Board reexamination decision vacated and remanded for reconsideration of its analogous art analysis (“reasonably pertinent”)

Airbus S.A.S. v. Firepass Corporation

Docket Nos. 2019-1803
November 8, 2019

Brief Summary: Board reexamination decision vacated and remanded for reconsideration of its analogous art determination (i.e., “whether the reference…is reasonably pertinent”).

Summary: Airbus appealed Board reversal of rejection of new claims presented by Firepass during inter partes reexamination of US 6,418,752 relating to fire prevention and suppression systems. The prior art reference is an earlier-issued US patent (“Kotliar”) with the same inventor as the ‘752 patent, and “discloses equipment for providing hypoxic air in an enclosed area for the purposes of athletic training or therapy” (simulating “low-oxygen mountain air for training at different elevations”, a “hypoxicator”). FN1 explains that “[t]he ‘752 patent expressly acknowledges that its invention is ‘related in part’ to Kotliar-at least in a subject matter sense” (e.g., Kotliar’s system is “similar to the ‘hypoxic generator’ of the ‘752 patent. During reexamination and “[o]n remand from this court”, the Examiner also considered four other references considered in this appeal (Gustafsson, the 1167 Report, Luria, and Carhart). “Before the examiner, Firepass disputed whether Kotliar disclosed certain claim limitations and a motivation to combine” the references, but “did not dispute Kotliar’s status as analogous art” and the examiner did not consider that issue or the other four references “as background references establishing the knowledge and perspective of a person of ordinary skill in the art at the time of the invention.” Firepass first argued Kotliar was non-analogous art on appeal of the examiner’s rejection to the Board, which was not addressed by the Board but was addressed by Airbus (which did not argue Firepass had waived this argument by not raising it in front of the examiner). “The Board found that Kotliar was not analogous art and reversed the examiner” (“no articulated rational underpinning that sufficiently links the problem of fire suppression confronting the invention” and “Kotliar, ‘which is directed to human therapy, wellness, and physical training’”), and “declined to consider Airbus’s argument that ‘breathable fire suppressive environments [were] well-known in the art’”. The FC panel explained that “[t]wo 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’” (In re Bigio, FC 2004 (“consider each reference’s disclosure in view of ‘the reality of the circumstances’” weighed “from the vantage point of the common sense likely to be exerted by one of ordinary skill in the art in assessing the scope of the endeavor”); In re Clay, FC 1992 (“logically would have commended itself to an inventor’s attention in considering his problem”); In re GPAC, FC 1994 (“would reasonably have consulted those references”)). The Board concluded that Kotliar is not within the same field of endeavor at the ‘752 patent due ‘752 claim 1 preamble, title, and Field of the Invention section “unreasonable” (the first analogous art test) and, although the FC panel agreed that with Airbus “the knowledge of” a POSA “as demonstrated by” the prior art “could be relevant”, it also found any error by the Board on this point to be “harmless” (e.g., the Board’s position is not “unreasonable”). However, the FC panel found error in the Board’s refusal to consider the references under the second analogous art test (“reasonably pertinent”), citing Randall Manuf. (FC 2013 (“KSR requires consideration of the ‘background knowledge’”)). The FC panel therefore vacated the Board decision for reconsideration of its analogous art determination.

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