Ex Parte 7,207,392 et al

Patent Trials and Appeals Board

Sep 27, 2013

95001553 - (D) (P.T.A.B. Sep. 27, 2013)

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.
95/001,553 02/22/2011 7,207,392 7289
34313 7590 09/30/2013
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
09/30/2013 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 2013-008174
Reexamination Control No. 95/001,553
Patent 7,207,392 B2
Technology Center 3900
____________________

Before JOHN C. KERINS, DANIEL S. SONG, and
MICHAEL J. FITZPATRICK, Administrative Patent Judges.

FITZPATRICK, 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”). Original claims 14 and 15 and new claims
17-28 are subject to the reexamination and finally rejected. RAN
1
1.
The Patent Owner, FirePASS Corporation, appeals under 35 U.S.C.
§§ 134(b), 306, and 315(a) (2002) from the rejection of claims 14, 15, and
17-28. See PO App. Br. 1-2. The Requester cross-appeals under 35 U.S.C.
§§ 134(c) and 315(b) from the Examiner’s non-adoption of certain proposed
rejections of the same claims. See Req. App. Br. 4-5.
We have jurisdiction of the appeal under 35 U.S.C. §§ 134, 306, and
315. An oral hearing with counsel for the Patent Owner and Requester was
held before the Patent Trial and Appeal Board on September 18, 2013, a
transcript of which will be entered into the electronic record in due course.

1
The following abbreviations for certain documents in the record are used
herein as follows:
1. RAN = Right of Appeal Notice (Jan. 12, 2012)
2. PO App. Br. = Patent Owner’s Appeal Brief (Apr. 13, 2012)
3. Req. Resp. Br. = Requester’s Respondent Brief (May 14, 2012)
4. PO Reb. Br. = Patent Owner’s Rebuttal Brief (June 21, 2012)
5. Req. App. Br. = Requester’s Cross-Appeal Brief (Apr. 27, 2012)
5. PO Resp. Br. = Patent Owner’s Respondent Brief (May 29, 2012)
6. Req. Reb. Br. = Requester’s Rebuttal Brief (June 21, 2012)
Also, because the Examiner’s Answer (May 21, 2012) merely incorporates
the RAN by reference, we cite to the RAN herein.
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For the reasons discussed below, we affirm-in-part with respect to the
Patent Owner’s Appeal and do not reach the Requester’s Cross-Appeal.
THE INVENTION
The ’392 Patent issued to Igor J. Kotliar (Apr. 24, 2007), and is
assigned to Patent Owner. PO App. Br. 1.
The ’392 Patent relates to “providing low-oxygen (hypoxic)
environments in computer rooms and other human occupied facilities in
order to prevent and suppress fire before it starts.”
2
Col. 1, ll. 28-31. The
’392 Patent discloses providing hypoxic fire-extinguishing compositions for
use in human occupied environments that, in addition to being hypoxic, are
also either hypercapnic (i.e., greater than 0.035% CO2) or hypocapnic (i.e.,
less than 0.035% CO2).
3
Col. 2, ll. 28-33; col. 5, ll. 20-26. The claims on
appeal relate to the latter, hypoxic hypocapnic compositions.
Claims 14, 17, and 22 are independent with claim 14 being
representative and reproduced below.
14. A breathable hypoxic hypocapnic fire-preventative
composition for use in an enclosed environment,
said composition being produced by the dilution of an
internal atmosphere with hypocapnic hypoxic air and mixing it

2
Oxygen makes up about 21% of normal atmospheric air. Lambertsen col.
5, ll. 3-4.
3
Carbon dioxide makes up about 0.035% of normal atmospheric air. ’392
Patent col. 5, ll. 20-21.
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with ambient atmospheric air introduced into said enclosed
environment;
said composition being a blend of hypoxic hypocapnic
air and ambient atmospheric air for current location and having
oxygen content in a range greater than 9% to 17% and carbon
dioxide content below 0.035%;
said composition being used as a fire suppressive
atmosphere in computer rooms, warehouses and other occupied
and non-occupied enclosed environments.
Req. App. Br. Claims Appx., p. 1-2.

REJECTIONS
Patent Owner appeals the Examiner’s rejections as follows:
1. Claims 14 and 15 under 35 U.S.C. § 102(b) as anticipated by US
Patent 4,807,706 to Lambertsen et al. (Feb. 28, 1989) (“Lambertsen”).
2. Claims 17-21 under 35 U.S.C. § 305 as enlarging the scope of the
claims of the patent being reexamined.
3. Claims 21, 26, and 28 under 35 U.S.C. § 112, ¶ 2 (2002) as indefinite.
4. Claims 17, 18, 21/17-18, 22, 23, 26/22-23, 27/22-234 and 28/22-23
under 35 U.S.C. § 102(b) as anticipated by Lambertsen.

4
Although claim 27 was omitted in the first sentence of Ground 4, that
omission appears to be a typographical error, as it is clear from the
discussion of Ground 4 that claim 27 is included. RAN 5.
The Patent Owner agrees. PO App. Br. 18, n.4.
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5. Claims 19, 20, 21/19-20, 24, 25, 26/24-25, 27/24-25, and 28/24-25
under 35 U.S.C. § 103(a) as unpatentable over Lambertsen.
REQUESTER-PROPOSED REJECTIONS NOT ADOPTED
Requester appeals the Examiner’s refusal to adopt additional
rejections as follows:
1. Claims 14 and 15 under 35 U.S.C. § 102(b) as anticipated by each of
U.S. Patent No. 5,799,652 (the “’652 Patent”), U.S. Patent No.
6,314,754 (the “’754 Patent”), U.S. Patent No. 6,418,752 (the “’752
Patent”), and U.S. Patent No. 6,334,315 (the “’315 Patent”)
(collectively, the “Kotliar prior art references”).
2. Claims 17-26 and 28 under 35 U.S.C. § 102(b) as anticipated by each
of the “Kotliar prior art references”.
3. Claim 27 under 35 U.S.C. § 102(b) as anticipated by the ’315 Patent.
4. Claim 27 under 35 U.S.C. § 103(a) as unpatentable over the ’652
Patent, the ’754 Patent and/or ’752 Patent in view of the ’315 Patent.
ANALYSIS OF PATENT OWNER’S APPEAL
As an initial matter, the Patent Owner argues that the instant
proceeding is not ripe for appeal to the Board because of a Patent Owner
amendment and declarations that have not been entered and which were the
subject of a February 13, 2012, petition by the Patent Owner. PO App.
Br. 3. That petition, however, subsequently was denied. Decision on
Petition (mailed June 5, 2012).
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The Non-Prior Art Rejections: Claims 17-21, 26, and 28
(Grounds 2 and 3)
The Examiner rejected claims 17-21 under 35 U.S.C. § 305 as
enlarging the scope of the claims of the patent being reexamined and claims
21, 26, and 28 under 35 U.S.C. § 112, ¶ 2, as indefinite. RAN 4-5. On
appeal, the Patent Owner does not argue against those rejections. PO App.
Br. 16-18. Rather, the Patent Owner merely discusses proposed -- but
unentered -- amendments that purportedly would obviate those rejections.
Id.
Because we are not apprised of any error in those rejections, we
sustain them.
The Prior Art Rejections: Claims 14, 15, and 17-28
(Grounds 1, 4, and 5)
The Examiner rejected each of claims 14, 15, and 17-28 on account of
Lambertsen, which is directed to “preventing, controlling and extinguishing
fires in a confined atmospheric space (an atmospheric space is one
containing a gas mixture which will support animal life) while maintaining
the confined space habitable for mammalian life, in particular, human life.”
Lambertsen col. 2, ll. 36-42; see also Abstract.
Lambertsen discusses several experiments that were performed to
measure the motor skills of rats exposed to various hypoxic mixtures of
oxygen, nitrogen, and carbon dioxide, including compositions described in
Lambertsen as being “0% CO2”. RAN 3 (citing Lambertsen col. 8, ll. 35-46;
Figs. 2, 10). Lambertsen states that the tested hypoxic gas mixtures were
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produced using a mixing chamber, to which supplies of air, nitrogen, and
carbon dioxide were provided “through separate lines.” RAN 3 (citing
Lambertsen col. 7, ll. 47-50). Also, Lambertsen states that the tested
hypoxic mixtures extinguished flames in less than 20 seconds. RAN 3
(citing Lambertsen col. 15, ll. 15-19; Fig. 10).

A. Ground 1
Claims 14 and 15 were rejected as anticipated by Lambertsen.
RAN 2-4. The Patent Owner argues these claims as a group. PO App.
Br. 4-16. In accordance with 37 C.F.R. § 41.37(c)(1)(vii)(2008), we select
independent claim 14 as representative of the group, and we will treat claim
15 as standing or falling with representative claim 14.
Claim 14 is directed to a composition that has “oxygen content in a
range greater than 9% to 17% and carbon dioxide content below 0.035%.”
Lambertsen expressly refers to test breathing gas mixtures of “12% O2, 0%
CO2 in N2” and “10% O2, 0% CO2 in N2” (Lambertsen col. 8, ll. 39-40), and
the Patent Owner does not dispute that it does. PO App. Br. 4-5. The Patent
Owner argues, however, that Lambertsen’s use of the term “0% CO2” refers
not to the final amount of CO2 in any test mixture but rather to the amount of
CO2 that is mixed with air and nitrogen gas to make the tested mixtures. Id.
For example, in creating the test mixture of “10% O2, 0% CO2 in N2” (see
Lambertsen col. 8, l. 40), the Patent Owner argues that air and nitrogen gas
are provided to the mixing chamber through their separate and respective
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supply lines but that no carbon dioxide is provided through its separate
supply line. Id. The Patent Owner also points out that air contains 0.035%
CO2 and that Lambertsen does not teach removing the 0.035% CO2 from the
air prior to mixing it with the nitrogen gas to form the “0% CO2” mixtures.
Id.
In response, the Requester points out that Lambertsen explicitly
describes hypoxic mixtures that are “0% CO2”. Req. Resp. Br. 3. It is not
clear, however, that Lambertsen literally means zero CO2. For example, at
one point, Lambertsen describes “normal air” as “21% O2, 0% CO2” despite
the fact that normal air contains some (i.e., 0.035%) carbon dioxide.
Lambertsen col. 13, ll. 58-59.
The Requester additionally argues, however, that even if “0% CO2”
refers only to the amount of carbon dioxide added when making the hypoxic
gas mixtures (as argued by the Patent Owner), Lambertsen still teaches
hypoxic mixtures having “carbon dioxide content below 0.035%,” as
required by claim 14. Req. Resp. Br. 4. In that regard, the Requester points
out that, even though carbon dioxide-containing air is used,
5
the resulting

5
Requester also points out that Lambertsen -- in addition to teaching mixing
air (which contains carbon dioxide) with nitrogen gas -- also teaches mixing
pure oxygen gas (which does not contain carbon dioxide) with nitrogen gas.
Req. Resp. Br. 5 (citing Lambertsen col. 12, l. 38 (“Mixtures of O2 in N2,
With and Without Added Carbon Dioxide.”). The Patent Owner does not
respond to this argument. See generally PO Reb. Br.
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hypoxic mixtures of air and nitrogen gas necessarily contain less than
0.035% carbon dioxide. This is so, Requester explains, because, as the
nitrogen gas dilutes the oxygen content of the air (down from approximately
21%), it likewise and proportionally dilutes the carbon dioxide content of the
air (down from 0.035%). Req. Resp. Br. 4 (citing Declaration of N. Albert
Moussa (“Moussa Decl.”) filed July 20, 2011) ¶ 8).
For example, Requester argues that the test mixture of “10% O2, 0%
CO2 in N2” (see Lambertsen col. 8, 1. 40) “is a mix of 47.6% air and 52.4%
pure nitrogen (in order to dilute the oxygen content down from ambient,
which is 21 %, to 10%)” and that “[t]he resulting carbon dioxide content of
the composition is therefore 0.0167%.” Req. Resp. Br. 4 (citing
Supplemental Declaration of N. Albert Moussa (“Supp. Moussa Decl.”) filed
October 12, 2011
6
) ¶ 10). We find persuasive Requester’s argument, and
supporting declaration testimony, that when mixing air and nitrogen gas to
dilute the oxygen content to, for example, 10% or 12%, as described in
Lambertsen, the carbon dioxide content is necessarily diluted as well and to
a level below 0.035%.
We have considered the Patent Owner’s declaration evidence also, but
it is not persuasive. In particular, the Patent Owner asserts that a person of

6
An identical (save for its execution date) “Supplemental Declaration” by
N. Albert Moussa appears to have been filed on December 1, 2011.
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ordinary skill in the art would recognize that Lambertsen does not disclose
“carbon dioxide content below 0.035%.” PO App. Br. 5 (citing Declaration
of John Brooks (“Brooks Decl.”) filed June 20, 2011) ¶ 11). Yet, that
conclusion by Mr. Brooks is expressly and exclusively based on alternative
Lambertsen disclosures of “adding CO2,” “elevating carbon dioxide
concentration,” “addition of CO2,” and “a carbon dioxide concentration in
the range of 2-5 vol %” for the benefit of increasing the safety of some
hypoxic environments for humans. See Brooks Decl. ¶ 11 (quoting
Lambertsen col. 5, ll. 37-40; col. 6, ll. 46-54; col. 11, ll. 17-19; col. 16, ll.
17-23). The cited testimony of Mr. Brooks does not account for, or opine
on, the Lambertsen teachings involving breathable hypoxic environments
having “0% CO2.” Hence, it is not persuasive.
The Patent Owner argues that Lambertsen cannot necessarily disclose
carbon dioxide content below 0.035% because the gas analyzers employed
by Lambertsen, which have an error rate within 0.2%, would not prove it.
PO App. Br. 5. That argument is not persuasive. Requester already has
demonstrated that the carbon dioxide content of the Lambertsen mixtures of
air and nitrogen gas is necessarily lower than 0.035% because air alone has
0.035% carbon dioxide and the added nitrogen gas dilutes it. That
Lambertsen may fail to disclose a sufficiently sensitive gas analyzer capable
of measuring such a small amount does not affect the fact that the carbon
dioxide content of the air is necessarily diluted down from 0.035% by the
addition of the nitrogen gas.
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The Patent Owner next contends that “the dilution of the carbon
dioxide concentration in ambient air through introduction of inert gases [e.g.,
nitrogen gas] (without added carbon dioxide) would be offset by the
incremental output of carbon dioxide produced by the rats.” PO App. Br. 6
(citing Lambertsen col. 8, ll. 4-6; col. 8, ll. 16-20). The excerpts from
Lambertsen to which the Patent Owner cites, however, do not quantify, or
even mention, the carbon dioxide exhaled by the rats. This is not surprising
as Lambertsen is directed to providing fire preventing, controlling, and
extinguishing environments that are breathable, and the rats are used to
verify the breathability of those environments. Lambertsen is not directed to
a breathable environment in which carbon dioxide exhaled by rats forms part
of the breathable environment.
Moreover, Lambertsen states that the gas mixtures were achieved in
the compartment very quickly, during which a vent was open to allow a
“rapid flush” of the air initially present in the compartment as the supply of
new air and nitrogen gas displace it. Lambertsen col. 7, ll. 52-57. We are
not persuaded that the rat exhalation could sustain the carbon dioxide level
at 0.035% during the rapid flush.
Further, Lambertsen does not disclose “0% CO2” compositions in
enclosed environments only when living, breathing rats are present. Indeed,
Lambertsen identifies further tests in which “[f]lame [was] extinguished in
less than 20 seconds in oxygen concentrations, with and without carbon
dioxide, of less than 12 vol %.” Lambertsen col. 15, ll. 15-19.
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Claim 14 recites that the claimed composition is “produced by the
dilution of an internal atmosphere with hypocapnic hypoxic air and mixing it
with ambient atmospheric air introduced into said enclosed environment[.]”
The Patent Owner argues that Lambertsen does not teach the recited method
of producing the claimed composition and “these two methods are not the
same methods of dilution.” See PO App. Br. 7-11 (arguing Lambertsen’s
dilution with nitrogen gas is not dilution with hypocapnic hypoxic air); see
also id. at 11 (arguing that Lambertsen “does not disclose or suggest diluting
(flushing) the atmosphere in that compartment with a hypocapnic hypoxic
air as a single prefabricated product as it has been claimed in claim 14”).
7

The Patent Owner’s arguments are not persuasive because, for patentability
purposes, we look to the composition claimed, not the method or manner by
which the composition is made. See Amgen Inc. v. F. Hoffman-LA Roche
Ltd., 580 F.3d 1340, 1366 (Fed. Cir. 2009) (“It has long been the case that an
old product is not patentable even if it is made by a new process.”) (citing
General Elec. Co. v. Wabash Appliance Corp., 304 U.S. 364, 373 (1938));
see also In re Thorpe, 777 F.2d 695, 697 (Fed. Cir. 1985) (“If the product in
a product-by-process claim is the same as or obvious from a product of the
prior art, the claim is unpatentable even though the prior product was made
by a different process.”).

7
Claim 14 does not actually recite using hypocapnic hypoxic air as a single
prefabricated product as the Patent Owner contends.
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Moreover, we disagree with the Patent Owner’s premise that the claim
term “hypocapnic hypoxic air” excludes nitrogen gas. “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). The
Specification states that hypocapnic means “carbon dioxide depleted” and
hypoxic means “low-oxygen” -- both of those terms using ambient air (~21%
O2 and 0.035% CO2) as a reference. ’392 Patent col. 1, ll. 28-31; col. 5, ll.
20-26. The Specification does not define air. However, it clearly uses the
term more broadly than ambient air since it refers to “hypocapnic hypoxic
air,” which, by definition, cannot be ambient air. Moreover, the
Specification refers to “dry nitrogen-enriched air” (see id. at col. 4, l. 58)
resulting from pressure-swing adsorption in which oxygen, water vapor, and
carbon dioxide are trapped. Consistent with the Specification, nitrogen gas
is within the scope of the broadest reasonable construction of “hypocapnic
hypoxic air.”
The Patent Owner next argues that Lambertsen “teaches putting out
existing fires rather than preventing fires” and “does not disclose utilizing
the same compositions used in testing the rats to put out existing fires.” PO
App. Br. 12. These arguments are not persuasive.
As noted by the Examiner, Lambertsen expressly teaches “preventing,
controlling, and extinguishing fires in a confined atmospheric space (an
atmospheric space is one containing a gas mixture which will support animal
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life) while maintaining the confined space habitable for mammalian life, in
particular, human life.” RAN 2-3 (quoting Lambertsen col. 2, ll. 36-42)
(emphasis added). Further, Lambertsen tests the same hypoxic hypocapnic
gas mixtures on existing flames, stating:
Petroleum flame is extinguished at oxygen concentrations that
sustain rats in normal activity. Flame extinguished in less than
20 seconds in oxygen concentrations, with and without carbon
dioxide, of less than 12 vol %.

Lambertsen col. 15, ll. 15-19 (emphasis added).
Additionally, the Patent Owner’s arguments are not commensurate
with the scope of claim 14, which recites, in relevant part, a composition
“having oxygen content in a range greater than 9% to 17% and carbon
dioxide content below 0.035%; said composition being used as a fire
suppressive atmosphere in . . . occupied and non-occupied enclosed
environments.” (emphasis added). The italicized limitation does not
distinguish the composition of claim 14 from the compositions of
Lambertsen cited in the Examiner’s rejection. Each of the Lambertsen
compositions (i.e., “12% O2, 0% CO2 in N2” and “10% O2, 0% CO2 in N2”
(Lambertsen col. 8, ll. 39-40)) is fire suppressive according to the Patent
Owner’s own Specification. See ’392 Patent col. 2, l. 59 - col. 3, l. 12.
Accordingly, such a composition inherently suppresses fire, regardless of
any intent to use it as such.
Lastly, the Patent Owner argues that Lambertsen’s method of diluting
an internal atmosphere with nitrogen “is not safe and cannot be used
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continuously as can the invention of the ’392 Patent” because it “would
displace the environment with inert gas killing everyone inside.” PO App.
Br. 15. This argument is not commensurate with the scope of claim 14,
which does not require continuous use. See claim 14; see also RAN 7.
Additionally, the Patent Owner’s argument is factually inaccurate in that it
presupposes that, in Lambertsen, only pure nitrogen gas is supplied to the
compartment containing the rat, when, in fact, oxygen-containing air is also
supplied through a separate line. Lambertsen col. 7, ll. 47-50. Lambertsen
also discloses monitoring of the oxygen content within the compartment.
Id. at col. 7, ll. 61-64; col. 11, ll. 64-68.
For the foregoing reasons, we sustain the decision to reject claims 14
and 15 as anticipated by Lambertsen.
B. Ground 4
Claims 17, 18, 21-23, and 26-28 were rejected as anticipated by
Lambertsen. RAN 5. For all but claim 27, the Patent Owner merely relies
on “the reasons stated above,” referring to its arguments regarding claims 14
and 15. PO App. Br. 18. Accordingly, we affirm the rejection of claims 17,
18, 21-23, 26, and 28 as anticipated by Lambertsen.
For claim 27, the Patent Owner presents a separate argument. Claim
27 is a method claim that requires, in relevant part, “turning said source [of
hypocapnic hypoxic air] 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.” In rejecting claim 27 as anticipated by Lambertsen,
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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. Thus, the Examiner’s finding 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.
C. Ground 5
Claims 19-21 and 24-28 were rejected as unpatentable over
Lambertsen. RAN 6. The Patent Owner argues that the rejection lacks a
proper obviousness analysis. PO App. Br. 19. We are not persuaded by this
argument. The Examiner expressly found that the claims and Lambertsen
were of the same scope except that the claims specified intended uses.
RAN 6. The Examiner further found those intended uses obvious. Id. The
Patent Owner fails to rebut those findings. PO App. Br. 19.
The Patent Owner does argue, however, that Lambertsen teaches
away from the claimed subject matter as it teaches increasing the carbon
dioxide level well above that in ambient air. PO App. Br. 19. Although
Lambertsen does teach a “benefit of elevating carbon dioxide concentration
in conjunction with lowering the oxygen concentration [to] help increase
brain blood flow and brain oxygenation in humans present in the confined
space” (Lambertsen col. 6, ll. 46-52), it alternatively teaches decreased
carbon dioxide. Id. at col. 8, ll. 39-42. Thus, we are not persuaded that
Lambertsen teaches away from the claimed subject matter.
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For the foregoing reasons, we sustain the rejection of claims 19-21,
24-26, and 28 as unpatentable over Lambertsen. We do not, however,
sustain the rejection of claim 27 as unpatentable over Lambertsen because
that rejection relies on the same erroneous fact finding as the anticipation
rejection of claim 27 based on Lambertsen. See RAN 6 (referring back to
the anticipation rejection).
ANALYSIS OF REQUESTER’S CROSS-APPEAL
The Requester cross-appeals the Examiner’s non-adoption of various
proposed rejections of claims 14, 15, and 17-28 based on the Kotliar prior art
references. Req. App. Br. 4-5. The Patent Owner argues that the cross-
appeal should be dismissed for lack of jurisdiction. PO Resp. Br. 3-5.
In its Request for Reexamination (p. iii), the Requester proposed
rejections of original claims 14 and 15 based on the Kotliar prior art
references and based on other references. The Examiner ordered
reexamination but determined that the Kotliar prior art references did not
present a substantial new question of patentability. See Order Granting
Request for Reexamination (April 18, 2011) 4.
During the reexamination, the Requester proposed the rejections of
original claims 14 and 15 and new claims 17-28 based on the Kotliar prior
art references, the non-adoption of which are being appealed. The
Examiner, however, did not consider the proposed rejections, stating that the
Kotliar prior art references “have not raised a substantial new question of
patentability and are therefor[e] not addressed.” Action Closing Prosecution
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(August 12, 2011) 6. Thus, according to the Patent Owner, the Examiner did
not make decisions favorable to patentability with respect to the Kotliar prior
art references. PO Resp. Br. 3-4.
The Requester responds that it “may appeal to the Board with respect
to any final determination favorable to the patentability, including any final
determination not to make a proposed rejection, of any original, proposed
amended, or new claim of the patent.” Req. Resp. Br. 1 (quoting 37 C.F.R.
§ 41.61(a)(2)) (emphasis by Requester). The Requester-quoted rule,
however, is expressly limited to final determinations that are “favorable to
the patentability” of a claim. 37 C.F.R. § 41.61(a)(2). Moreover, the
statutory authority for third party requester appeals is likewise expressly
limited to the review of examiner final decisions that are “favorable to the
patentability” of a claim. 35 U.S.C. §§ 134 (c) and 315(b) (2002). Notably,
“[l]ack of a substantial new question of patentability is not a favorable
decision on patentability.” Belkin Int’l, Inc. v. Kappos, 696 F.3d 1379, 1383
(Fed. Cir. 2012).
8
Accordingly, we dismiss the Requester’s cross-appeal for
lack of jurisdiction.

8
If it was the Requester’s view that the Examiner erred in not considering
the Kotliar prior art references with respect to new claims 17-28 added
during reexamination -- and we note that Belkin does not answer that
question, see Belkin, 696 F.3d at 1384, n.2 -- then the Requester could have
sought remedy through a petition.
Appeal 2013-008174
Reexamination Control No. 95/001,553
Patent 7,207,392 B2

19
DECISION
The Examiner’s decision to reject claims 14, 15, 17-26, and 28 is
affirmed. The Examiner’s decision to reject claim 27 is reversed.
The Requester’s cross-appeal is dismissed for lack of jurisdiction.
Requests for extension of time in this inter partes reexamination
proceeding are governed by 37 C.F.R. § 1.956.

AFFIRMED-IN-PART

alw

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