Ex Parte 7,207,392 et al

Patent Trial and Appeal Board

Aug 1, 2018

95001553 (P.T.A.B. Aug. 1, 2018)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
95/001,553 02/22/2011 7,207,392 6017-03 7289
15933 7590 08/02/2018
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
08/02/2018 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, Cross-appellant and Respondent

v.

FIREPASS CORPORATION
Patent Owner, Appellant and Respondent
____________________

Appeal 2018-004801
Reexamination Control No. 95/001,553
Patent US 7,207,392 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 22, 2011, by the
Requester, Airbus S.A.S., for an inter partes reexamination of Patent
7,207,392 (“the ’392 Patent”). Prior to the present appeal, the ’392 patent
was involved in Appeal 2013-008174 that culminated in the Board’s
Decision on Appeal dated September 30, 2013 (hereinafter “Original
Decision” or “Orig. Dec.”). In that earlier appeal, claims 14, 15, and 17–28
were rejected by the Examiner, and the rejections were appealed to the
Board by the Patent Owner. Orig. Dec. 4–5. The Requester cross-appealed
the Examiner’s non-adoption of certain proposed rejections of the same
claims based on various prior art references by Mr. Kotliar, the inventor of
the ’392 patent. Id. at 5. In the Original Decision, the Board affirmed the
Examiner’s rejections as to claims 14, 15, 17–26, and 28, but reversed the
rejection of claim 27. Id. at 19. The Board dismissed the Requester’s cross-
appeal for lack of jurisdiction. Id. The Requester filed a Request for
Rehearing on October 30, 2013, as to the Board’s dismissal of its cross-
appeal.
On July 17, 2015, the United States Court of Appeals for the Federal
Circuit rendered judgment in related Appeal No. 2013-008166 in
Reexamination No. 95/001,555, pertaining to U.S. Patent No. 6,418,752 B2,
this related case involving the same parties and similar issues as those of
Appeal No. 2013-008174. Airbus S.A.S. v. Firepass Corp., 793 F.3d 1376
(Fed. Cir. 2015). In its decision, the court vacated and remanded the
decision of the Patent Trial and Appeal Board, determining that the Board
erred in dismissing the Requester’s cross-appeal for lack of jurisdiction. Id.
at 1381. Because the court’s decision was relevant to Appeal No. 2013-
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008174, it was remanded in the Order Remanding to the Examiner dated
August 25, 2015, for further proceedings consistent with the holding of the
Federal Circuit in Airbus v. Firepass, without deciding the Requester’s
rehearing request.
The present Appeal No. 2018-004801 stems from the reexamination
proceeding subsequent to the Board’s remand in Appeal No. 2013-008174.
Presently, claims 14, 15, and 17–28 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 claim 27. See Appeal Brief (hereinafter
“App. Br.”) 5, 6. As such, the only rejections on appeal are those of claim
27, which the Examiner rejected as being anticipated by, or rendered
obvious in view of, Lambertsen.2 RAN 4–5. The Examiner also declines to
adopt the Requester’s proposed rejections, which are based on various
patents also issued to the inventor, Mr. Kotliar, as well as a prior art
reference referred to as AFWAL 2060.3 RAN 6.
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

1 Because the Examiner’s Answer incorporates the RAN by reference, we
cite to the RAN herein.
2 US 4,807,706 to Lambertsen, et al. (iss. Feb. 28, 1989).
3 Boeing Military Airplane Co., “Vulnerability Methodology and Protective
Measures for Aircraft Fire and Explosion Hazards,” Final Report
AFWALTR-85-2060 (1986).
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18, 2018, a transcript of which will be entered into the electronic record in
due course.
We REVERSE and enter a NEW GROUND OF REJECTION.
THE INVENTION
The ’392 Patent relates to a system for providing low oxygen
(hypoxic) and low carbon dioxide (hypocapnic) environment4 in computer
rooms and other human occupied facilities for preventing and suppressing a
fire before it starts. Col. 1, ll. 28–31. Claim 27 is reproduced below,
together with claims 22–25 from which claim 27 multiply depends. App.
Br., Claims App’x. p. 1–2.
22. A method for providing a breathable hypoxic hypocapnic
fire-preventative composition for use in an enclosed environment
comprising:
producing said composition by diluting an internal
atmosphere with hypocapnic hypoxic air and mixing it with
ambient atmospheric air introduced into said enclosed
environment;
providing said composition with a blend of hypoxic
hypocapnic air and ambient atmospheric air for current location
and with oxygen content in a range greater than 9% to 17% and
carbon dioxide content below 0.035%;
using said composition as a fire suppressive atmosphere in
computer rooms, warehouses and other occupied and non-
occupied enclosed environments.

23. The method of claim 22 further comprising:

4 At sea level, air has an oxygen content of 20.94% and carbon dioxide
content of 0.035%. Spec. col. 3, l. 36; col. 5, ll. 20–22.
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providing said breathable hypoxic hypocapnic fire-
preventative composition for use in any room or facility
containing computerized equipment or any combustible,
inflammable or explosive materials.

24. The method of claim 22: wherein said enclosed
environment is in an aircraft.

25. The method of claim 22: wherein said enclosed
environment is in a storage facility operating with inflammable
and explosive materials.

27. The method of any of claims 22 through 25 further
comprising:
providing a source of said hypocapnic hypoxic air; and
turning said source on and off to maintain said oxygen
content in said enclosed environment between a high level and a
low level within said oxygen content range.

REJECTIONS APPEALED
Because the Patent Owner appeals only claim 27, only the following
Grounds of Rejection are pertinent:5
4. Claim 27/22–23 under 35 U.S.C. § 102(b) as anticipated by
Lambertsen. RAN 4–5.6

5 For clarity, we utilize the Ground of Rejection numbering used by the
Examiner in the RAN. Correspondingly, because claim 27 is only subject to
Grounds of Rejection 4 and 5, Grounds of Rejections 1–3 are omitted. See
App. Br. 7.
6 As the Patent Owner notes, the heading for the rejection in RAN 4 contains
a typographical error in that “[t]he rejection actually refers to claim ‘28/22-
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5. Claim 27/24–25 under 35 U.S.C. § 103(a) as obvious over
Lambertsen. RAN 5.
ANALYSIS
Rejection 4
In rejecting claim 27 as anticipated by Lambertsen, the Examiner
finds that:
Lambertsen teaches the on and of [sic, off] operation. See col. 3,
lines 5-7 and col. 3, lines 49-57 (“When oxygen content inside
cabinet 11 drops below 7%, which will be detected by oxygen
transducer 19 installed inside cabinet 11, hypoxic generator 12
turns off in order to save energy. When, after some time, oxygen
content inside cabinet 11 reaches about 12%, transducer 19 will
turn on hypoxic generator 12 again, and so further in cycles.”).
(RAN 5).
The Patent Owner argues that “[t]he language quoted by the Examiner
does not appear in Lambertsen” (App. Br. 7), and further points out this
same rejection of claim 27 was previously appealed to the Board, and
reversed by the Board in its Original Decision because the Examiner relied
on “a nonexistent quotation in Lambertsen.” App. Br. 10. Indeed, the
Original Decision states:
In rejecting claim 27 as anticipated by Lambertsen, the Examiner
provides a quotation that is attributed to column 3, lines 5-7 and
49-57, of that reference. RAN 5. However, the quotation does
not appear in the cited portion of Lambertsen, or even appear
anywhere in Lambertson [sic]. Thus, the Examiner’s finding

23’ twice, but it is understood that the first reference was intended to be to
claim 27/22-23 as this is discussed in the body of the rejection.” App. Br. 7.
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with respect to Lambertsen upon which the rejection of claim 27
is based is unsupported. Accordingly, we reverse the rejection
of claim 27 as anticipated by Lambertsen.
Orig. Dec. 15–16.
Accordingly, the Patent Owner is correct that this rejection is
“premised upon the erroneous factual determination, as has already been
decided by the Board,” and that “the Examiner has failed to make out a
prima facie case of unpatentability based on Lambertsen alone with regard
to the subject matter recited in claim 27.” App. Br. 11. Thus, Rejection 4 is
reversed.

Rejection 5
Although this rejection of claim 27 is under 35 U.S.C. § 103(a), the
rejection is also premised on the same erroneous findings with regard to
Lambertsen. RAN 5. Therefore, Rejection 5 is also reversed for the same
reason as Rejection 4.

New Ground of Rejection
In the Original Decision, the Board affirmed the Examiner’s rejection
of claims 17, 18, 21–23, 26, and 28 as being anticipated by Lambertsen.
Orig. Dec. 15. The Board also affirmed the Examiner’s rejection of claims
19–21 and 24–26 and 28 as being unpatentable in view of Lambertsen alone.
Orig. Dec. 17. Thus, each of claims 22–25 from which claim 27 depends
have been rejected based on Lambertsen.
To these claims, claim 27 adds the following limitations:
providing a source of said hypocapnic hypoxic air; and
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turning said source on and off to maintain said oxygen
content in said enclosed environment between a high level and a
low level within said oxygen content range.
App. Br., Claims App’x, pgs. 1–2.
In disclosing the production of the hypocapnic hypoxic air using a
mixing chamber, Lambertsen discloses providing a source of such air. Orig.
Dec. 6–7; Lambertsen, col. 7, ll. 47–50. In addition, Kotliar ’315 already of
record in the present appeal discloses hypoxic generators 12, 32, 40, 60 that
generate hypoxic air for preventing and suppressing fires. Kotliar ’315, col.
2, l. 66–col. 3, l. 4; col. 4, ll. 8–11, 64–66; col. 5, ll. 61–65; Figs. 1, 3–5.
Moreover, as to the limitation of claim 27 requiring the source to be
turned on and off to maintain the oxygen content within a desired range,
Kotliar ’315 discloses such an operation. In particular, Kotliar ’315
specifically discloses that:
When oxygen content inside cabinet 11 drops below 7%,
which will be detected by oxygen transducer 19 installed inside
cabinet 11, hypoxic generator 12 turns off in order to save
energy. When, after some time, oxygen content inside cabinet
11 reaches about 12%, transducer 19 will turn on hypoxic
generator 12 again, and so further in cycles.
Kotliar ’315, col. 3, ll. 49–54.7

7 It is readily apparent that the Examiner quoted this very passage from
Kotliar ’315 in the RAN considering the identical text and the exact column
and lines identified, but misattributed this quote as being from Lambertsen
instead of Kotliar ’315. See RAN 5.

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Lambertsen generally discloses the desirability of controlling the flow
of gases, and monitoring the gas, to maintain a “stable” hypoxic
environment. Lambertsen, col. 11, ll. 61–68, col. 12, ll. 65–68, Fig. 7.
Accordingly, both Lambertsen and Kotliar ’315 are concerned with
maintaining a desired hypoxic environment, and it would have been obvious
to a person of ordinary skill in the art to operate the system of Lambertsen
by cycling its system on and off in the manner disclosed in Kotliar ’315 in
order to maintain a stable hypoxic environment. As such, the invention of
claim 27 is a predictable variation of Lambertsen. KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398, 417 (2007) (“If a person of ordinary skill can implement
a predictable variation, §103 likely bars its patentability. For the same
reason, if a technique has been used to improve one device, and a person of
ordinary skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless its actual
application is beyond his or her skill.”).
Therefore, we enter a new ground of rejection of claim 27 as obvious
over Lambertsen in view of Kotliar ’315, under 37 C.F.R. § 41.77(b).
CONCLUSION
1. The Examiner’s Rejection 4 of claim 27 as anticipated by
Lambertsen is REVERSED.
2. The Examiner’s Rejection 5 of claim 27 as obvious over
Lambertsen is REVERSED.
3. We reject claim 27 as obvious over Lambertsen in view of
Kotliar ’315, and denominate the same as a New Ground of Rejection
under 37 C.F.R. § 41.77(b).
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This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.77(b) which provides that “[a]ny decision which includes a new ground
of rejection pursuant to this paragraph shall not be considered final for
judicial review.” Correspondingly, no portion of the decision is final for
purposes of judicial review. A Requester may also request rehearing under
37 C.F.R. § 41.79, if appropriate, however, the Board may elect to defer
issuing any decision on such request for rehearing until such time that a final
decision on appeal has been issued by the Board.
For further guidance on new grounds of rejection, see 37 C.F.R.
§ 41.77(b)–(g). The decision may become final after it has returned to the
Board. 37 C.F.R. § 41.77(f).
37 C.F.R. § 41.77(b) also provides that the Patent Owner, WITHIN
ONE MONTH FROM THE DATE OF THE DECISION, must exercise one
of the following two options with respect to the new grounds of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. The owner may file a response requesting
reopening of prosecution before the examiner. Such a response must be
either an amendment of the claims so rejected or new evidence relating to
the claims so rejected, or both.
(2) Request rehearing. The owner may request that the proceeding be
reheard under § 41.79 by the Board upon the same record. …

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Any request to reopen prosecution before the Examiner under 37
C.F.R. § 41.77(b)(1) shall be limited in scope to the “claims so rejected.”
Accordingly, a request to reopen prosecution is limited to issues raised by
the new ground(s) of rejection entered by the Board. A request to reopen
prosecution that includes issues other than those raised by the new ground(s)
is unlikely to be granted. Furthermore, should the Patent Owner seek to
substitute claims, there is a presumption that only one substitute claim would
be needed to replace a cancelled claim.
A Requester may file comments in reply to a Patent Owner response.
37 C.F.R. § 41.77(c). Requester comments under 37 C.F.R. § 41.77(c) shall
be limited in scope to the issues raised by the Board’s opinion reflecting its
decision to reject the claims and the Patent Owner’s response under
paragraph 37 C.F.R. § 41.77(b)(1). A newly proposed rejection is not
permitted as a matter of right. A newly proposed rejection may be
appropriate if it is presented to address an amendment and/or new evidence
properly submitted by the Patent Owner, and is presented with a brief
explanation as to why the newly proposed rejection is now necessary and
why it could not have been presented earlier.
Compliance with the page limits pursuant to 37 C.F.R. § 1.943(b), for
all Patent Owner responses and requester comments, is required.
The Examiner, after the Board’s entry of a Patent Owner response and
requester comments, will issue a determination under 37 C.F.R. § 41.77(d)
as to whether the Board’s rejection is maintained or has been overcome.
The proceeding will then be returned to the Board together with any
comments and reply submitted by the Patent Owner and/or Requester under
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37 C.F.R. § 41.77(e) for reconsideration and issuance of a new decision by
the Board as provided by 37 C.F.R. § 41.77(f).
Requests for extensions of time in this inter partes reexamination
proceeding are governed by 37 C.F.R. § 1.956.

REVERSED; 37 C.F.R. § 41.77(b)

PATENT OWNER:

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

THIRD PARTY REQUESTER:

Andrews Kurth Kenyon LLP
One Broadway
New York, NY 10004

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