Ex Parte re 40,065 et al

Patent Trial and Appeal Board

Aug 27, 2013

95001552 (P.T.A.B. Aug. 27, 2013)

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.
95/001,552 02/22/2011 RE 40,065 7256
34313 7590 08/28/2013
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
08/28/2013 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 2013-003126
Reexamination Control No. 95/001,552
Patent RE40,065 E
Technology Center 3900
____________________

Before DANIEL S. SONG, JAMES P. CALVE, and
MICHAEL J. FITZPATRICK, Administrative Patent Judges.

FITZPATRICK, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2013-003126
Reexamination Control No. 95/001,552
Patent RE40,065 E

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STATEMENT OF THE CASE
Patent Owner FirePASS Corporation appeals under 35 U.S.C.
§§ 134(b) and 315(a) (2002) from the rejection of claims 5, 12-14, and 23-28
as set forth in the Right of Appeal Notice (“RAN”) mailed Feb. 25, 2012.
See Appeal Brief 2 (filed May 29, 2012) (“App. Br.”). Requester Airbus
S.A.S. filed a respondent brief on June 29, 2012 (“Resp. Br.”). The
Examiner mailed an Examiner’s Answer on September 10, 2012
(“Answer”), which incorporated the RAN by reference. Patent Owner filed
a rebuttal brief on October 10, 2012 (“Reb. Br.”).
We have jurisdiction under 35 U.S.C. §§ 134 and 315. We affirm.
THE INVENTION
This proceeding arose from a request by Airbus S.A.S. for an inter
partes reexamination of U.S. Patent RE40,065 E (“’065 Patent”).1 The ’065
Patent reissued to Igor J. Kotliar (Feb. 19, 2008), and is assigned to Patent
Owner. ’065 Patent, p. 1.2
The ’065 Patent “relates to a process and equipment for providing
low-oxygen (hypoxic) environments inside a computer cabinet or container
with combustible or explosive material in order to prevent or suppress fire

1 Request for Reexamination accorded filing date of February 22, 2011
(“Request”).
2 The ’065 Patent is a reissue of U.S. Patent 6,334,315 (Jan. 1, 2002), which
is discussed below.
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Appeal 2013-003126
Reexamination Control No. 95/001,552
Patent RE40,065 E

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Figure 2 illustrates a schematic representation of a hypoxic fire
prevention and suppression system employing a hypoxic generator 12 in an
extraction mode. Col. 3, ll. 9-11. The hypoxic generator 12 is mounted
directly upon a computer cabinet enclosure 11. Col. 3, ll. 12-16. The
hypoxic generator draws air from the cabinet via an air intake 13 and
separates it into oxygen-reduced gas and oxygen-enriched gas. Col. 3,
ll. 24-27. The oxygen-reduced gas is directed through outlet 14 into the
cabinet. Id. The oxygen-enriched gas is directed through disposal outlet 15
into the surrounding atmosphere. Col. 3, ll. 27-28. Because the process
creates a negative pressure inside the cabinet, ambient air is allowed to enter
the cabinet, which is not perfectly airtight. Col. 3, ll. 28-34. The
Specification states that operation of the hypoxic generator will cause the
cabinet oxygen content to fall to a certain level below 10%. Col 3, ll. 40-42.
Of the claims on appeal, claims 5 and 23 are independent and
representative. They are reproduced below.
5. An apparatus for producing a fire-extinguishing
atmosphere in enclosed environments, said apparatus
comprising:
an industrial container containing fire-hazardous
material;
a compressor having an inlet and a compressed gas
outlet;
an air separation device having an intake and first and
second outlets, said intake is operatively associated with said
compressed gas outlet and receiving an intake gas under
pressure from said compressor;
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said device taking in said intake gas and emitting a
reduced-oxygen gas mixture having a lower concentration of
oxygen than said intake gas through said first outlet and
enriched-oxygen gas mixture having a greater concentration of
oxygen than said intake gas through said second outlet;
said first outlet providing a fire-retarding gas mixture for
said enclosed environments with oxygen content below 12%,
but greater than 9%, wherein said enclosed environment
comprises said industrial container and said first outlet is
coupled to said industrial container;
said second outlet selectively communicating with
outside atmosphere and releasing said enriched-oxygen gas
mixture into said outside atmosphere;
said air separation device employing [a membrane] an air
separator membrane for separating said intake gas into said
reduced-oxygen and enriched-oxygen gas mixtures.

23. A method for producing a fire-extinguishing
atmosphere in enclosed environments, comprising:
providing an industrial container containing fire-
hazardous material;
providing a compressor having an inlet and a
compressed gas outlet;
providing an air separation device having an intake and
first and second outlets, operatively associating said intake with
said compressed gas outlet and receiving an intake gas under
pressure from said compressor;
coupling said first outlet to said industrial container;
emitting a reduced-oxygen gas mixture having a lower
concentration of oxygen than said received intake gas through
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said first outlet and emitting an enriched-oxygen gas mixture
having a greater concentration of oxygen than said received
intake gas through said second outlet;
providing a fire-retarding gas mixture at said first outlet
to said industrial container with an oxygen content below 12%,
but greater than 9%;
selectively communicating said second outlet with said
outside atmosphere and releasing said enriched oxygen gas
mixture into said outside atmosphere; and employing an air
separator membrane in said air separation device for
separating said intake gas into said reduced-oxygen and
enriched-oxygen gas mixtures.
App. Br. Claims Appx., pp. 1-2 (italics and brackets in the original reissued
claims).4
EVIDENCE
Requester relies upon the following references:
Kuchta, J.M., “Oxygen Dilution Requirements for Inerting Aircraft
Fuel Tanks,” Bureau of Mines, U.S. Dept. of Interior, Second
Conference on Fuel System Fire Safety (1970) (“Kutcha”).

4 Italics indicate material added during reissue of the ’065 Patent, and
brackets indicate matter removed and which forms no part of the claims.
See ’065 Patent col. 1, ll. 6-9. When quoting claims or claim limitations in
the remainder of this Decision, we do not retain the use of italics or the
matter in brackets.
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Ott, E.E. et al., “Influence of Fuel Slosh Upon the Effectiveness of
Nitrogen Inerting for Aircraft Fuel Tanks,” Technical Report AFAPL-
TR-70-82 (1971) (“Ott”).

Zinn, S.V. et al., “Inerted Fuel Tank Oxygen Concentration
Requirements,” Interim Report FAA-RD-71-42 (1971) (“Zinn”).

Manatt, S.A., “Hollow Fiber Permeable Membrane for Airborne Inert
Gas Generation,” SAE Paper No. 740854 (1974) (“Manatt SAE”).

Anderson, C.L., “Test and Evaluation of Halon 1301 and Nitrogen
Inerting Against 23MM HEI Projectiles,” Technical Report AFFDL-
TR-78-66 (1978) (“Anderson”).

Desmarais, L.A. et al., Boeing Military Airplane Co., “Integrated
Aircraft Fuel Tank Inerting and Compartment Fire Suppression
System,” Final Report AFWAL-TR-83-2021 (1983) (“Desmarais”).

Boeing Military Airplane Co., “Vulnerability Methodology and
Protective Measures for Aircraft Fire and Explosion Hazards,” Final
Report AFWAL-TR-85-2060 (1986) (“AFWAL 2060”).

Knight, T.C., et al,. “The AH-64A Nitrogen Inerting System,” AIAA-
84-2480 (1991) (“Knight”).

Tyson, J.H. et al., “The Effectiveness of Ullage Nitrogen-Inerting
Systems Against 30-mm High Explosive Incendiary Projectiles,”
Final Report (1991).

Tyson et al., “The Effectiveness of Ullage Nitrogen-Inerting Systems
Against 30-mm High-Explosive Incendiary Projectiles,” Naval
Weapons Center Report JTCG/AS-90-T-004 (“1991”) (“Tyson”)

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“Fuel Tank Inerting,” Aviation Rulemaking Advisory Committee
(1998) (“ARAC”).

REJECTIONS
Patent Owner appeals the Examiner’s rejections as follows:
1. Claims 5, 12-14, and 23-28 under 35 U.S.C. § 102(b) as anticipated
by Knight.
2. Claims 5, 12-14, and 23-28 under 35 U.S.C. § 102(b) as anticipated
by Mannatt SAE.
3. Claims 5, 12-14, and 23-28 under 35 U.S.C. § 102(b) as anticipated
by Desmarais.
4. Claims 5, 12-14, and 23-28 under 35 U.S.C. § 102(b) as anticipated
by AFWAL 2060.
5. Claims 5, 12-14, and 23-28 under 35 U.S.C. § 102(b) as anticipated
by ARAC.
6. Claims 5, 12-14, and 23-28 under 35 U.S.C. § 103(a) as unpatentable
over Manatt SAE and Ott.
7. Claims 5, 12-14, and 23-28 under 35 U.S.C. § 103(a) as unpatentable
over Manatt SAE and ARAC.
8. Claims 5, 12-14, and 23-28 under 35 U.S.C. § 103(a) as unpatentable
over Manatt SAE and Kutcha.
9. Claims 5, 12-14, and 23-28 under 35 U.S.C. § 103(a) as unpatentable
over Manatt SAE and Zinn.
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10. Claims 5, 12-14, and 23-28 under 35 U.S.C. § 103(a) as unpatentable
over Manatt SAE and Anderson.
11. Claims 5, 12-14, and 23-28 under 35 U.S.C. § 103(a) as unpatentable
over Manatt SAE and Tyson.5
12. Claims 27 and 28 under 35 U.S.C. § 112, ¶ 2 as indefinite.
ISSUE
Patent Owner does not argue that the claims, as construed by the
Examiner, are patentable. App. Br. 2-28; Reb. Br. 1-5. Rather, Patent
Owner’s appeal is premised on purported error by the Examiner in
construing independent claims 5 and 23. App. Br. 2; Reb. Br. 1.
Thus, the issue on appeal is whether the Examiner correctly construed
independent claims 5 and 23. More specifically, the issue is whether the
Examiner correctly determined that the recitation “oxygen content below
12%, but greater than 9%” refers to the oxygen content of the enclosed
environment/industrial container (as Requester argues) and not, specifically,
to the oxygen content at the first outlet (as Patent Owner argues).

5 The first sentence of Rejection 11 erroneously states Manatt SAE in view
of Anderson, which is Rejection 10. RAN 10. Based on the substance of
Rejection 11, it is clear that the rejection is based on Manatt in view of
Tyson. RAN 11.
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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) (appeal from reexamination proceeding).
ANALYSIS
Independent claim 5 requires, in relevant part: “said first outlet
providing a fire-retarding gas mixture for said enclosed environments with
oxygen content below 12%, but greater than 9%, wherein said enclosed
environment comprises said industrial container and said first outlet is
coupled to said industrial container” (underlining added). Similarly,
independent claim 23 requires, in relevant part: “providing a fire-retarding
gas mixture at said first outlet to said industrial container with an oxygen
content below 12%, but greater than 9%” (underlining added). The
Examiner construed the recitation “oxygen content below 12%, but greater
than 9%” in claim 5 as pertaining to the oxygen content of the enclosed
environment and in claim 23 as pertaining to the oxygen content of the
industrial container. RAN 12.
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Patent Owner argues that the plain meaning of the claims requires the
specified oxygen content of below 12%, but greater than 9% to be at the first
outlet. App. Br. 3-4. We disagree.
Claim 5 recites “enclosed environments with oxygen content below
12%, but greater than 9%,” and claim 23 recites an “industrial container with
an oxygen content below 12%, but greater than 9%.” Patent Owner argues
that the English language is not so constricted as to require the oxygen
content clause to modify the term immediately preceding it. Reb. Br. 1-2.
However, that argument does not support Patent Owner’s ultimate assertion
that the Examiner’s construction ignores the plain and ordinary meaning of
the claim language. It is reasonable, even if not required, to construe the
oxygen content clause as modifying the term that immediately precedes it,
and Patent Owner does not point to anything in the Specification that is
inconsistent with such a construction. See Reb. Br. 1-5; see also App. Br. 2
(Summary of Claimed Subject Matter).
Patent Owner asserts that its interpretation is also required by the
language of claims 12 and 24, which depend from claims 5 and 23,
respectively. App. Br. 3. We disagree.
Claim 12 recites “said first outlet providing a fire-retarding gas
mixture for said enclosed environments with oxygen content of between
10% and 12%. Although claim 12 narrows the oxygen content range with
respect to claim 5, its syntax is the same as that of claim 5, placing the
oxygen content clause immediately after the enclosed environments.
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Claim 24 recites “providing said fire-retarding gas mixture with an
oxygen content of between 10% and 12%.” Here, the oxygen content clause
is placed immediately after the gas mixture that -- per claim 23 -- is provided
at the first outlet. Patent Owner argues that because the gas mixture is
provided at the first outlet per claim 23, and because the oxygen content
clause in claim 24 is linked to the gas mixture (as opposed to the industrial
container recited in claim 23), the Patent Owner “intended” the oxygen
content clause in claim 23 to also modify the gas mixture. App. Br. 4.
This argument is not persuasive, however, because claim 24 is
properly of narrower scope than its base claim 23 under either Patent
Owner’s or Examiner’s construction of claim 23. That is, dependent claim
24’s requirement that the gas mixture have an oxygen content of between
10% and 12% narrows its scope relative to independent claim 23 regardless
of whether claim 23 requires the provided gas mixture or the industrial
container to have an oxygen content below 12%, but greater than 9%.
We have considered Patent Owner’s arguments, and we disagree that
the plain and ordinary meaning of the claims requires the construction
advanced by Patent Owner. It is the broadest reasonable construction
consistent with the specification that governs claims during prosecution,
including reexamination. In re Suitco Surface, 603 F.3d at 1259. In this
regard, the Specification states that the “[t]he present invention relates to a
process and equipment for providing low-oxygen (hypoxic) environments
inside a computer cabinet or container with combustible or explosive
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material in order to prevent or suppress fire before it starts.” Col. 1, ll. 20-23
(emphasis added). The Specification further states the invention “can
guarantee that no fire will be able to start inside such computer cabinet or
container having internal atmosphere with oxygen content under 10%.”
Col. 1, ll. 53-58 (emphasis added). The Specification describes the
following as objects of the invention:
 “a fire safe hypoxic environment inside a computer cabinet or
container with combustible, inflammable or explosive
materials”;
 “a low-oxygen environment inside a computer cabinet or
industrial container”; and
 “a fire-retarding oxygen-depleted environment inside a
computer room or industrial facility at standard, slightly
reduced or increased atmospheric pressure and having oxygen
content fewer than 10%.”

Col. 1, ll. 64-67 and col 2, ll. 1-10 (emphasis added).
Outside of the claims, the Specification does not mention the lower
limit of 9% oxygen and only once mentions the upper limit of 12% oxygen.
And, when doing so, the Specification refers to 12% oxygen content as an
upper limit for the enclosed environment, not for the gas mixture provided at
the first outlet.
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.
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Col. 3, ll. 53-59 (emphasis added).
Consistent with the Specification, including the excerpts identified
above, we determine that the oxygen content clauses of claims 5 and 23 refer
to the enclosed environment/industrial container and not to the first outlet.6
Further, we note that the lower limit of 9% oxygen was introduced via
reissue, during which, the inventor testified to the following:
I, the undersigned, request reissue of U.S. Patent No. 6,334,315
. . . After the patent issued, I became aware of prior art
concerning my invention for providing a fire extinguishing
atmosphere in enclosed environments that disclosed an
atmosphere having an oxygen content of less than 9%. I then
realized that by claiming a range of less than 12% oxygen, I had
inadvertently claimed more than I had a right to claim. . . . I
have narrowed the subject matter sought to be patented to limit
my invention to apparatus and methods for providing a fire
extinguishing atmosphere having an oxygen content of between
9 and 12%[.]

6 The fact that Patent Owner can posit an alternate claim construction based
on the language of claims 5 and 23 does not persuade us that the Examiner’s
construction is in error or not within the broadest reasonable construction.
Further, Patent Owner might have drafted claim 5 to recite “said first outlet
providing a fire-retarding gas mixture with oxygen content below 12% but
greater than 9%” or claim 23 to recite “providing a fire-retarding gas
mixture at said first outlet with an oxygen content below 12% but greater
than 9%” but did not do so.
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“Reissue Application Declaration” dated Dec. 1, 2006 in Application No.
11/198,862, at 5. Thus, it is clear from the inventor’s own testimony that the
oxygen content clauses of claims 5 and 23 refer to the enclosed
environment/industrial container and not to the first outlet. See Phillips v.
AWH Corp., 415 F.3d 1303, 1317 (Fed. Cir. 2005) (en banc) (“the
prosecution history can often inform the meaning of the claim language by
demonstrating how the inventor understood the invention”).7
For the forgoing reasons, we sustain each of the prior art rejections by
the Examiner. For the same reasons, we also sustain the indefiniteness
rejection of new claims 27 and 28, which was argued solely on the same
basis as the prior art rejections. App. Br. 28.
DECISION
The Examiner’s decision to reject claims 5, 12-14, and 23-28 is
affirmed. In particular, we affirm the eleven prior art-based rejections of
claims 5, 12-14, and 23-28 under 35 U.S.C. §§ 102(b) and 103(a) that are

7 Consistent with the inventor’s Reissue Application Declaration, the Patent
Owner itself, in related district court litigation, proposed that claims 5 and
23 should be interpreted to require “providing a fire-retarding gas mixture
from the first outlet such that the oxygen content of the gas mixture of the
industrial container is below 12%, but greater than 9%”. Resp. Br. Evidence
Appx. 2 (claim chart at 1) (emphasis added). Patent Owner does dispute that
it proposed such a construction in the related litigation. Reb. Br. 5.
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identified above and the indefiniteness rejection of new claims 27 and 28
under 35 U.S.C. § 112, ¶ 2 that is also identified above.

Requests for extension of time in this inter partes reexamination
proceeding are governed by 37 C.F.R. §§ 1.956 and 41.77(g).

AFFIRMED

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

THIRD PARTY REQUESTER:
KENYON & KENYON LLP
One Broadway
New York, NY 10004

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