Ex Parte 6418752 et al

Patent Trial and Appeal Board

May 19, 2014

95001555 (P.T.A.B. May. 19, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

AIRBUS S.A.S.
Requester and Respondent

v.

FIREPASS CORPORATION
Patent Owner and Appellant
____________________

Appeal 2013-008166
Reexamination Control No. 95/001,555
Patent 6,418,752 B2
Technology Center 3900
____________________

Before JOHN C. KERINS, DANIEL S. SONG, and
MICHAEL J. FITZPATRICK, Administrative Patent Judges.

FITZPATRICK, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

Appeal 2013-008166
Reexamination Control No. 95/001,555
Patent 6,418,752 B2

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Requester Airbus S.A.S. filed, on December 2, 2013, a Request for
Rehearing under 37 C.F.R. § 41.52 (hereinafter “Request”) of our Decision
mailed October 30, 2013 (“Dec.”) concerning cross-appeals from an inter
partes reexamination of Patent 6,418,752 B2 (the “’752 Patent”). Patent
Owner, FirePASS Corporation, opposes rehearing.
In our Decision, we affirmed the Examiner’s rejection of various
claims but reversed the Examiner’s rejection of claims 91-94. Dec. 25. We
also dismissed, for lack of jurisdiction, Requester’s cross-appeal from the
Examiner’s non-adoption of Requester-proposed rejections of certain claims,
including claims 91-94. Id. Requester requests rehearing of our dismissal of
its cross-appeal with respect to claims 91-94.
The request for rehearing is denied.
ANALYSIS
During the reexamination, Requester proposed the following
rejections of claims 91-94, which were added during the reexamination:
claims 91-93 over Kotliar ’652
1
in view of AFWAL 2060
2
;
claim 94 over Kotliar ’652 in view of AFWAL 2060 and Knight
3
; and

1
US 5,799,652 (Sept. 1, 1998).
2
Boeing Military Airplane Co., “Vulnerability Methodology and Protective
Measures for Aircraft Fire and Explosion Hazards,” Final Report AFWAL-
TR-85-2060 (1986).
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Reexamination Control No. 95/001,555
Patent 6,418,752 B2

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claim 94 over Kotliar ’652 in view of AFWAL 2060 and knowledge
of one of ordinary skill in the art. RAN 25
4
; Req. App. Br. 4.
5

In response, the Examiner stated: “The proposed rejection [sic,
rejections] in view of AFWAL 2060, Knight or Mannatt SAE are not
considered as these publications have not raised a substantial new question
of patentability.” ACP 25
6
; RAN 25.
“Lack 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). Relying on this holding, we dismissed the Requester’s
cross-appeal for lack of jurisdiction. Dec. 24 (also citing 35 U.S.C. §§ 134
(c) and 315(b) (2002); 37 C.F.R. § 41.61(a)(2) (providing review for
decisions “favorable to the patentability” of a claim)).
Requester argues that, in dismissing its cross-appeal, we
“misapprehended or overlooked” two things. Request 1. The first is that
Requester “had the right to appeal a ‘decision favorable to the patentability
of any . . . new claim,’ such as claims 91-94.” Id. (quoting 35 U.S.C.
§ 315(b)(1) (2002)). This argument is not persuasive. We expressly
acknowledged the statutes, 35 U.S.C. §§ 134 (c) and 315(b) (2002), and rule,

3
Knight, T.C., et al., “The AH-64A Nitrogen Inerting System,” AIAA-84-
2480 (1991).
4
Right of Appeal Notice (May 11, 2012).
5
Requester’s Cross-Appeal Brief (Aug. 27, 2012).
6
Action Closing Prosecution (Jan. 3, 2012).
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Reexamination Control No. 95/001,555
Patent 6,418,752 B2

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37 C.F.R. § 41.61(a)(2), that provide for review of a decision favorable to the
patentability of any claim, including new claims. Dec. 24. However, and as
we noted, the Examiner stated that he did not consider the proposed
rejections due to a lack of a substantial new question of patentability.
Dec. 23 (quoting ACP 25; RAN 25). Thus, following Belkin’s holding that
“[l]ack of a substantial new question of patentability is not a favorable
decision on patentability,” Belkin, 696 F.3d at 1383, we dismissed the cross-
appeal. Dec. 24.
Secondly, the Requester argues that we also “misapprehended or
overlooked” that “the non-appealability under 35 U.S.C. § 312 of the
Director’s determination on the initial reexamination request that certain
prior art did not raise a substantial new question of patentability with respect
to original claims 1, 2, 4, 7 and 8 did not apply to new claims 91-94.”
Request 1.
7
This argument is also not persuasive. We did not base our
dismissal on the Director’s determination on the initial reexamination
request regarding the art in question. Indeed, we did not even mention 35

7
In its Request for Reexamination (p. ii), Requester had proposed rejections
of original claims 1, 2, 7, 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 18, 2011) 4, 7.
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U.S.C. § 312. Rather, our dismissal was based on the Examiner’s statement,
in the Action Closing Prosecution as well as the Right of Appeal Notice, that
he did not consider the proposed rejections because of a lack of a substantial
new question of patentability. See Dec. 23 (quoting ACP 25; RAN 25). To
the extent that the Examiner (as opposed to the Board) hinged his non-
consideration of the proposed rejections of claims 91-94 on the prior
determination on the initial reexamination request regarding the art in
question, and that such action was in error, then the Requester could have
sought remedy through a petition. This too was also pointed out in the
Decision. Dec. 24 n.12.
DECISION
The request for rehearing is denied.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

DENIED

Appeal 2013-008166
Reexamination Control No. 95/001,555
Patent 6,418,752 B2

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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

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