Ex Parte 6418752 et al

Patent Trial and Appeal Board

Feb 26, 2019

95001555 (P.T.A.B. Feb. 26, 2019)

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.
95/001,555 02/23/2011 6418752 6017-04 7309
15933 7590 02/26/2019
The Law Office of Roger S. Thompson
116 Pinehurst Ave
Suite D-14
New York, NY 10033
EXAMINER
SPAHN, GAY
ART UNIT PAPER NUMBER
3993
MAIL DATE DELIVERY MODE
02/26/2019 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 REQUEST FOR REHEARING

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The Requester requests reconsideration (hereinafter “Req.”) under 37
C.F.R. § 41.79 of our Decision mailed September 4, 2018 (hereinafter “the
’4837 Decision) reversing the Examiner’s Final rejection of the appealed
claims. The Requester asserts that in the ’4837 Decision, we
misapprehended or overlooked various issues, and requests the modification
thereof. We grant the Request to the extent that we consider the Requester’s
arguments infra, but DENY the request to modify the ’4837 Decision.
ANALYSIS
In the ’4837 Decision, the Board reversed the Examiner’s decision to
reject claims 91–94 as being obvious based on US Patent 5,799,652 to
Kotliar (Sept. 1, 1998), in combination with other secondary references.
’4837 Decision 14. The Board agreed with the Patent Owner that a proper
rejection has not been set forth by the Examiner because Kotliar is not
analogous art as it is directed to a “Hypoxic Room System and Equipment
for Hypoxic Training and Therapy at Standard Atmospheric Pressure”
(Kotliar, Title), while the claimed invention is directed to “Hypoxic Fire
Prevention and Fire Suppression System and Breathable Fire Extinguishing
Composition for Human Occupied Environments” (Title). Id. at 7.
In the Request for Rehearing, the Requester argues that the Patent
Owner has waived its principal argument that Kotliar is non-analogous
because it failed to present this argument to the Examiner previously during
the reexamination, and only raised the argument during the present appeal
after the appointment of a new counsel. Req. Rehr’g 15. The Requester
asserts that the Board overlooked the Patent Owner’s waiver in the Board’s
’4837 Decision. Req. Rehr’g 15–16.
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Conversely, the Patent Owner argues that some of the issues raised by
the Requester have already been addressed by the Board in the ’4837
Decision, and that the remaining issues raised have been waived because
they are newly raised in the Request for Rehearing. PO Comm. 2–3. The
Patent Owner also argues that the Requester waived any objections as to the
timeliness of the Patent Owner’s non-analogous argument because the
Requester failed to raise it earlier. PO Comm. 9.
The present appeal stems from the Federal Circuit’s decision vacating
and remanding the Board’s Decision in Appeal 2013-008166 as to the
Requester’s Cross-Appeal. ’4837 Decision 2–3. Upon receipt of the court’s
decision, the Board remanded the reexamination back to the Examiner.
Order Remanding to Examiner (Aug. 25, 2015). During the subsequent
reexamination after the Board’s remand, the Examiner adopted specific
rejections proposed by the Requester as to claims 91–94, which are now the
subject of present Appeal No. 2018-004837. The Patent Owner, as the
appellant, appealed the Examiner’s rejection to the Board, which then
reversed the rejection. ’4837 Decision 14.
The Requester appears to be correct that the Patent Owner’s principal
argument to the effect that Kotliar is non-analogous art was not explicitly
presented to the Examiner during this, or the prior appeal, but instead, was
raised in its Appeal Brief.1 However, it is not apparent how submission of

1 We note that the Patent Owner did argue that:
Kotliar ’652 describes providing hypoxic air inside a training or therapy
room. Kotliar ’652, 2:5-10. One of ordinary skill in the art would not
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such a previously unpresented argument is precluded by our rules under 37
C.F.R. § 41.67, and the Requester points to no authority holding that waiver
applies in such a situation. In that regard, we observe that the Examiner
actually had an opportunity to address this argument in the Examiner’s
Answer, but did not do so.
In contrast, the Requester’s Respondent Brief filed in response to the
Patent Owner’s Appeal Brief did address the Patent Owner’s non-analogous
argument, but did so based on an erroneous understanding of KSR, which the
Board rejected. ’4837 Decision 8–11. The Requester’s Respondent Brief
did not mention, much less object to, the fact that the Appellant’s principal
non-analogous art argument was not previously presented to the Examiner.
The prior Appeal 2013-008166 does not support the Requester either, in that
the Examiner declined to adopt the proposed rejections of the present claims,
determining that the proposed rejections failed to raise a substantial new
question of patentability.
Accordingly, in view of the above considerations, we decline to find
waiver with respect to the Patent Owner’s arguments submitted in its Appeal
Brief.

understand Kotliar ’652’s discussion of a hypoxic training or therapy
room to teach providing a hypoxic environment . . . that requires a fire
safe environment. See June 20, 2011 Decl. of John Brooks, ¶ 13.
Response to Action Closing Prosecution 16 (filed May 27, 2016).

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The Patent Owner is also correct that in the Request for Rehearing,
the Requester has raised various new points and issues. PO Comm. 2–3. In
particular, the Requester’s certain arguments directed to whether Kotliar is
analogous, and relevance of KSR have been addressed. ’4837 Decision 7–
11. The remaining arguments in support of the Examiner’s rejection
(including other bases for finding that Kotliar is analogous, alleged
admission by the Patent Owner, original prosecution, Board’s prior
affirmance, and expanded interpretation of KSR) are all new points and
issues that the Requester raises for the first time in its Request for
Rehearing.
However, the pertinent rules are clear that “[t]he request for rehearing
must state with particularity the points believed to have been
misapprehended or overlooked in rendering the Board’s opinion reflecting
its decision. Arguments not raised in the briefs before the Board and
evidence not previously relied upon in the briefs are not permitted in the
request.” 37 C.F.R. § 41.79(b)(1). While the Requester states in its Request
for Rehearing (Req. Rehr’g 3–5) that the Board misapprehended or
overlooked various points in the ’4837 Decision, it is not apparent how the
Board misapprehended or overlooked these new points, arguments, and
evidence that were not previously relied upon in the briefs. Indeed, the
Request for Rehearing does not point us to where the various points,
arguments, and evidence now relied upon were previously relied upon in its
briefs so as to be brought to the attention of the Board.
Therefore, the Request for Rehearing is improper and hereby:
DENIED
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Nevertheless, we are mindful of the “long and tortured procedural
history” of the present inter partes reexamination, which arose from a
request filed eight years ago on February 23, 2011 by the Requester. PO
Comm. 1–2; see also Rehr’g Req. 1–2; ’4837 Decision 2. In that regard, we
are also mindful that “[a]ll inter partes reexamination proceedings, including
any appeals . . . will be conducted with special dispatch within the Office.”
37 C.F.R. § 1.937(a). As noted, the present appeal stems from the Federal
Circuit’s decision vacating and remanding the Board’s Decision in Appeal
2013-008166 as to the Requester’s Cross-Appeal, the court disagreeing with
the Board’s understanding of the statute and the rules governing inter partes
reexaminations, and cross-appeals in particular. Airbus S.A.S. v. Firepass
Corp., 793 F.3d 1376, 1379–80 (Fed. Cir. 2015).
Therefore, in the event that there is an appeal of the present decision
to the Federal Circuit, and the court determines that we improperly denied
the Request for Rehearing as belatedly relying on new points, arguments,
and evidence in violation of the rules, we address the substantive arguments
of the Requester below for the purpose of having a more complete record for
appeal and to facilitate ultimate disposition by the court.

Issue 1: Field of Endeavor
The Requester initially argues that the Board did not employ a proper
analysis in finding that Kotliar is not within the field of endeavor of the ’752
Patent. Req. Rehr’g 5–6. The Requester maintains that Kotliar is within the
same field of endeavor of the ’752 Patent because “the field of endeavor is
not fire prevention and suppression generally” (Req. Rehr’g 7), but instead:
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(1) the specification and claims of the ’752 patent demonstrate
that the field of endeavor of the ’752 patent is the production of
breathable hypoxic air that is fire-preventive and fire-
suppressive; and (2) Kotliar is within this field because it
discloses embodiments with “essentially the same function and
structure,” including, in particular, a nitrogen generator that
produces breathable hypoxic air that one of ordinary skill would
have known is fire-preventive and fire-suppressive.
Req. Rehr’g 6; see also id. at 7.
The Requester cites to numerous passages in the ‘752 Patent in
support of its argument. Req. Rehr’g 6. According to the Requester, “[t]his
knowledge of one of ordinary skill [that breathable hypoxic air is fire-
preventive and fire-suppressive] is demonstrated by several undisputed
findings by the [E]xaminer” as to four references that “teach that a
breathable hypoxic environment is fire-preventive and fire-suppressive.”
Req. Rehr’g 8, 9.
This issue of whether Kotliar is within the same field of endeavor has
been addressed, and the Board has considered the scope of disclosure of the
’752 Patent. ’4837 Decision 7–8. Indeed, each of the passages of the ’752
Patent noted by the Requester in its Request for Rehearing focuses on a
system that prevents or suppresses fire, thereby undermining the Requester’s
own argument.
We also find unpersuasive, the Requester’s assertion that Kotliar is
within the same field of endeavor because it includes “a nitrogen generator
that produces breathable hypoxic air that one of ordinary skill would have
known is fire-preventive and fire-suppressive.” Req. Rehr’g 6. The
Requester, while referring to a person of ordinary skill throughout the
Request for Rehearing, omits that such a person is of ordinary skill in an art.
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As is clear from the evidence, and as already discussed in the ’4837
Decision, the field of endeavor, that is, the art in which the hypothetical
person would have been of ordinary skill, is that of fire prevention and fire
suppression. The rejection proposed by the Requester and adopted by the
Examiner does not establish that a person of ordinary skill in the field of
hypoxic training or therapy disclosed in Kotliar has the asserted knowledge
pertaining to fire prevention and suppression.
The Requester’s position is that the field of endeavor is “the
production of breathable hypoxic air that is fire-preventive and fire-
suppressive.” Req. Rehr’g 7. We do not understand where the record
supports that the rejections proposed and adopted are premised on, or
adequately establishes the existence of, such a field of endeavor. The actual
rejection that was proposed and adopted, which is the subject of the present
appeal, is that a person of ordinary skill in the art would begin with the
hypoxic training room of Kotliar, and apply the teachings regarding a filter
and reduced humidity disclosed in AFWAL 2060 (’4837 Decision 6; RAN
2–32).

2 The principal rejection is:
2. Ground #34 The proposed rejection of claims 91-93 as being
obvious over the Kotliar ’652 Patent in view of AFWAL 2060 is
adopted.
Kotliar ’652 patent discloses a “nitrogen generator.”
Specifically, Kotliar ’652 patent discloses an array of different
permeable membrane and molecular sieve units, including various
types of materials that can be used. See col. 6, line 8 - col. 7, line
32. Kotliar ’652 patent explains the operation of a membrane unit:
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“The inlet of the separation unit receives compressed air from
conduit 52, and separates the air across the membrane and delivers
the oxygen-depleted gas through the outlet to conduit 55.” See col.
6, lines 11-13. Kotliar ’652 patent also provides an extensive
disclosure of the operation of a “molecular sieve” unit. See col. 6,
line 56 - col. 7, line 32. Kotliar ’652 patent also discloses
“computer control for regulating the oxygen content in said
internal environment.” Specifically, Kotliar ’652 patent states, “the
hypoxic room must be equipped with an oxygen-content sensor 22
and an oxygen-depletion alarm 21 ... The oxygen-content sensor
constantly measures the oxygen content in the room and transmits
the data to a computerized control unit (not shown) which controls
the performance of the hypoxicator 45 to achieve and maintain
desired air parameters in accordance to training or therapy
protocol.” See col. 4, lines 9-19.
The claimed invention differs only in the inclusion of a “filter”
and an intake gas mixture with “reduced humidity”.
AFWAL 2060 discloses a nitrogen generator with a “filter” and
a “water extractor,” which de-humidifies incoming air prior to
separation. Figure 3 demonstrates these elements. AFWAL 2060
states, “Referring to Figure 3, the inlet air (simulated air cycle
machine outlet) first flows through a water extractor which is
required to remove liquid water under certain high dew point
conditions. Next is a particulate filter to prevent clogging of the
ASM’s.” AFWAL 2060, Vol. Ill, Part I, pg. 5; see also Vol. Ill,
Part III, pgs. 24-27 (Figs. 4, 5).
It 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 2–3 (mailed March 31, 2017).

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The Requester’s argument changes the actual rejection to be initially
based on some knowledge of “one of ordinary skill” in a purported field of
endeavor of “production of breathable hypoxic air that is fire-preventive and
fire-suppressive” so as to assert that Kotliar is within the same field of
endeavor. That is not the rejection proposed, adopted, or reviewed on
appeal. In that regard, this rephrasing or restructuring of the rejection places
the solution first, and equates that to the field of endeavor and/or derives the
field of endeavor based on hindsight reasoning.
The Requester also argues that “Kotliar is within this field of
endeavor because it discloses embodiments that have the ‘essentially the
same function and structure’ as the embodiments of the ’752 [P]atent,
including the system recited in claim 91.” Req. Rehr’g 7 (citing In re
Deminski, 796 F.2d 436, 442 (Fed. Cir. 1986) (“cited pumps and
compressors have essentially the same function and structure: they move
fluids by means of a double-acting piston, a cylinder, and valves.[]
Consequently, the field of endeavor is the same for an inventor of either a
pump or a compressor of the double-acting piston type.”)). However, in our
view, Deminski is distinguishable from the present case in that, in Deminski,
the similarity in the function of the references applied in the rejection was
clear, i.e., pumps and compressors, by their very nature and definition, are
devices that move fluids. In contrast, the presently applied rejection does not
establish that the function of a room for training athletes and therapy is similar
to the function of a room that prevents/suppresses fire, or that such rooms
innately require the function of generating a hypoxic air that is also fire-
preventive or fire-suppressive, as well as being breathable.
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The Requester also cites to other cases for support. Req. Rehr’g 5–6
(citing In re Bigio, 381 F.3d 1320, 1326 (Fed. Cir. 2004); In re Ellis, 476 F.2d
1370 (C.C.P.A. 1973). In Bigio, the majority of the court agreed with the
Board that the invention related to the “field of hand-held brushes having a
handle segment and a bristle substrate segment.” 381 F.3d at 1325. The
majority of the court found that because of the structural similarities between a
toothbrush and a hairbrush, there was substantial evidence to support the
Board’s finding that a toothbrush was within the same field of endeavor as
hairbrushes because a toothbrush can function to brush facial hair. Id.
However, the functional similarities between a hand-held toothbrush and a
facial hairbrush are, in our view, much closer than any functional similarity
between an athletic training/therapy room and a fire preventive/suppressive
room.
Finally, Ellis appears to be less relevant. In Ellis, the invention was
directed to a floor grating, and the court found that “the structural
similarities and the functional overlap between pedestrian gratings and shoe
scrapers of type shown by Trixner are readily apparent. We conclude that, at
the very least, the arts to which Schulz and Trixner patents belong are
reasonably pertinent to the art with which appellant’s invention deals.” 476
F2.d. at 1372. Accordingly, Ellis appears to have relied principally on the
second prong of the test for analogousness to conclude that Trixner was
analogous art, whereas Requester’s arguments citing this decision are
directed to the first prong.
The Requester also cites Randall Mfg. v. Rea, 733 F.3d 1355 (Fed.
Cir. 2013), in asserting that the Board erred in not considering four
references not relied upon in the pertinent rejections of claims 91–94. As
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noted, the Requester asserts that these four references establish that “one of
ordinary skill would have known that [] breathable hypoxic air is fire-
preventive and fire-suppressive.” Req. Rehr’g 8, 9. However, Randall is
distinguishable in that there was no dispute or issue as to whether the main
reference applied was in the same field of endeavor (i.e., bulkhead stowage),
or whether the various references not relied on were within the same field of
endeavor or reasonably pertinent to a person of ordinary skill in that art.
Such is not the case here, and the Requester’s assertions as to some “one of
ordinary skill” is unpersuasive as discussed above.3
We agree with the Patent Owner that the “Requester now offers a new
analysis of how it wished it had made its initial rejection seven years, two
appeals, one trip to the Federal Circuit and countless amendments and
arguments ago. However, the actual rejection on appeal is what must be
evaluated.” PO Comm. 7. As already explained,
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.

3 We further note that subsequent to the remand by the court in Randall, the
Board entered a new ground of rejection specifically relying on the pertinent
references previously not relied on to reject the claims. See Decision After
Remand, Appeal 2012-005371, pgs. 15–16 (mailed August 8, 2014).
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’4837 Decision 12.
In view of the above, we maintain the finding that Kotliar is not
within the same field of endeavor as the ’752 Patent, and accordingly, the
Examiner has not set forth an adequate prima facie case of obviousness.

Issue 2: Reasonably Pertinent to Problem Addressed
The Requester also argues that under the second prong of the
analogous art test, Kotliar is reasonably pertinent to the problem addressed
by the ’752 Patent. Req. Rehr’g 10–11. Specifically, the Requester argues
that the ’752 Patent addresses three problems to which Kotliar is reasonably
pertinent. In addition to the general problem of fire prevention and
suppression (Req. Rehr’g 114), the Requester asserts that the ’752 Patent
also addresses the problem of “(a) producing breathable hypoxic air that is
fire-preventive and fire-suppressive; and (b) what oxygen depletion
equipment to use to produce breathable hypoxic air that is fire-preventive
and fire-suppressive.” Req. Rehr’g 12–13. In that regard, the Requester
argues that “[o]ne of ordinary skill, seeking to solve either or both of these
problems, and knowing that breathable hypoxic air is fire-preventive and
fire-suppressive, would have considered prior art that discloses oxygen
depletion equipment that produces breathable hypoxic air to be reasonably

4 The Requester characterizes the ’4837 Decision as stating that inherency is
irrelevant to obviousness. Req. Rehr’g. 11. However, the Board made no
such finding, but merely highlighted the fact that the rejections at issue are
based on obviousness, and that it is aware that under anticipation,
analogousness of a reference is immaterial. ’4837 Decision 13 fn3.
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pertinent to these problems,” and further points to numerous passages in the
’752 Patent for support. Req. Rehr’g 12–13.
These arguments of the Requester are essentially similar to those
addressed above in that they are not based on the actual rejection applied,
and are principally based on hindsight that begins with the inventor’s
solution to the problem confronting the inventor. The actual rejection
applied by the Examiner as reproduced above begins with “Kotliar ’652
patent discloses a ‘nitrogen generator,’” and proceeds to find that the
nitrogen generator discloses various limitations of claim 91. RAN 2–3.
However, it is unclear upon what basis the Examiner begins the rejection
analysis with a “nitrogen generator.” Without the hindsight benefit of the
Patent Owner’s disclosure and solution, Requestor fails to show how a
“nitrogen generator” is reasonably pertinent to the problem of fire
prevention and fire suppression. As explained,
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; 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.
’4837 Decision 13–14.
As already explained, “the rejection at hand does not provide or explain
the requisite correlation between the fire prevention/suppression problem and
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Kotliar, which pertains to human therapy, wellness, and physical training.”
’4837 Decision 8. See In re Natural Alternatives, LLC, 659 Fed.Appx. 608,
614 (Fed. Cir. 2016) (“the examiner and the Board both sought to rely on Daly
without explaining how the objective of balancing and stabilizing tires using
tire ballast would be reasonably pertinent to the objective of deicing and
preventing ice formation on road surfaces.”).
The Requester’s assertion of additional problems being addressed is
similarly unpersuasive and appears to be contrived based on hindsight. In that
regard, as to the portions of the ’752 Patent cited by the Requester, we agree
with the Patent Owner that “the passages cited by Requester clearly couch
their explanation of these Objects and Description in the context of
explaining the ‘invention’, i.e., the solution to the problem of creating an
improved fire preventive/suppressive environment. They do not support the
conclusion that they state the problem that the inventor attempted to solve.”
PO Comm. 8. In summary, we fail to see how Kotliar is pertinent to the
problem being confronted by the inventor as required under the second prong
of the analogous art analysis. In our view, the Requester’s analysis as to what
is reasonably pertinent begins with the inventor’s solution in order to assert
that Kotliar is analogous art, an analysis which is fundamentally based on
improper hindsight reasoning.

Issue 3: Admission
The Requester argues that “the inventor admitted that Kotliar is
pertinent prior art in the ’752 patent specification, which precludes Patent
Owner from arguing that Kotliar is not analogous art in this appeal.” Rehr’g
Req. 13–14 (citing In re Schreiber, 128 F.3d 1473, 1479 (Fed. Cir. 1997)
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(“we note that Schreiber acknowledges in the specification that the prior art
pertinent to his invention includes patents relating to dispensing fluids.”)).
However, we agree with the Patent Owner that the inventor’s
statement that Kotliar is “related in part” to the invention of the ’752 Patent
is not dispositive because it “does not constitute an admission that Kotliar
falls in an art analogous to that of the ’752 Patent as would be understood by
one of ordinary skill in the art of fire prevention and suppression.” PO
Comm. 9–10. While Kotliar may be considered by the inventor to be related
to the solution devised by the inventor, that does not mean that the Patent
Owner admitted that Kotliar is analogous art.
The Requester also relies on dicta in Schreiber. 128 F.3d at 1479
(declining to consider the argument that secondary reference is non-
analogous art, and stating “[e]ven if we were to consider that argument . .
..”). In addition, while the nature of Schreiber’s acknowledgment in the
specification was sufficient for the court to have concluded that Schreiber
“acknowledge[d] in the specification that the prior art pertinent to his
invention includes patents relating to dispensing fluids” (id.), it is not
entirely clear what Schreiber actually acknowledged in its specification.
Accordingly, we do not view Schreiber to be dispositive.

Issue 4: Original Prosecution
The Requester also argues that “the [E]xaminer found that Kotliar is
pertinent prior art during the original prosecution, [which] the applicant
never disputed.” Req. Rehr’g 14. However, as pointed out by the Requester
itself, the Examiner stated that Kotliar was “not relied upon.” Req. Rehr’g
14. Accordingly, we agree with the Patent Owner that “[s]ince Kotliar was
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not applied during the original prosecution, the applicant had no reason to
say anything about it.” PO Comm. 10–11.

Issue 5: Board’s Prior Affirmance
The Requester argues that “[w]hen the Board affirmed the
obviousness rejections of claims 45-50 based on Kotliar in the first appeal,
the Board implicitly found that Kotliar is analogous art to the ’752 patent;
otherwise, the Board would not have affirmed the rejections.” Req. Rehr’g
15. The Requester’s reads too much into the Board’s earlier decision, and
overlooks the fact that the Board decision is based on, and relies on, the
arguments submitted by the parties. 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.”); see also In re Jung, 637 F.3d 1356, 1365
(Fed. Cir. 2011) (“it has long been the Board’s practice to require an
applicant to identify the alleged error in the examiner’s rejections”); Ex
Parte Frye, 94 USPQ2d 1072, 1075–76 (BPAI 2010, precedential)(“The
panel then reviews the obviousness rejection for error based upon the issues
identified by appellant, and in light of the arguments and evidence produced
thereon.”). The Requester’s assertion of an implicit finding as to Kotliar is
not well founded.

Issue 6: Waiver
The Requester argues that the Patent Owner waived its argument that
Kotliar is non-analogous because it failed to present this argument
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previously. Req. Rehr’g 15. This argument has already been addressed
supra. The Requester also requests that if the Board does not find waiver,
“it should withdraw its reversal of the rejections and remand to the
[E]xaminer so that the parties and the [E]xaminer can address this new
analogous art argument for the first time.” Req. Rehr’g 16. However, as
discussed supra, the Examiner, in fact, did have the opportunity to address
such arguments in the Examiner’s Answer. Moreover, the Requester did
address the non-analogous argument in its Respondent Brief. Under such
circumstances, we decline to remand the case to the Examiner.

Issue 7: Expansion of KSR
The Requester argues that “the principles that govern whether one of
ordinary skill would combine prior art set forth in KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398 (2007), should apply to the closely related issue of
whether one of ordinary skill would find prior art to be pertinent.” Req.
Rehr’g 5, 16–18. The Requester’s prior arguments based on KSR have
already been addressed. ’4837 Decision 8–11. We further view the
Requester’s argument as urging us to expand the scope of KSR’s holding,
and we decline to do so.

In view of the above, we DENY the Request to modify our original
Decision.

DENIED

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

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