "an aircraft," claim 36
recites "a bank or financial institution," and claim 37 recites "a military
facility," etc. The Examiner states that "the particular environment utilizing
the system would have been obvious to one of ordinary skill in the art as a
mere matter of intended use." RAN 13. The Patent Owner disagrees noting
that Kotliar ’652 only discloses training or therapy room environments, and
asserts that a person of ordinary skill in the art would have no motivation to
use the claimed system and method to prevent or extinguish fires in the
claimed environments. PO App. Br. 12. The Patent Owner also relies on its
claim construction addressed in Ground of Rejection 2. Id. The Patent
Owner’s arguments are not persuasive.
As already discussed, the Patent Owner's claim interpretation is
improper. In addition, the specific locations recited in the claims are not
limiting to the claimed system or method. They are statements of intended
use, as the Examiner concluded. In re Hack, 245 F.2d 246, 248 (CCPA
1957) ("the grant of a patent on a composition or a machine cannot be
predicated on a new use of that machine or composition"); In re Benner, 174
F.2d 938, 942 (CCPA 1949) ("no provision has been made in the patent
statutes for granting a patent upon an old product based solely upon
discovery of a new use for such product"). Moreover, use of such fire-
extinguishing system or method in an environment for which fire is a
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concern would have been obvious to a person of ordinary skill who is "a
person of ordinary creativity, not an automaton." KSR Int'l Co. v. Teleflex
Inc., 550 U.S. 398, 421 (2007). Thus, we affirm the rejection set forth in
Ground 11.
Ground 12
The Examiner rejects claims 46 and 67 that require "a split-air
conditioning system" as unpatentable over Kotliar ’652 and Kotliar ’439,
Kotliar ’439 being relied upon for specifically disclosing a split-air
conditioning system in a hypoxic system that provides oxygen-depleted
environment. RAN 14 quoting Kotliar ’439, col. 4, ll. 42–55. The Patent
Owner relies on its improper claim construction, and further argues that
because the environment of Kotliar ’439 differs from that of Kotliar ’652, a
person of ordinary skill would not combine their teachings. PO App. Br. 13.
This additional argument is similar to that discussed supra relative to
Ground 11 and is also unpersuasive for similar reasons.
Ground 13
The Examiner rejected claims 35–45, 47, 56–66, 68 and 69 as
unpatentable over Kotliar ’652 and Carhart noting that these claims differ
from the system and method disclosed Kotliar ’652 only in the intended use.
RAN 14–15. The Examiner finds that "Carhart teaches using a reduced-
oxygen breathable fire-protective environment in 'airplanes,' submarines' and
'spaceships' for 'suppressing fires.' See [Carhart] col. 1, lines 10–12." RAN
15. Thus, the Examiner concludes that "[i]t would have been obvious to one
of ordinary skill in the art to have utilized the system of Kotliar ’652 in a
variety of environments in view of the teachings of Carhart as a mere matter
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of intended use." Id. We agree with the Examiner. The Patent Owner's
arguments are similar to those submitted with respect to Ground of Rejection
11, and are unpersuasive for substantially the same reasons. PO App. Br.
13.
The Patent Owner also relies on previously submitted argument with
respect to Ground of Rejection 5 that Carhart discloses nitrogen dilution
instead of dilution through introduction of depleted-oxygen air. PO App. Br.
13. However, this argument is not pertinent with respect to this ground of
rejection in which Carhart is relied upon for demonstrating the obviousness
of applying systems and methods of Kotliar ’652 to different environments.
See PO App. Br. 8; RAN 15.
Ground 14
The Examiner rejects claims 48–54 and 70–76 as unpatentable over
Kotliar ’652. RAN 15. The Patent Owner appeals the Examiner's rejections
set forth in Ground of Rejection 10 relying on its improper claim
construction addressed relative to Ground of Rejection 2, and on
amendments that have not been entered. PO App. Br. 14. Thus, we are not
persuaded of any error in Ground of Rejection 14 and we affirm the same.
Ground 17
The Examiner rejected claims 48–54 and 70–76 as unpatentable over
Kotliar ’652 and Carhart, again relying on Carhart for teaching use of the
system and method of Kotliar ’652 in a variety of environments. RAN 16.
The Patent Owner's arguments are substantively the same as those already
addressed supra, and thus, are unpersuasive. PO App. Br. 15. Thus, we
affirm Ground of Rejection 17.
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Ground 18
The Examiner rejected claims 48–55 and 70–77 as unpatentable over
Kotliar ’439. RAN 16. The Patent Owner relies on its improper claim
construction addressed relative to Ground of Rejection 1, and on
amendments that have not been entered. PO App. Br. 15. As to claims 55
and 77, the Patent Owner relies on its arguments submitted with respect to
Ground of Rejection 9 regarding humidification, which are unpersuasive for
the reasons already discussed. Id. at 15–16. Thus, we are not persuaded of
any error in Ground of Rejection 18 and we affirm the same.
Ground 22
The Examiner rejects claims 78–82, 84–87, 89–93 and 96–99 as
unpatentable over Kotliar ’652 or Kotliar ’439, concluding that the claim
limitation requiring "[t]he use of computer control to monitor and control the
environment would likewise have been obvious to one of ordinary skill in
the art in order to better control the environment as computer control on air
handling systems is well known in the art." RAN 19.
The Patent Owner's arguments against this rejection rely on
amendments that have not been entered, and thus are unpersuasive. PO App.
Br. 17. The Patent Owner further asserts that a person of ordinary skill
"would have no motivation to combine the usage of a computer control with
teaching of Kotliar ’652 and Kotliar ’439." PO App. Br. 17. However, as
discussed supra relative to Grounds of Rejection 1 and 2, both Kotliar ’652
and Kotliar ’439 pertain to equipment and processes for providing low-
oxygen environments. We agree with the Examiner that use of
computerized control in such equipment and processes would have been
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obvious to one of ordinary skill in the art in order to better control the
environment as articulated. Leapfrog Ent., Inc. v. Fisher-Price, Inc., 485
F.3d 1157, 1161 (Fed. Cir. 2007) ("[a]ccommodating a prior art mechanical
device that accomplishes [a desired] goal to modern electronics would have
been reasonably obvious to one of ordinary skill[.]"). Although not
necessary for reaching our decision, we also observe that both Kotliar ’652
and Kotliar ’439 disclose computerized control. See Kotliar ’652, col. 3, ll.
2–4, col. 4, ll. 14–19, 30–33; Kotliar ’439, col. 8, l. 63–col. 9, l. 2; see also
Req. Resp. Br. 13.
Thus, in view of the above, we are not persuaded that the Examiner
erred in rejecting these claims.
Grounds 3–7, 15–16 and 19
As discussed supra, each of the claims on appeal remain rejected
based on at least one separate ground of rejection that we affirm above.
Correspondingly, the remaining Grounds of Rejection 3–7, 15–16 and 19 are
moot and we decline to reach them.

ANALYSIS OF REQUESTER’S CROSS-APPEAL
Notwithstanding the fact that claims 78–82, 84–87, 89–93 and 96–99
stand rejected, the Requester cross-appeals the Examiner’s non-adoption of
the following proposed obviousness rejections of certain new claims added
during the reexamination:
claims 78–81, 84–86, 89–92 and 96–98 over Kotliar ’652 in view of
AFWAL 2060;
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claims 82, 87, 93 and 99 over Kotliar ’652 in view of AFWAL 2060
and knowledge of one of ordinary skill in the art; and
claims 82, 87, 93 and 99 over Kotliar ’652 in view of AFWAL 2060
and Knight.
Req. App. Br. 4.
Patent Owner argues that the cross-appeal should be denied due to
lack of jurisdiction at the Board. PO Resp. Br. 3–5.
In its Request for Reexamination (p. i), the Requester proposed
rejections of original claims 1, 2, 4–6, and 8 as anticipated by each of Kotliar
’652, AFWAL 2060, and Knight, among other references. The Examiner
ordered reexamination, finding that Kotliar ’652 (among other references)
presented a substantial new question of patentability, but also finding that
AFWAL 2060 and Knight (as well as other references) did not. See Order
Granting Request for Reexamination (April 25, 2011) 2–3, 5.
During the reexamination, the Requester additionally proposed the
above-identified rejections directed to new claims 78–101. See Comments
of Requester (p. iii) filed September 19, 2011. In response, the Examiner
declined to adopt the proposed rejections stating that "the prior art does not
raise a substantial new question of patentability." Action Closing
Prosecution (Feb. 17, 2012) 2–3; RAN 2–3. Thus, the Examiner's position
as to the lack of substantial new question of patentability is set forth in both
the ACP as well as the RAN.
Patent Owner contends the Examiner did not make decisions
favorable to patentability with respect to the proposed rejections now cross-
appealed by the Requester. PO Resp. Br. 3–5. The Requester responds that
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the substantial new question of patentability is inapplicable to new claims
and that it "may appeal to the Board with respect to any final determination
favorable to the patentability, including any final determination not to make
a proposed rejection, of any original, proposed amended, or new claim of the
patent." Req. Reb. Br. 1–3 (quoting 37 C.F.R. § 41.61(a)(2)) (emphasis by
Requester). The Requester-quoted rule, however, is expressly limited to
final determinations that are "favorable to the patentability" of a claim. 37
C.F.R. § 41.61(a)(2). Moreover, the statutory authority for third-party
requester appeals is likewise expressly limited to the review of examiner
final decisions that are "favorable to the patentability" of a claim. 35 U.S.C.
§§ 134 (c) and 315(b) (2002). Notably, determination of a "[l]ack of a
substantial new question of patentability is not a favorable decision on
patentability." Belkin Int’l, Inc. v. Kappos, 696 F.3d 1379, 1383 (Fed. Cir.
2012).10 Accordingly, we dismiss the Requester’s cross-appeal for lack of
jurisdiction.
DECISION
1. The Examiner’s decision to reject claims 83, 88, 94–95 and
100–101 is summarily affirmed.
2. The Examiner’s decision to reject claims 1, 2, 4–6, 8, 19–82,
84–87, 89–93 and 96–99 is affirmed.

10 If it was the Requester’s view that the Examiner erred in not considering
Kotliar ’652 in view of (at least) AFWAL 2060 with respect to the new
claims added during reexamination -- and we note that Belkin does not
answer that question, see Belkin, 696 F.3d at 1384, n.2 -- then the Requester
could have sought remedy through a petition.
Appeal 2014-007484
Reexamination Control No. 95/001,554
Patent 6,314,754 B1

19
3. The Requester’s cross-appeal is dismissed for lack of
jurisdiction.
Requests for extension of time in this inter partes reexamination
proceeding are governed by 37 C.F.R. §§ 1.956.

AFFIRMED

In the event neither party files a request for rehearing within the time
provided in 37 C.F.R. § 41.79, and this decision becomes final and
appealable under 37 C.F.R. § 41.81, a party seeking judicial review must
timely serve notice on the Director of the United States Patent and
Trademark Office. See 37 C.F.R. §§ 90.1 and 1.983.

Appeal 2014-007484
Reexamination Control No. 95/001,554
Patent 6,314,754 B1

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cc:
PATENT OWNER:
ORRICK, HERR1NGTON & SUTCLIFFE, LLP
IP PROSECUTION DEPARTMENT
2050 Main Street, Suite 1100
IRVINE, CA 92614

THIRD PARTY REQUESTER:
Clifford A. Ulrich
KENYON & KENYON LLP
One Broadway
New York, NY 10004