6418752 et al.

Patent Trials and Appeals Board

Jun 23, 2020

2018004837 (P.T.A.B. Jun. 23, 2020)

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 06/23/2020
The Law Office of Roger S. Thompson
116 Pinehurst Ave
Suite D-14
New York, NY 10033
EXAMINER
ENGLISH, PETER C
ART UNIT PAPER NUMBER
3993
MAIL DATE DELIVERY MODE
06/23/2020 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 REMAND

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STATEMENT OF THE CASE
The present Decision On Remand is necessitated by the Federal
Circuit’s recent decision, which Vacated and Remanded an earlier Board’s
Decision on Appeal in the subject reexamination. Airbus S.A.S. v. Firepass
Corp., 941 F.3d 1374, 1384 (Fed. Cir. 2019), rehr’g denied (Fed. Cir. 2020);
Airbus S.A.S. v. Firepass Corp., 2018 WL 4191920 (PTAB 2018) (“Board
Decision” or “Board Dec.”), rehr’g denied (PTAB 2019).
BACKGROUND
The procedural history is set forth in the decisions of the Federal
Circuit and the Board, and need not be fully reproduced here. Airbus, 2018
WL 4191920 **1–2; Airbus, 941 F.3d 1374, 1376. Briefly, the Examiner
rejected claims 91–93 under 35 U.S.C. § 103(a) as unpatentable over Kotliar
in view of AFWAL 2060, and claim 94 under 35 U.S.C. § 103(a) as
unpatentable over Kotliar in view of AFWAL 2060 and Knight. Airbus,
2018 WL 4191920 *3.
In the appeal to the Board, the issue raised by the Patent Owner was
whether claims 91–94, directed to “[a] system for providing breathable fire-
preventive and fire suppressive atmosphere in enclosed human-occupied
spaces,” as set forth in independent claim 91, were properly rejected based
on the combination of Kotliar1 and AFWAL 2060.2 Airbus, 2018 WL

1 US Patent 5,799,652 issued September 1, 1998.
2 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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4191920 *3. The Patent Owner argued that Kotliar is not an analogous
reference because it pertains to “Hypoxic Room System and Equipment for
Hypoxic Training and Therapy at Standard Atmospheric Pressure.” Kotliar,
Title; Airbus, 2018 WL 4191920 *4. The Patent Owner did not submit
arguments directed to the specific limitations of the claims.
As to the first prong of the test for analogousness, the Board agreed
with the Patent Owner, finding that “Kotliar is not directed to fire prevention
and suppression,” and that “the term ‘fire’ does not appear at all in Kotliar.”
Id. Thus, the Board concluded that “Kotliar cannot reasonably be said to be
within the field of endeavor of fire prevention/suppression.” Id.
As to the second prong of the test for analogousness, the Board found
that “[i]t 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.” Id. The Board also
found that “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.” Id.
Accordingly, the Board determined that Kotliar is not reasonably pertinent to
the problem confronted by the inventor, and thus, is not analogous art. Id.
The Board reversed the rejection of claims 91–94, concluding that the
rejection as articulated is deficient. Id. at *8.
In its subsequent Decision on Request for Rehearing (“Dec. Rehr’g”),
the Board rejected the Requester’s argument that Kotliar is within the same
field of endeavor in view of four references not relied upon in the rejection,
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and found unpersuasive, the Requester’s reliance on Randall Mfg. v. Rea,
733 F.3d 1355 (Fed. Cir. 2013) because that case was, in the Board’s view,
distinguishable. Dec. Rehr’g 11–12; Req. Rehr’g 8, 9, 11–13. The
Requester appealed the Board’s Decision to the Federal Circuit.

THE COURT’S DECISION
In its decision, the Federal Circuit held that
the Board’s ‘field of endeavor’ determination is supported by
substantial evidence, but the Board erred in its ‘reasonably pertinent’
determination because the Board declined to consider record evidence
advanced by Airbus to demonstrate the knowledge and perspective of
a person of ordinary skill in the art at the time of the invention.
Airbus, 941 F.3d at 1379.
In particular, as to whether Kotliar is as analogous under the
reasonably pertinent prong of the analysis, the court observed that “the
Board declined to consider Airbus’s argument that ‘breathable fire
suppressive environments [were] well-known in the art’ because none of the
four references relied on by Airbus was specifically used to support the
examiner’s rejection of claims 91–94.” Id. at 1379. The court noted that
although “the Board accurately observed that the examiner’s rejection did
not ‘provide or explain the requisite correlation’ between the problems
addressed by Kotliar and the ’752 patent,” it nonetheless erred in not
considering the four prior art references not relied upon in the rejections in
analyzing whether Kotliar is reasonably pertinent to the problem addressed
by the inventor. Id. at 1382. Applying the analysis in Randall, the court
explained that “the reasonably pertinent inquiry is inextricably tied to the
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knowledge and perspective of a person of ordinary skill in the art at the time
of the invention.” Id.; see generally id. at 1382–84.
Specifically, as to the four references of record not relied upon, the
court determined that:
The Gustafsson, the 1167 Report, Luria, and Carhart prior art
references are relevant to the question of whether a person of ordinary
skill in the art of fire prevention and suppression would have
reasonably consulted references relating to norm[o]baric hypoxic
atmospheres to address the problem of preventing and suppressing
fires in enclosed environments. . . . These references could lead a
reasonable factfinder to conclude that an ordinarily skilled artisan in
the field of fire prevention and suppression would have looked to
Kotliar for its disclosure of a hypoxic room, even though Kotliar itself
is outside the field of endeavor.
Id. at 1383.
Accordingly, the court vacated the Board’s reversal of the Examiner’s
rejection and remanded the case to the Board to “consider whether Kotliar is
analogous art in view of the four prior art references relied on by Airbus to
demonstrate the knowledge and perspective of a person of ordinary skill in
the art at the time of the invention.” Id. at 1384.
ANALYSIS
In reconsidering this appeal in view of the Federal Circuit’s guidance,
we note that the court also made various relevant statements as to the four
prior art references. In particular, with respect to the Gustafsson prior art
reference, the court stated that:
Gustafsson[] is a study focused on “human performance
during [a] prolonged stay in normobaric hypoxia a so-called
‘fire retardant atmosphere.’” J.A. 1860. The reference explains
that “[r]educed oxygen levels have ... been discussed for fire
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prevention in closed spaces, such as submarines, computer
rooms, store rooms, archives, or museums.” Id. It further
explains that “if humans are to work and live in localities where
hypoxic atmospheres are used, a balance must be struck
between the level of fire prevention achieved and the effect of
hypoxia human performance.” Id. After surveying the
literature, Gustafsson discloses the results of a human
performance experiment in which the subjects were exposed to
different levels of normobaric hypoxia for periods extending up
to ten days.
Airbus, 941 F.3d at 1377.
With respect to 1167 Report, the court stated that:
The 1167 Report[] is a report from the U.S. Navy that
examines the medical hazards of four types of flame-
suppressant atmospheres for “sealed chambers.” J.A. 1872.
One of the disclosed “modifications of air that will suppress or
extinguish flames” is the partial replacement of oxygen by
nitrogen, or “N2 Dilution.” J.A. 1871–72. Another is “N2
Pressurization,” the addition of compressed nitrogen to air. Id.
After surveying the literature, the 1167 Report discloses the
results of six experiments performed to assess the effect of
hypoxia at normobaric pressure on health and mental function
over time. The 1167 Report endorses the use of N2 Dilution to
suppress flames aboard patrolling submarines. It further
suggests that N2 Dilution and N2 Pressurization “may be
combined at minimal hazard to the crews serving aboard
patrolling submarines.” J.A. 1871.
Id. at 1377–78.
The court also stated that:
Luria,[] which shares an author with the 1167 Report,
similarly explores the effect of “nitrogen-based, fire-retardant
atmospheres” on human performance, particularly visual
sensitivity. J.A. 2669–70. The reference discloses various
experiments and concludes that the results support a strategy of
reducing oxygen concentration to suppress fires.
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Id. at 1378.
The court further stated that Carhart:
is titled “Suppression of Fires in Confined Places by Pressurization.”
Carhart explains that “[i]t is well known to those skilled in the art
that fires are supported by oxygen and that by using some means to
deplete the surrounding area of oxygen or lowering the percent of
oxygen the fire will be suppressed.” Carhart col. 1 ll. 17–20.
Carhart also explains that it is well-known that “[s]uppression of
fires in open spaces and in confined spaces require[s] different
efforts to extinguish the fire.” Id. at col. 1 ll. 20–22. And, “the
presence of machinery, electrical equipment, and more importantly
the presence of human beings within the area of a fire requires
special considerations for the type of extinguishant used.” Id. at col.
1 ll. 22–26.
Carhart is specifically “directed to a system and method of
adding nitrogen under pressure to a confined area including a
habitable atmosphere to suppress a fire without any deleterious
effects on humans within the environment in which the fire is
suppressed.” Id. at col. 1 ll. 61–65. An object of the disclosed
invention is to “suppress a fire in a closed chamber while
maintaining an environment suitable for human activity.” Id. at
col. 2 ll. 6–8. The areas of interest include “confined storage
areas such as a room-type safe or machine room that require a
controlled environment,” but Carhart’s system “may be used for
any controlled habitable environment which is either an
enclosed area or an area which may be closed by closing of a
door or window.” Id. at col. 2 ll. 56–64; see also id. at col. 4 ll.
27–32 (similar).
Id. at 1378.
Therefore, in view of the Federal Circuit’s remand with instruction to
the Board to consider the above noted references not relied upon in the
rejection, we find Kotliar to be analogous art. In particular, the above-
reproduced portions of the Federal Circuit Decision establish that the use of
breathable hypoxic atmospheres in enclosed environments to prevent and
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suppress fire was well-known to those of ordinary skill in the art of fire
prevention and suppression. Thus, when confronted with the problem of
providing a system for fire prevention and suppression that is also
breathable, a person of ordinary skill in the art would reasonably have
consulted references relating to devices and technology that provide
breathable hypoxic atmospheres, such as Kotliar, which discloses a
normobaric hypoxic room, even though Kotliar itself is outside the field of
endeavor of fire prevention and suppression. In re GPAC Inc., 57 F.3d
1573, 1578 (Fed. Cir. 1995) (“a person of ordinary skill would reasonably
have consulted those references and applied their teachings in seeking a
solution to the problem that the inventor was attempting to solve.”).
Accordingly, Kotliar is reasonably pertinent to the problem confronting the
inventor and is analogous art.
Therefore, in view of the above, and the Federal Circuit’s guidance,
we withdraw the earlier Board Decision, which was based on the
determination that Kotliar was non-analogous art.
Based on this new determination that Kotliar is analogous art, we now
further consider the Appellant’s additional arguments (other than the non-
analogous arguments) made in its Appeal Brief that are directed to the
Examiner’s obviousness rejections of claims 91–94.
In particular, the Examiner rejected claims 91–93 as obvious over the
combination of Kotliar and AFWAL 2060, and rejected claim 94 as obvious
further in view of Knight. RAN 2–3. As to independent claim 91, the
Examiner found that Kotliar discloses the invention substantially as claimed,
but “differs only in the inclusion of a ‘filter’ and an intake gas mixture with
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‘reduced humidity’.” RAN 3. The Examiner found 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; Vol. III, Part III, pgs. 24–27; Figs. 4, 5). The
Examiner concluded 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 Appellant argued that the rejection was improper because in order
to combine Kotliar and AFWAL 2060, one of ordinary skill would have had
to ignore AFWAL 2060’s teachings that an “inert gas generator is best used
in [] non-human occupied space,” and instead, unbreathable Halon should be
used to suppress fire in a human occupied space, and would have had to
further ignore the teaching that, when using a nitrogen generator to suppress
fire, the level of oxygen should be at 5%, which is too low for humans.
Appeal Br. 14–15. Thus, the Appellant asserts that Kotliar and AFWAL
2060 “cannot be combined to make a fire preventive/suppressive system
using breathable air, absent the inventor’s own teachings,” and that the
combination would be inoperable. Appeal Br. 15.
We find the Appellant’s arguments unpersuasive, and agree with the
Requester that the Appellant does not accurately characterize the teachings
of AFWAL 2060. Resp. Br. 6–7 (disputing Patent Owner’s characterization
of AFWAL 2060). Indeed, we agree with the Requester that the Appellant
appears to cite portions of AFWAL 2060 out of context. Resp. Br. 6 (“the
expressed preference for Halon had nothing to do with whether or not the
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compartment is human-occupied. Instead, it related to the fact that the
system under development (OBIGGS) provided no weight advantage over
Halon.”); Resp. Br. 6–7 (reference to 5% O2 “is not about the oxygen
centration in the fuel tank. AFWAL 2060, Vol. I, p. 31.[] Instead, it is about
the oxygen concentration for a ‘stored inert gas system.’”); see also Resp.
Br. 10–11.
The Appellant’s argument also does not adequately address the
rejection’s basis for relying on AFWAL 2060, which is for providing
filtration and dehumidification of intake air in a hypoxic system. The
apparent position of the Appellant that, in order to combine the references, a
person of ordinary skill must incorporate all the teachings of AFWAL 2060,
including any disclosure that the environment may be unbreathable, is
unpersuasive. As discussed supra, the evidence of record establishes that a
person of ordinary skill in the art of fire prevention and suppression would
have known that breathable hypoxic environments such as that provided in
Kotliar can be fire preventive and suppressive. Hence, any disclosure in
AFWAL 2060 of an unbreathable fire preventive and suppressive
environment does not negate the above-noted knowledge or skill of those in
the art with regard to providing a breathable fire preventive and suppressive
environment. Accordingly, it would have been obvious to a person of
ordinary skill to implement a fire preventive and suppressive environment as
a breathable environment or as unbreathable environment, depending on
whether the environment is to be occupied.
The Appellant also argues that the rejection fails to articulate a
rational reason why a person in the fire prevention and suppression art
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would look to athletic training equipment, or, were athletic training
equipment being considered, why the person of ordinary skill in the art
would look to systems disclosing that “a fire preventive and suppressive
atmosphere must be unbreathable.” Appeal Br. 16–17. However, these
arguments are unpersuasive for reasons discussed above, in that a person of
ordinary skill in the art would have known that a breathable hypoxic
environment such as that provided in Kotliar would be fire preventive and
suppressive, and Kotliar would have been reasonably pertinent to the
problem of preventing and suppressing fire. As also discussed above, the
assertion that a person of ordinary skill would have incorporated the
teachings of AFWAL 2060 to provide an unbreathable fire suppressive
environment is unpersuasive, and we again observe that AFWAL 2060 was
relied upon for its disclosure of filtration and dehumidification of air, and
not for any specifics as to the various fire preventive and suppressive
atmospheres disclosed therein.
Finally, the Appellant argued that the Examiner has not set forth an
adequate reason for adding a filter and for dehumidifying the air. Appeal Br.
17. However, as the Examiner explained, “[f]or information regarding how
to operate a nitrogen generator, including how to properly condition the
intake air, one skilled in the art reasonably would be expected to look to
literature describing the operation of a nitrogen generator. AFWAL 2060
describes the operation of a nitrogen generator.” RAN 6; see also id. (“a
person of ordinary skill in the art who seeks to create a low oxygen content
output using the nitrogen generator described in Kotliar ’652 would look to
AFWAL 2060 to determine the necessary input requirements to achieve that
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low oxygen content output.”). In that regard, we agree with the Requester
that filtering and dehumidifying the air would have improved the device of
Kotliar, which operates in a manner similar to that in AFWAL 2060, and we
further agree with the Requester that the claimed invention “us[es] a ‘known
technique’ (filtering and dehumidifying intake air to a hollow-fiber
membrane nitrogen generator, as taught in AFWAL 2060) to improve a
‘similar device’ (a hollow-fiber membrane nitrogen generator, as described
in Kotliar ’652) in ‘the same way’ (to properly condition the intake air).”
Resp. Br. 13; see also KSR Int’l v. Teleflex, Inc., 550 U.S. 398, 417 (2007)
(“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, in view of the above, we affirm the Examiner’s rejection of
independent claim 91. The Appellant did not submit arguments directed to
claims 92–94, which depend from claim 91. Accordingly, the Examiner’s
rejection of these dependent claims are affirmed as well.

CONCLUSIONS
The Examiner’s rejections of claims 91–94 are AFFIRMED.
Specifically,
1. The Examiner’s rejection of claims 91–93 under 35 U.S.C.
§ 103(a) as unpatentable over Kotliar in view of AFWAL 2060 is affirmed;
and
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2. The Examiner’s rejection of claim 94 under 35 U.S.C. § 103(a)
as unpatentable over Kotliar in view of AFWAL 2060 and Knight is
affirmed.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
91–93 103(a) Kotliar, AFWAL
2060
91–93
94 103(a) Kotliar, AFWAL
2060, Knight
94
Overall
Outcome
91–94

REQUESTS FOR EXTENSIONS OF TIME
Requests for extension of time in this inter partes reexamination
proceeding are governed by 37 C.F.R. §§ 1.956.

AFFIRMED

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.

kme
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New York, NY 10033

THIRD PARTY REQUESTER:
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