from the United States Patent and Trademark Office, Patent
Trial and Appeal Board in No. 95/001, 555.
Alexander Chapman, Hunton Andrews Kurth LLP, New York, NY,
argued for appellant. Also represented by Clifford Ulrich.
Thompson, The Law Offices of Roger S. Thompson, New York, NY,
argued for appellee.
Lourie, Moore, and Stoll, Circuit Judges.
S.A.S. appeals the Patent Trial and Appeal Board's
reversal of the patent examiner's rejection of certain
new claims presented by patent owner Firepass Corporation in
an inter partes reexamination of U.S. Patent No. 6, 418, 752.
Airbus challenges the Board's finding that an asserted
prior art reference fails to qualify as relevant prior art
because it is not analogous to the claimed invention of the
'752 patent. We hold that the Board erred in its
analogous art analysis by declining to consider record
evidence 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. We therefore vacate the Board's
reversal of the examiner's rejection and remand for
reconsideration in view of this additional evidence.
inter partes reexamination returns from a prior appeal in
which we vacated the Board's decision dismissing
Airbus's cross-appeal for lack of jurisdiction and
remanded to the Board to consider Airbus's challenge to
certain newly presented claims. See generally Airbus
S.A.S. v. Firepass Corp., 793 F.3d 1376 (Fed. Cir.
2015). Airbus now appeals the Board's reversal of the
examiner's rejection of those newly presented claims on
'752 patent discloses a fire prevention and suppression
system that prevents and extinguishes fires using breathable
air instead of water, foam, or toxic chemicals- each of which
can present risks to personnel or electronic equipment.
See '752 patent col. 1 ll. 47-65, col. 2 ll.
41-64. The invention is based on the inventor's alleged
discovery that a low-oxygen ("hypoxic") but normal
pressure ("normbaric") atmosphere inhibits fire
ignition and combustion, yet remains breathable for humans.
See id. at col. 4 l. 60-col. 5 l. 25. More
specifically, the '752 patent explains that, if one
reduces the atmospheric concentration of oxygen from its
natural level of 20.94% to about 16.2% or slightly lower
while adding nitrogen to maintain the same air pressure,
fires are suppressed while humans can continue to breathe.
Id. at col. 6 ll. 21-67. The specification applies
this principle to various fire-preventative and
fire-suppressive enclosed facilities, from computer rooms and
automobile tunnels to military vehicles and spacecraft.
See id. at col. 10 l. 55-col. 22 l. 45. These
enclosed facilities can utilize a "hypoxic
generator" that produces hypoxic air by altering the
composition of the surrounding ambient air. See id.
at col. 9 l. 36-col. 10 l. 21. But "[a]ny oxygen
extraction device, such as a nitrogen generator or an oxygen
concentrator can be used instead of a hypoxic generator"
with certain adaptations. See id. at col. 10 ll.
91, the only independent claim at issue on appeal, is
illustrative of the claimed invention:
91. A system for providing breathable fire-preventive and
fire suppressive atmosphere in enclosed human-occupied
spaces, said system comprising:
an enclosing structure having an internal environment therein
containing a gas mixture which is lower in oxygen content
than air outside said structure, and an entry communicating
with said internal environment;
an oxygen-extraction device having a filter, an inlet taking
in an intake gas mixture and first and second outlets, said
oxygen-extraction device being a nitrogen generator, said
first outlet transmitting a first gas mixture having a higher
oxygen content than the intake gas mixture and said second
outlet transmitting a second gas mixture having a lower
oxygen content than the intake gas mixture;
said second outlet communicating with said internal
environment and transmitting said second mixture into said
internal environment so that said second mixture mixes with
the atmosphere in said internal environment;
said first outlet transmitting said first mixture to a
location where it does not mix with said atmosphere in said
said internal environment selectively communicating with the
outside atmosphere and emitting excessive internal gas
mixture into the outside atmosphere;
said intake gas mixture being ambient air taken in from the
external atmosphere outside said internal environment with a
reduced humidity; and
a computer control for regulating the oxygen content in said