Ex Parte 6418752 et al

Patent Trials and Appeals Board

Aug 31, 2018

95001555 - (D) (P.T.A.B. Aug. 31, 2018)

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.
95/001,555 02/23/2011 6418752 6017-04 7309
15933 7590 09/04/2018
The Law Office of Roger S. Thompson
116 Pinehurst Ave
Suite D-14
New York, NY 10033
EXAMINER
GRAHAM, MATTHEW C
ART UNIT PAPER NUMBER
3993
MAIL DATE DELIVERY MODE
09/04/2018 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 and Respondent

v.

FIREPASS CORPORATION
Patent Owner and Appellant
____________________

Appeal 2018-004837
Reexamination Control No. 95/001,555
Patent US 6,418,752 B2
Technology Center 3900
____________________

Before JOHN C. KERINS, JEFFREY B. ROBERTSON, and
DANIEL S. SONG, 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 23, 2011, by the
Requester, Airbus S.A.S., for an inter partes reexamination of Patent No.
6,418,752 (“the ’752 Patent”). Prior to the present appeal, the ’752 patent
was involved in Appeal 2013-008166 that resulted in the Board’s Decision
on Appeal dated October 30, 2013 (hereinafter “Original Decision” or “Orig.
Dec.”). In that earlier appeal, claims 1, 2, 4, 7, 8, 29–94, and 96–99 were
rejected by the Examiner, and the rejections were appealed to the Board by
the Patent Owner. Orig. Dec. 2, 5–6. The Requester cross-appealed the
Examiner’s non-adoption of certain proposed rejections of claims 91–94 and
96–99. Id. at 2, 8–9.
In the Original Decision, the Board affirmed the Examiner’s rejections
as to claims 1, 2, 4, 7, 8, 29–90, and 96–99, but reversed the rejections as to
claims 91–94. Id. at 25. The Board also dismissed the Requester’s cross-
appeal for lack of jurisdiction. Id. at 24–25. The Requester filed a Request
for Rehearing on December 2, 2013 as to the Board’s dismissal of its cross-
appeal, which was denied by the Board in its Decision on Request for
Rehearing dated May 20, 2014.
The Requester appealed the Board’s dismissal of its cross-appeal to
the Federal Circuit, and on July 17, 2015, the United States Court of Appeals
for the Federal Circuit vacated and remanded the Original Decision of the
Patent Trial and Appeal Board as to the Requester’s cross-appeal,
determining that the Board erred in dismissing the Requester’s cross-appeal
for lack of jurisdiction. Airbus S.A.S. v. Firepass Corp., 793 F.3d 1376,
1381 (Fed. Cir. 2015). Thus, this case was remanded in the Order
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Remanding to the Examiner dated August 25, 2015 for further proceedings
consistent with the holding of the Federal Circuit in Airbus v. Firepass.
The present Appeal No. 2018-004837 stems from the reexamination
proceeding subsequent to the Board’s remand in Appeal No. 2013-008166.
Presently, claims 91–94 are subject to the reexamination and stand finally
rejected. Right of Appeal Notice (hereinafter “RAN”1) PTOL-2066. The
Patent Owner appeals under 35 U.S.C. §§ 134(b), 306, and 315(a) (2002)
from the rejection of claims 91–94. See Appeal Brief (hereinafter “App.
Br.”) 1. The Examiner also declined to adopt numerous rejections of claims
91–94 as proposed by the Requester. RAN 4–5.
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 July
18, 2018, a transcript of which will be entered into the electronic record in
due course.
We REVERSE.
THE INVENTION
The ’752 Patent relates to hypoxic (low-oxygen) fire prevention and
fire suppression systems. Col. 1, ll. 18–30. Claim 91 is the sole
independent claim, and reads as follows:

1 Because the Examiner’s Answer incorporates the RAN by reference, we
cite to the RAN herein.
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91. A system for providing breathable fire-preventive
and fire suppressive atmosphere in enclosed human-occupied
spaces, said system comprising:
an enclosing structure having an 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;
an oxygen-extraction device having a filter, an inlet taking
in an intake gas mixture and first and second outlets, said
oxygen-extraction device being a nitrogen generator, 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 into said
internal environment so that said second mixture mixes with the
atmosphere in said internal environment;
said first outlet transmitting said first mixture to a location
where it does not mix with said atmosphere in said internal
environment;
said internal environment selectively communicating with
the outside atmosphere and emitting excessive internal gas
mixture into the outside atmosphere; said intake gas mixture
being ambient air taken in from the external atmosphere outside
said internal environment with a reduced humidity; and
a computer control for regulating the oxygen content in
said internal environment.
App. Br. Claims App’x, p. 1.

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REJECTIONS
The Patent Owner appeals the Grounds of Rejection as follows2:
34. Claims 91–93 under 35 U.S.C. § 103(a) as unpatentable over
US Patent 5,799,652 to Kotliar (Sept. 1, 1998) in view of Boeing Military
Airplane Co., Vulnerability Methodology and Protective Measures for
Aircraft Fire and Explosion Hazards, Final Report AFWALTR-85-2060
(1986)(hereinafter “AFWAL 2060”). RAN 2.
35. Claim 94 under 35 U.S.C. § 103(a) as unpatentable over Kotliar
and AFWAL 2060 in view of Knight, T.C. et al., The AH-64A Nitrogen
Inerting System, AIAA-84-2480 (1984)(hereinafter “Knight”). RAN 3.
ANALYSIS
Claims 91–93 stand rejected as obvious over Kotliar in view of
AFWAL 2060, while claim 94 stands rejected as obvious in further view of
Knight. RAN 2–3. The Patent Owner argues all of the claims together.
App. Br. 6. Thus, we deem independent claim 91 as representative.
Only those arguments actually made by the parties have been
considered and arguments that the parties did not make are deemed to be
waived. See 37 C.F.R. § 41.67(c)(1)(vii) (“Any arguments or authorities not
included in the brief permitted under this section or §§ 41.68 and 41.71 will
be refused consideration by the Board, unless good cause is shown.”).

2 For clarity, we utilize the Ground of Rejection numbering used by the
Examiner in the RAN. Correspondingly, because the appealed claims 91–94
are only subject to Grounds of Rejection 34 and 35, the remaining Grounds
of Rejections are omitted. See App. Br. 6.
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In rejecting claim 91, the rejection proposed by the Requester and
adopted by the Examiner begins with Kotliar entitled “Hypoxic Room
System and Equipment for Hypoxic Training and Therapy at Standard
Atmospheric Pressure.” RAN 3. In particular, the applied rejection is
premised on the initial finding that Kotliar discloses most of the limitations
of the claim, but that the claim “differs only in the inclusion of a ‘filter’ and
an intake gas mixture with ‘reduced humidity’.” RAN 3. To remedy this
acknowledged deficiency in Kotliar, the rejection relies on AFWAL 2060,
the Examiner finding that “AFWAL 2060 discloses a nitrogen generator
with a ‘filter’ and a ‘water extractor,’ which de-humidifies incoming air
prior to separation.” RAN 3 (citing AFWAL 2060, Vol. III, Part I, pg. 5; see
also Vol. III, Part III, pgs. 24–27 (Figs. 4, 5)). The Examiner concludes that
“[i]t would have been obvious to one of ordinary skill in the art to have
included a filter and dehumidifier in the method and system of Kotliar ’652
in view of the teaching of AFWAL 2060 so as to dry and clean the air within
the enclosed space.” RAN 3.
The Patent Owner argues, inter alia, that Kotliar is not analogous art
because “the problem addressed by the inventor is how to prevent and
suppress fires. The Kotliar patent is from the art of athletic training
equipment and teaches nothing about fire prevention and/or suppression.”
App. Br. 12. The Patent Owner also argues that “[t]he Examiner has failed
to explain why one of ordinary skill in the art of fire prevention and
suppression, looking to find a solution to the problem of how to prevent
and/or suppress fires, would turn to athletic equipment for solutions,” and
that the rejection improperly uses the Patent Owner’s own disclosure as a
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source of the problem and solution. App. Br. 12. We generally agree with
the Patent Owner.
We first observe that the claimed invention is directed to “[a] system
for providing breathable fire-preventive and fire suppressive atmosphere in
enclosed human-occupied spaces.” Title; see also ’752 Patent, claim 1.
Indeed, the Specification of the ’752 Patent is indisputably directed to the
problem of fire prevention and fire suppression. Accordingly, the relevant
art that a person of ordinary skill in the art would initially consider is devices
and methods for fire prevention/suppression art.
In contrast, as noted above, Kotliar is directed to a “Hypoxic Room
System and Equipment for Hypoxic Training and Therapy at Standard
Atmospheric Pressure.” Kotliar, Title. In particular, Kotliar discloses a
hypoxic room which “simulates oxygen-depleted mountain air” (Kotliar,
Abst.) for, inter alia, “treatment and prevention of cardiopulmonary,
gastrointestinal, gynecological, skin and ocular diseases, as well as various
types of allergy, neurological disturbances,” and for fitness training to
increase “strength, endurance, vitality and resistance to various diseases of
healthy people and athletes.” Kotliar, col. 1, ll. 14–29. Kotliar is not
directed to fire prevention and suppression, and indeed, the term “fire” does
not appear at all in Kotliar. Thus, Kotliar cannot reasonably be said to be
within the field of endeavor of fire prevention/suppression.
It is not apparent, nor does the Examiner apprise us, as to why an
inventor, when confronted with the problem of fire prevention/suppression,
would have initially looked to the art pertaining to human therapy, wellness,
and physical training to which Kotliar is directed. Instead, as noted above,
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such an inventor would have sought out solutions set forth in the fire
prevention/suppression art. Of course, in seeking a solution to the fire
prevention/suppression problem, a person of ordinary skill may be led to a
reference in another art, where such reference is reasonably pertinent to the
same or similar problem, and “logically would have commended itself to an
inventor’s attention in considering his problem.” See In re ICON Health and
Fitness, Inc., 496 F.3d 1374, 1379–81 (Fed. Cir. 2007). However, the
rejection at hand does not provide or explain the requisite correlation
between the fire prevention/suppression problem and Kotliar, which pertains
to human therapy, wellness, and physical training.
The Examiner does not address the above-noted arguments of the
Patent Owner in the RAN or in the Answer. In support of the rejection,
however, the Requester argues that the problem confronting the inventor is
irrelevant in view of the Supreme Court’s precedent KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398 (2007). Resp. Br. 8–10. Specifically, the Requester
points to the Court’s statement that “[i]n determining whether the subject
matter of a patent claim is obvious, neither the particular motivation nor the
avowed purpose of the patentee controls. What matters is the objective
reach of the claim.” KSR, 550 U.S. at 419. The Requester also points to the
Court’s statement that:
the problem motivating the patentee may be only one of many
addressed by the patent’s subject matter. . . . Under the correct
analysis, any need or problem known in the field of endeavor at
the time of invention and addressed by the patent can provide a
reason for combining the elements in the manner claimed.
KSR, 550 U.S. at 420.
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Based on the above quotes from KSR, the Requester argues that “it
simply does not matter whether the inventor was seeking to solve the
problem of ‘suppressing fires in a human occupied space’.” Resp. Br. 9.
We do not agree with the Requester’s understanding of KSR, and also
find that the issue in this case is distinguishable therefrom. At issue in KSR
was whether it would have been obvious to one of ordinary skill in the art to
modify a position-adjustable vehicle pedal so as to incorporate an electronic
pedal position sensor attached to the support member of the pedal assembly
so that the sensor remains at a fixed position. KSR, 550 U.S. at 410–11. The
Federal Circuit had reversed the District Court’s conclusion of obviousness,
finding that the prior art references applied failed to provide teaching,
suggestion, motivation (a.k.a. “TSM”) for the combination. Id. at 413–15.
The Supreme Court rejected the Federal Circuit’s rigid TSM requirement in
order to conclude obviousness of a claim. Id. at 415.
The prior art in KSR pertained to adjustable pedals, and the rejections
at issue therein further modified the disclosed adjustable pedals by
combining such art with other prior art directed to electronic pedal sensors
for computer-controlled throttles. KSR, 550 U.S. at 408–09. The Court
rejected the Federal Circuit’s finding that the District Court erred in failing
to appropriately apply the TSM test, and its finding that the prior art would
not have led a person of ordinary skill to put a sensor on the pedal described
the adjustable pedal references because the various references sought to
address various different problems. Id. at 419–420.
Thus, the Court’s statements in KSR relied upon by the Requester
regarding “particular motivation [and] the avowed purpose of the patentee,”
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as well as “any need or problem,” should be understood in the context of a
reason to combine prior art references. That is, the problem or reason for
combining the prior art references need not be the same problem or reason as
that of the patentee, but rather, may be “any need or problem known in the
field of endeavor at the time of invention and addressed by the patent can
provide a reason for combining the elements in the manner claimed.” KSR,
550 U.S. at 420 (emphasis added).
In the above regard, subsequent to KSR, the Federal Circuit has
continued to apply the analogousness test while fully considering the
problem confronting the inventor. See In re Klein, 647 F.3d 1343, 1348
(Fed. Cir. 2011) (“Two separate tests define the scope of analogous prior art:
(1) whether the art is from the same field of endeavor, regardless of the
problem addressed and, (2) if the reference is not within the field of the
inventor's endeavor, whether the reference still is reasonably pertinent to the
particular problem with which the inventor is involved.”)(quoting In re
Bigio, 381 F.3d 1320, 1325); see also Scientific Plastics Products v. Biotage,
766 F3d 1355, 1359 (Fed. Cir. 2014)(quoting In re Clay, 966 F.2d 656, 658–
59 (Fed.Cir.1992)). In Klein, the court found that references disclosing a
drawer or a tray with dividers, and references disclosing mixing bottles that
do not have a movable divider or allow for multiple ratios, are not analogous
and would not be considered by an inventor considering the problem of
making a nectar feeder with dividers that allow for different ingredient
ratios. Klein, 647 F.3d at 1350–51. In Scientific Plastics, the court
specifically explained that “[t]he pertinence of the reference as a source of
solution to the inventor’s problem must be recognizable with the foresight of
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a person of ordinary skill, not with the hindsight of the inventor’s successful
achievement.” Scientific Plastics Prod. v. Biotage, 766 F3d at 1359.
Accordingly, in view of the above, not only does the Requester
misinterpret KSR, but the subsequent case law from the Federal Circuit
clearly establishes that the problem confronting the inventor is relevant to
the analogousness inquiry. In addition, the facts of this case are
distinguishable from KSR, in that Kotliar does not pertain at all to fire
suppression/prevention. To the contrary, the Supreme Court also noted that
in setting forth an appropriate obviousness analysis, “[t]o facilitate review,
this analysis should be made explicit.” KSR, 550 U.S. at 418 (citing In re
Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[R]ejections on obviousness
grounds cannot be sustained by mere conclusory statements; instead, there
must be some articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness”)). The Supreme Court warned
that the “factfinder should be aware . . . of the distortion caused by hindsight
bias and must be cautious of arguments reliant upon ex post reasoning.” Id.
at 421.
We agree with the Patent Owner that the Examiner and the Requester
appear to engage in impermissible hindsight because as to the actual
rejection applied and articulated,
There is no basis for starting the obviousness inquiry from
the perspective of one skilled in the art of nitrogen generators
looking to back into creating a fire suppressive system, absent
the inventor’s own teachings. This is the very essence of
impermissible hindsight and taints the entire obviousness
analysis initially offered by the Third-Party Requester and
adopted by the Examiner in the RAN.
PO Rebuttal Brief (hereinafter “PO Reb. Br.”) 5.
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There is no articulated rational underpinning that sufficiently links the
problem of fire suppression/prevention confronting the inventor to the
“Hypoxic Room System and Equipment for Hypoxic Training and Therapy
at Standard Atmospheric Pressure” disclosed in Kotliar, which is directed to
human therapy, wellness, and physical training.
The Requester argues that breathable fire suppressive environments
are well-known in the art, citing to various references in the record.
Respondent Brief (hereinafter “Resp. Br.”) 3. This argument is
unpersuasive. Firstly, as the Patent Owner correctly observes, “none of
those four references was used to support the rejection here under appeal.”
PO Reb. Br. 2. Importantly, this is an inter partes proceeding, and the
rejection at issue was proposed by the Requester, and adopted by the
Examiner. RAN 2. Under such circumstances, we agree with Patent Owner
that “[t]he issue before the Board [] is the sufficiency of the rejections found
in the RAN” (PO Reb. Br. 2), and we decline to determine obviousness of
claim 91 based in part on references not cited or applied in the proposed
rejection, and consequently, not fully addressed by the Examiner or the
Patent Owner as to their relevancy, or lack thereof, as to claim 91.
The Requester also argues that the hypoxic enclosure of Kotliar would
inherently protect against, and extinguish fires. Resp. Br. 6. While this
argument may or may not have been pertinent if this rejection was based on
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35 U.S.C. § 102, that is not the rejection before us, and this argument does
not address the deficiency of the rejection as discussed supra.3
Finally, the Requester further argues that:
One problem the ’752 patent addresses is the nature of the
device to use for producing a reduced oxygen gas for
transmission into the enclosure. . . . Kotliar ’652 likewise
addresses the use of a hollow fiber membrane nitrogen generator
as a solution to the problem of producing a reduced oxygen gas,
and further describes the transmission of the reduced oxygen gas
into a human-occupied enclosure.
Resp. Br. 9.
However, this argument also does not adequately address the
deficiency of the rejection as discussed supra. In that regard, we agree with
the Patent Owner that “[t]he claimed invention, however, is not a nitrogen
generator. It is a system for preventing and suppressing fires in a human
occupied space, which system includes a nitrogen generator.” App. Br. 13;

3 The present rejection, arguments, and analysis, pertain to an obviousness
rejection under 35 U.S.C. § 103. We are well aware that, in the context of
anticipation rejections under 35 U.S.C. § 102, whether the art is analogous
or not is immaterial. See In re Self, 671 F.2d 1344, 1350–51 (CCPA 1982).
In this regard, we are further aware that, in the context of anticipation, it is
not necessary that the applied reference teach what the subject application
teaches, but only that the claim read on something disclosed in the reference,
i.e., that all of the limitations in the claim be found in or fully met by the
reference. Kalman v. Kimberly-Clark Corp., 713 F.2d 760, 772 (Fed. Cir.
1983). However, it is obviousness, not anticipation, that is the basis for the
rejections in the present appeal. Moreover, as in other appeals of the related
reexaminations, only those arguments actually made by the parties have
been considered. Any arguments that the parties did not make are deemed to
be waived. See 37 C.F.R. § 41.67(c)(1)(vii).
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see also PO Reb. Br. 4. In asserting that the problem addressed by the ’752
Patent is “the nature of the device to use for producing a reduced oxygen gas
for transmission into the enclosure,” the Requester couches the problem in
the context of the implemented solution for the actual problem confronting
the inventor (namely fire suppression/prevention), which is improper, and, at
its core, is derived from impermissible hindsight.
The additional disagreements between the Examiner and the involved
parties as to whether the combination of Kotliar and AFWAL 2060 was
proper, and whether an appropriate reason to combine these references has
been articulated (see, e.g., App. Br. 14–15; Resp. Br. 6–7, 11, 13; RAN 6),
are moot in view of the above. Moreover, the Examiner’s further
application of Knight in rejecting dependent claim 94 in Rejection 35 does
not address the deficiencies noted above relative to the rejection of
independent claim 91.
Accordingly, we reverse Rejections 34 and 35.
DECISION
The Examiner’s rejections of claims 91–94 are Reversed.

Requests for extension of time in this inter partes reexamination
proceeding are governed by 37 C.F.R. §§ 1.956.
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.
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REVERSED

Requester:
The Law Office of Roger S. Thompson
116 Pinehurst Ave
Suite D-14
New York, NY 10033

Patent Owner:

Andrews Kurth Kenyon LLP
One Broadway
New York, NY 10004

cdc