Federal Circuit Tackles Analogous Art Arguments

By Kim Jordahl
November 26, 2019

“Because a ‘reasonably pertinent’ reference is one that an ordinarily skilled artisan would reasonably have consulted in seeking a solution to the problem that the inventor was attempting to solve, the reasonably pertinent inquiry is inextricably tied to the knowledge and perspective of a [POSITA] at the time of the invention.” – Federal Circuit opinion

U.S. Court of Appeals for the Federal Circuit

In Airbus S.A.S v. Firepass Corporation, Appeal 2019-1803 (November 8, 2019), Airbus appealed the Patent Trial and Appeal Board’s (PTAB’s) reversal of the examiner’s rejection of new claims presented by Firepass in an inter partes reexamination of U.S. Patent No. 6,418,752 (“the ‘752 patent”). In particular, the inter partes reexam returned to the Court from a prior appeal (Airbus SAS v. Firepass Corp., 793 F.3d 1376 [Fed. Cir. 2015]) in which the Court vacated and remanded to the Board to consider Airbus’s challenge to the newly presented claims. Airbus disputes the Board’s finding that an asserted prior art reference, which just so happens to be a patent issued to the same inventor as the ‘752 patent, is nonanalogous art.

The claims of the ‘752 patent are directed to a fire retardant system that uses an atmosphere having low oxygen, but normal pressure, and is breathable for humans to inhibit fire ignition and combustion in an enclosed area. The named inventor of the ‘753 patent, Kotliar, is also the named inventor on the patent asserted by Airbus to be invalidating prior art against the ‘753 claims. In particular, U.S. patent No. 5,799,652 (“the ‘652 patent”) to Kotliar describes and claims equipment for providing low oxygen air in an enclosed area for purposes of athletic training or therapy. The ‘652 patent discloses a preferred oxygen range of 7% to 15%, while the ‘752 patent discloses that an oxygen concentration of 16.25 is required for fire retardation, but the ‘652 patent also discloses that its system could be applied to “any closed room or structure,” including the passenger compartment of an automobile.

Analogous Art Analysis

During prosecution, the examiner rejected the newly presented claims over the ‘652 patent in view of other prior art. Firepass first argued that the ‘652 patent constituted nonanalogous art in their appeal brief. The Federal Circuit made note of this and stated, “For its part, Airbus did not argue in its respondent brief that Firepass had waived this new argument; instead, Airbus addressed the issue on the merits.” Whoops.

In their analysis of whether the ‘652 patent was appropriately considered analogous art to the ‘752 patent, the Federal Circuit started by reiterating that two separate tests define the scope of analogous art. First, whether the art is from the same field of endeavor, regardless of the problem addressed and second, if not from the same field of endeavor, whether the reference is yet reasonably pertinent to the problem with which the inventor is involved. Citing In re Wood, 599 F.2d 1032, 1036 (CCPA 1979). The Board held that the ‘652 patent failed both, and while the Federal Circuit agreed with respect to the first prong, the Court found that the Board had erred in its “reasonably pertinent” determination in its failure to consider evidence of the knowledge of a person of ordinary skill in the art (POSITA) supplied by Airbus.

Field of Endeavor

With respect to the former, the Court explained that the “field of endeavor” analysis ought to include the explanations of the field in the patent application, and mentioned that in Wood, the field of endeavor was established via reference to an express disclosure in the Background section of the patent in question. Wood, 599 f.2d at 1036. The Court further stated that each reference’s disclosure must be considered in view of the “totality of the circumstances.” In holding that the Board’s finding under the “field of endeavor” test was supported by substantial evidence, the Court referred to the Board’s consideration of the written description and claims of the ‘752 and ‘652 patents and observations that the ‘752 Patent is indisputably directed to the problem of fire prevention and fire suppression, while the ‘652 patent is directed to the field of “human therapy, wellness, and physical training.”  The Board had also emphasized that the word “fire” did not even appear in the ‘652 patent, an observation the Federal Circuit found compelling.

Airbus disagreed and argued that the Board’s “field of endeavor” finding was not supported by substantial evidence as the Board referenced “the title of the ‘752 patent and the preamble of a single claim not at issue on appeal.” The Court disagreed, stating “While we agree that the Board’s analysis could have been more developed, we disagree with Airbus’s contention. A finding is supported by substantial evidence if a “reasonable mind might accept” a particular evidentiary record as ‘adequate to support a conclusion.'” Dickinson v. Zurko, 527 U.S. 150, 162 (1999). The Court then held that the Board’s findings that 1) the ‘752 claims are expressly directed to fire prevention and fire suppressive systems and 2) the word “fire” does not even appear in the ‘652 patent, were sufficient to support the conclusion that a reasonable mind would think the two disclosures were directed to different fields of endeavor.

Clarifying the “Reasonably Pertinent” Test

The Board’s “reasonably pertinent” analysis did not fare so well. The Court first explained that a reference outside of an inventor’s field of endeavor could be “reasonably pertinent” only if its subject matter “logically commended itself to an inventor’s attention in considering his problem.”  In re Clay, 966 F.2d 656, 659 (Fed. Cir.1992). After noting that the Board “accurately observed that the examiner’s rejection did not provide or explain the requisite correlation between the problems addressed by the ‘752 and ‘652 patents,” the Court nonetheless held that the Board had erred in refusing to consider the secondary references submitted by Airbus to establish that those of ordinary skill in the art of fire prevention were well aware of the use of the atmospheres claimed in the ‘752 patent in enclosed environments:

We hold that the Board erred by refusing to consider these references in support of the reasonably pertinent test. Because a “reasonably pertinent” reference is one that an ordinarily skilled artisan would reasonably have consulted in seeking a solution to the problem that the inventor was attempting to solve, the reasonably pertinent inquiry is inextricably tied to the knowledge and perspective of a person of ordinary skill in the art at the time of the invention.

The Federal Circuit thus remanded to the Board with instructions to reconsider its analogous art determination. So, even though Firepass did not raise the argument that the ‘652 patent was nonanalogous art until appeal, because Airbus did not argue waiver, the argument was entertained by the Board and decided in Firepass’ favor. Unfortunately for Firepass (and maybe for those of us that have abandoned the nonanalogous art argument as one that rarely prevails) the win was short-lived. It will be interesting to see if the Board sides with Airbus after consideration of the references as directed.

 

The Author

Kim Jordahl

Kim Jordahl has extensive experience in portfolio management and IP strategy, as well as in the preparation and prosecution of patent applications in the United States and internationally. She has conducted numerous freedom to operate searches and invalidity searches and counseled her clients in light of the same. Recognized as exceptional by her peers and colleagues, Kim has been named Rising Star in Intellectual Property, Top 40 under 40, and SuperLawyer in Minnesota Law and Politics. Kim is active in local and national bar associations and participates in local pro bono efforts.

For more information or to contact Kim, please visit her Firm Profile Page.

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Discuss this

There are currently 3 Comments comments. Join the discussion.

  1. Pro Say November 26, 2019 7:48 pm

    Thanks Kim — nice info and analysis.

    Even with the misguided, far-too-subjective KSR terrorizing the halls of innovation, the non-analogousness arg should be utilized more often than it is.

  2. AAA JJ November 27, 2019 8:09 am

    Why KSR is even discussed in the MPEP section on analogous art is a mystery that will never be solved.

  3. Anon November 27, 2019 11:10 am

    AAA JJ,

    It’s the MPEP – as you have pointed out as an understatement, there are a few incorrect legal assertions written into the MPEP.

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