[00:00:00] Speaker 03:
Next case is Airbus versus Firepass Corporation, 2019, 1803.

[00:00:05] Speaker 03:
Mr. Chapman, when you are ready.

[00:00:16] Speaker 02:
Please the court.

[00:00:18] Speaker 02:
My name is Mark Chapman.

[00:00:19] Speaker 02:
I'm here for the appellant Airbus.

[00:00:21] Speaker 02:
Airbus is appealing the board's decision to reverse the examiner's obviousness rejections of new claims 91 to 94.

[00:00:28] Speaker 02:
The board's decision was based solely on its new finding that the Cotley or Pryor reference is not analogous art.

[00:00:36] Speaker 02:
And I'd like to focus on what we think are the two most important errors that the board made in reaching that decision.

[00:00:43] Speaker 02:
The first error was that the board refused to consider important, relevant evidence of the knowledge of one of ordinary skill in the art.

[00:00:52] Speaker 02:
And specifically, what the board did was it refused to consider the examiner's findings, which were based on four prior art references, which demonstrated that those of ordinary skill in the art knew that breathable hypoxic air is fire preventive and fire suppressive.

[00:01:11] Speaker 02:
and the board refused to consider this knowledge solely because those prior references and the examiner's findings were not cited in the rejections of claims 91 to 94 on appeal.

[00:01:25] Speaker 02:
And our argument is that that's contrary to this court's decision in Randall.

[00:01:30] Speaker 04:
Your view is that those four references reveal the knowledge of a person of ordinary scale near

[00:01:38] Speaker 04:
as you're undergoing the inquiry of whether these other two references are analogous or not.

[00:01:44] Speaker 02:
That's correct.

[00:01:45] Speaker 02:
Exactly.

[00:01:46] Speaker 02:
And in Randall, the facts of Randall are very close to this case because in that case the board also failed to consider evidence of knowledge of one of ordinary skill in the art that was documented in prior art of record.

[00:01:59] Speaker 04:
But that was not an analogous art case.

[00:02:01] Speaker 04:
That was a different

[00:02:02] Speaker 02:
inquiry under the obviousness consideration that's correct it was an obvious appeal of an obviousness rejection but the specific sub-obviousness issue was whether there was a motivation to combine so it was not an analogous art issue but the point that the court made was that

[00:02:20] Speaker 02:
you have to consider evidence of the knowledge of one of ordinary skill in the art.

[00:02:23] Speaker 02:
It's the backdrop for the entire obviousness analysis and that prior art is perhaps the best evidence of what the knowledge of one of ordinary skill is.

[00:02:32] Speaker 02:
So we think under Randall and just the general notion that obviousness has to be analyzed from the perspective of one of ordinary skill and take into account what he or she knows that the board in our case erred by refusing to consider

[00:02:47] Speaker 02:
this undisputed knowledge of one or more traceable art.

[00:02:51] Speaker 02:
And the error that they made in that regard was prejudicial with respect to both of the analogous art tests.

[00:02:59] Speaker 02:
For the reasonably pertinent tests,

[00:03:02] Speaker 02:
Given that one of ordinary skill in the art knows that breathable hypoxic air is fire preventive and fire suppressive, when one of ordinary skill in the art is setting out to solve the problem of how do you prevent and suppress fire in a human occupied enclosure, they would consider prior art that discloses

[00:03:23] Speaker 02:
producing breathable hypoxic air.

[00:03:25] Speaker 04:
This is a factual question, though, right?

[00:03:27] Speaker 04:
Correct.

[00:03:27] Speaker 04:
So you've got two positions you've said so far today.

[00:03:31] Speaker 04:
One is that the board erred by, in its legal test that it applied, because it didn't consider the four prior references considered by the examiner to determine what opposes those.

[00:03:41] Speaker 04:
But also, separately, there's a fact question of, once you use that proper standard,

[00:03:48] Speaker 04:
Are these references analogous or not?

[00:03:50] Speaker 02:
That's right.

[00:03:50] Speaker 02:
And I think the point I'm trying to make is that had the board properly considered the knowledge, had it not refused to consider that, it would have switched the outcome 180 degrees.

[00:04:01] Speaker 02:
Because once it's understood that one of ordinary skill in the art knows that breathable hypoxic air is fire preventive and fire suppressive,

[00:04:09] Speaker 02:
and if they are trying to solve the problem of how to prevent and suppress fires, prior art that discloses producing breathable hypoxic air is pertinent.

[00:04:19] Speaker 03:
Is it correct that the Kotler reference relating to hypoxic training

[00:04:26] Speaker 03:
was relevant to invalidating claim one of this patent?

[00:04:31] Speaker 02:
The examiner rejected claim one as anticipated by Kotlier, and it also rejected claim one as obvious based on Kotlier in combination, I believe, with another reference.

[00:04:41] Speaker 03:
So was it your argument that it has to be reasonably pertinent to another claim of that same patent?

[00:04:48] Speaker 02:
I think that's part of the overall story here that Cotlear is so close to claim 91.

[00:04:53] Speaker 02:
The only limitations that the examiner found not to be disclosed in Cotlear that are in claim 91 are two elements.

[00:05:02] Speaker 02:
One is about reducing the humidity of the intake air that goes into the oxygen extraction equipment and the second one is about having a filter for that intake air.

[00:05:11] Speaker 02:
Everything else it's already been decided that Cotlear discloses that and

[00:05:17] Speaker 02:
you know when the examiner rejected claim 91 that was understood and not no longer in dispute remember that this week we are back in this court for the second time the rejections of claim 91 happened after the remand from this court at that point claim 91 had been

[00:05:33] Speaker 02:
and rejected based on Kotlier, sorry, I apologize, claim one had been rejected based on Kotlier, they had appealed to the board, the board had affirmed, they did not appeal that to this court, so it was no longer in dispute that Kotlier discloses all the elements of claim one.

[00:05:49] Speaker 02:
So when the examiner turned to look at claim 91, he understandably focused on, well, what are the differences between, what are the new limitations in claim 91 that we haven't already addressed before?

[00:06:00] Speaker 03:
So it's a syllogism.

[00:06:03] Speaker 03:
That which is reasonably pertinent to claim one is reasonably pertinent to claim one plus two more limitations.

[00:06:11] Speaker 02:
I think that's fair.

[00:06:12] Speaker 02:
Yes.

[00:06:12] Speaker 02:
And I think when you look at what Kotlier discloses, it discloses a piece of equipment.

[00:06:18] Speaker 02:
That equipment is used to produce breathable hypoxic air.

[00:06:22] Speaker 02:
for a human enclosure.

[00:06:24] Speaker 02:
Claim 91 claims the same structure except for those two differences that we just mentioned.

[00:06:33] Speaker 02:
It's a machine to produce breathable hypoxic air for a room.

[00:06:38] Speaker 02:
It's true that the 752 patent states that the purpose of it is to suppress and prevent fires.

[00:06:43] Speaker 02:
And the Cotlear does not say that because his patent was directed to using that for a different purpose.

[00:06:48] Speaker 02:
But the breathable hypoxic air that Cotlear produces is also fire preventive and fire suppressive.

[00:06:55] Speaker 02:
And one of ordinary skill would have known that.

[00:06:57] Speaker 02:
And just circling back to my original point, the board wouldn't consider that evidence.

[00:07:02] Speaker 02:
of the knowledge of an ordinary skill in the art.

[00:07:04] Speaker 02:
And that's why we think even though the board's findings are reviewed for substantial evidence, when it fails to consider critical relevant evidence, we submit that the decision just has to be vacated so that it can go back and consider that evidence.

[00:07:21] Speaker 04:
This case, how long has this re-examination been pending?

[00:07:24] Speaker 04:
I mean, it seems to be on the slow track.

[00:07:26] Speaker 02:
February 23rd, 2011.

[00:07:29] Speaker 02:
So eight and a half years.

[00:07:31] Speaker 02:
Yeah, and the reason for that is, as I mentioned, we've been to this court in 2014, I believe it was.

[00:07:39] Speaker 02:
There was a first set of rejections on the original claims.

[00:07:42] Speaker 02:
They submitted a whole bunch of new claims.

[00:07:45] Speaker 02:
They were all rejected, except for the ones that are now at issue, because the examiner at the time thought he had to find a substantial new question of patentability for those new claims.

[00:07:55] Speaker 02:
This court corrected him on that.

[00:07:58] Speaker 02:
And so we went back and dealt with that subset of claims in a second round of re-examination.

[00:08:07] Speaker 02:
One other thing about the board's error with respect to the refusal to consider the knowledge, it's also prejudicial with respect to the field of endeavor test.

[00:08:17] Speaker 02:
So prior art can be analogous articles within the field of endeavor of the patent.

[00:08:21] Speaker 02:
And here, the way you analyze that is you look to see whether the embodiments in the prior art reference and in the patent have essentially the same function and structure.

[00:08:31] Speaker 02:
That's what the Bizio case says we should do.

[00:08:34] Speaker 02:
Here, once it's understood that one of ordinary skill in the art knows that breathable hypoxic air is biopreventive and biosuppressive, then he would appreciate that Cotlier performs essentially the same function as the 752 patent.

[00:08:51] Speaker 04:
Do you think that you have a stronger case under the reasonably pertinent to the particular problem prong?

[00:08:57] Speaker 02:
I'm sorry, I missed the beginning of that.

[00:08:58] Speaker 04:
Do you think you have a stronger case under the reasonably pertinent to the particular problem prong?

[00:09:05] Speaker 02:
I think we have a strong case on reasonably pertinent.

[00:09:08] Speaker 02:
I think we also have a strong case on field of endeavor, because there's no dispute here that the structure is virtually identical.

[00:09:14] Speaker 03:
The only field of endeavor, one might look to the titles of the patents, which are quite different.

[00:09:20] Speaker 02:
I agree with that, but you can't look just at the titles.

[00:09:22] Speaker 02:
You also have to look at the description of the invention subject matter and what's the structure and function of the claimed embodiments.

[00:09:30] Speaker 02:
And here, we just discussed that Kotlier was found to anticipate claim one and to virtually anticipate claim 91 except for two limitations, which is why we're having a discussion about obviousness.

[00:09:42] Speaker 02:
And the point about the knowledge of one of ordinary skill in the art is that when that is considered,

[00:09:47] Speaker 02:
When it's understood that breathable hypoxic air is fire-preventive and fire-suppressive, then the machine in Kotlier has the same function as the machine in the 752 patent.

[00:09:58] Speaker 02:
Even though it doesn't describe that function.

[00:10:00] Speaker 04:
Could you make this particular argument below?

[00:10:02] Speaker 04:
I mean, in relying on those four references, you emphasized that they were also extremely important to the termination of the field of endeavor.

[00:10:10] Speaker 02:
We certainly did so in our rehearing petition.

[00:10:12] Speaker 02:
I don't remember if we did so in our respondent brief before the board.

[00:10:16] Speaker 02:
We definitely emphasized the evidence of the knowledge of one ordinary skill in the art and how FirePass's argument that Mr. Cotlier had discovered this, that it could be safe for breathing and also fire preventive and suppressible, which is not true.

[00:10:30] Speaker 02:
That was well known.

[00:10:32] Speaker 03:
Council, you're into your rebuttal time.

[00:10:34] Speaker 03:
You can continue or save it.

[00:10:37] Speaker 02:
I just want to make one very quick point about another error that we think the board did, and it's a procedural point.

[00:10:43] Speaker 02:
We think that the board should have remanded to the examiner to permit Airbus to submit evidence in response to this brand new finding by the board that Cotley is not analogous art.

[00:10:55] Speaker 02:
This was a new argument that Firebus made in the board appeal.

[00:10:58] Speaker 02:
It was never presented to the examiner.

[00:11:00] Speaker 02:
So, we had no opportunity to submit evidence, such as expert evidence, on the question.

[00:11:05] Speaker 02:
In the Board of Appeal, we couldn't submit evidence because you can't submit new evidence on appeal.

[00:11:10] Speaker 02:
So, under the APA, we think we just weren't given a fair opportunity to respond and submit evidence.

[00:11:15] Speaker 02:
And so, to the extent the decision isn't overturned on its merits, procedurally, the case should have gone back to the examiner so that both parties could, you know, argue the point and submit evidence, which never happened.

[00:11:38] Speaker 00:
May it please the court?

[00:11:39] Speaker 00:
My name is Roger Thompson.

[00:11:40] Speaker 00:
I'm appearing on behalf of the Appellee Firepass Corporation.

[00:11:45] Speaker 00:
This court sits in review of the final judgments of the PTAB under the Administrative Procedure Act.

[00:11:52] Speaker 00:
The final judgment of the PTAB in this case was that the rejection proposed by Airbus adopted by the examiner failed to make out a case of obviousness.

[00:12:04] Speaker 00:
The evidence which supported that relates to the field of Endeavour and the substantial evidence in the record addressed in my brief shows that there is substantial evidence showing what the fields of Endeavour were for both the claimed invention and for the primary reference Cotillard.

[00:12:25] Speaker 00:
As Judge Lurie pointed out, the titles are very different, and while that's not a determining factor, they just don't appear to relate to the same fields of endeavor.

[00:12:36] Speaker 00:
Now, my opponent has suggested that the T-Tab erred in refusing to consider evidence of knowledge of the person of ordinary skill in the art.

[00:12:46] Speaker 00:
However, that evidence was not presented to the examiner, either, because it was not part of the underlying rejection.

[00:12:54] Speaker 00:
Under KSR, all elements of an obviousness rejection have to be articulated expressly in the record.

[00:13:01] Speaker 04:
What if it's just evidence of what opposes new?

[00:13:05] Speaker 04:
case law going back for a long time saying that Opposa is presumed to have knowledge of the prior hurt and so you can look at the prior to figure out what they knew.

[00:13:14] Speaker 00:
That's absolutely true your honor but in the context of making out a an obviousness rejection it's necessary to articulate how you get to the ultimate conclusion.

[00:13:26] Speaker 04:
Setting aside the obviousness

[00:13:28] Speaker 04:
the references that are relied on for the obviousness determination.

[00:13:33] Speaker 04:
You are saying that there is never a circumstance in which prior art could be identified for purposes of showing what a person of ordinary skill in the art had knowledge of?

[00:13:43] Speaker 04:
Is that your position?

[00:13:47] Speaker 00:
I'm not sure I understood the question.

[00:13:48] Speaker 04:
Okay, let me ask you again.

[00:13:50] Speaker 04:
Okay.

[00:13:52] Speaker 04:
Is a court or the PTO ever allowed to consider prior art outside of the prior art identified for purposes of obviousness or anticipation?

[00:14:05] Speaker 04:
Could they look at other prior art just to understand the knowledge of a person of one of ordinary scale in the art?

[00:14:13] Speaker 00:
If that was the case, then the grounds of rejection would be different than A in view of B. It would be A in view of B in light of the teachings of C, which helped.

[00:14:24] Speaker 04:
How do you square that with Randall?

[00:14:26] Speaker 00:
Because in Randall, the issue was very different.

[00:14:31] Speaker 00:
And that was addressed in my brief.

[00:14:43] Speaker 00:
Page 31 and 2.

[00:14:51] Speaker 00:
In Randall, as the board itself distinguished, this distinguished because there was no dispute or issue as to whether the main reference applied was in the same field of endeavor.

[00:15:03] Speaker 04:
So your view is because Randall didn't involve a question of whether something was analogous art or not, it's distinguished.

[00:15:10] Speaker 00:
in part, because the essence in Randall was that there was no real question of whether these references were pertinent or not.

[00:15:18] Speaker 00:
But here, the ultimate issue is, why would one of ordinary skill in the art have looked to the Cotillier reference as a starting point for this analysis?

[00:15:27] Speaker 04:
I understand.

[00:15:27] Speaker 04:
I don't know that I agree with you.

[00:15:30] Speaker 04:
I mean, Randall does look at a different part of the KSR obviousness inquiry.

[00:15:38] Speaker 04:
But I'm not sure that I agree with you that I'm not allowed to consider it as informative for purposes of determining what a person of ordinary skill in the art knew for purposes of determining whether a reference is directed to a pertinent problem.

[00:15:58] Speaker 01:
Can I ask a question about the facts of Randall that I don't remember?

[00:16:02] Speaker 01:
I'm looking right now at footnote three in Randall, which is talking about the

[00:16:07] Speaker 01:
references that the court was considering and the board was considering in Randall.

[00:16:13] Speaker 01:
And it says, although the examiner did not articulate this analysis, Randall, as appellee before the board, was entitled to defend the examiner's rejection to the board

[00:16:22] Speaker 01:
because it had presented this in the record.

[00:16:26] Speaker 01:
So I guess, I don't know the facts of Randall very well at all, but I guess maybe, and maybe I'm mistaken in reading this footnote this way, but I guess I was thinking that the four prior art references in Randall

[00:16:39] Speaker 01:
were actually presented to the examiner.

[00:16:42] Speaker 01:
The examiner just didn't rely on them and his rejection.

[00:16:46] Speaker 01:
And then what our federal circuit was saying is that the board is allowed to because they were previously presented.

[00:16:52] Speaker 01:
I don't know if those are the right facts.

[00:16:54] Speaker 01:
I'm reading Randall.

[00:16:55] Speaker 01:
I haven't gone deep into it.

[00:16:56] Speaker 00:
Do you know whether... I don't remember off the top of my head, Your Honor, what exactly one footnote says in one case.

[00:17:04] Speaker 00:
But I will point out that in this case, the references had not been applied that the Council now wants to use to support its argument had not been applied against claim 91 in this rejection.

[00:17:17] Speaker 01:
So they were never introduced before the examiner as providing information that would

[00:17:23] Speaker 00:
not claim 91 for other claims yet.

[00:17:28] Speaker 00:
That's my understanding.

[00:17:29] Speaker 04:
Do I understand correctly that the board's rationale for not considering these references was that none of these four references was used to support the rejection?

[00:17:39] Speaker 04:
Yes, Your Honor, because they didn't find a waiver because they weren't presented to the examiner.

[00:17:44] Speaker 04:
Instead, they said the same reason you said previously, which is you're only allowed to look at the references that are being relied on, which here is caught later.

[00:17:55] Speaker 00:
You're only allowed to rely on the statement of the rejection that the examiner issued, that the examiner adopted based on Airbus's proposal.

[00:18:07] Speaker 00:
And if it was necessary to have something other than Kotly or by its four corners to reach the obviousness conclusion, then it must be necessary that it's in the record because otherwise the fire pass wouldn't have had the opportunity before the examiner to address the issue of what would constitute a proper grounds for opposing the rejection.

[00:18:29] Speaker 01:
I just ask for clarification from you or are you do you agree with Judge Dole's representation that the board limited its complaint to the fact that they weren't in the rejection or do you how do you read appendix page 29 and the board says we agree with the patent word that the requester

[00:18:48] Speaker 01:
now offers a new analysis of how it wished it had made its initial rejection seven years ago, two appeals and one trip to the Federal Circuit and countless amendments and arguments ago.

[00:18:56] Speaker 01:
However, the actual rejection of appeal is what must be evaluated.

[00:19:00] Speaker 01:
This is an inter-parties proceeding and the rejection at issue was proposed by the requester.

[00:19:04] Speaker 01:
So I guess I just don't know whether or not it's clear to me that the board said that because the examiner didn't rely on this as opposed to the applicant didn't make it is the only reason it

[00:19:16] Speaker 01:
It seems to me that they're saying the applicant is the one who proposed the rejection, and the applicant didn't ever mention these.

[00:19:21] Speaker 01:
And the examiner accepted what the applicant said.

[00:19:24] Speaker 00:
I mean, the requester proposed it, not the applicant.

[00:19:26] Speaker 01:
Yeah, sometimes I don't know what to say.

[00:19:27] Speaker 01:
I said applicant.

[00:19:28] Speaker 01:
Thank you for correcting my misspeaking.

[00:19:30] Speaker 00:
So the ultimate issue is what the examiner did.

[00:19:35] Speaker 00:
The examiner had the right to accept or not accept.

[00:19:38] Speaker 01:
Well, but here it seems to me the board is saying the examiner didn't issue its rejection.

[00:19:44] Speaker 01:
citing these four references.

[00:19:45] Speaker 01:
And they're also saying, because the applicant in its... Requestor.

[00:19:50] Speaker 01:
A requester.

[00:19:50] Speaker 01:
Thank you.

[00:19:51] Speaker 01:
The requester in its IPR didn't ask it to look at these references with regard to this.

[00:19:57] Speaker 00:
Correct.

[00:19:58] Speaker 01:
So it's a kind of board.

[00:19:59] Speaker 01:
I think the board in this case is saying both.

[00:20:02] Speaker 00:
I would agree with that, Your Honor.

[00:20:04] Speaker 03:
Council, I assume you agree that the Cotley reference

[00:20:11] Speaker 03:
was considered relevant and important in invalidating claim one.

[00:20:16] Speaker 00:
With respect to anticipation, yes, Your Honor.

[00:20:19] Speaker 00:
But the anticipation rejection and an obviousness rejection, as we all know, are very different.

[00:20:24] Speaker 03:
Yes, but we're talking about what's reasonably pertinent.

[00:20:29] Speaker 03:
And so that Cartelier reference has to have been reasonably pertinent to a claim that has basically the same system plus two more limitations.

[00:20:41] Speaker 00:
I would disagree, Your Honor, because in an anticipation analysis, we don't consider an analogous argument.

[00:20:49] Speaker 03:
Well, not decisive.

[00:20:50] Speaker 03:
But why not reasonably pertinent, same subject matter?

[00:20:54] Speaker 00:
because the issue of reasonable pertinence to the problem being solved by the inventor.

[00:21:01] Speaker 00:
The inventor will, when putting together any combination invention, will take bits and pieces from the prior art.

[00:21:11] Speaker 00:
And the inventor will take a machine which somebody else uses for something else for another purpose and perhaps use it in an inventive way.

[00:21:20] Speaker 03:
This is not a method claim.

[00:21:22] Speaker 00:
No, it's not.

[00:21:23] Speaker 00:
But it's the structure.

[00:21:24] Speaker 00:
You would still incorporate the entire body of the machine into the combination.

[00:21:31] Speaker 01:
Can I ask whether or not it's possible that your answer to Judge Laurie might want to include the following response?

[00:21:38] Speaker 01:
And you can tell me whether you agree or disagree.

[00:21:40] Speaker 01:
Which would be just because something is relevant to one claim of a patent doesn't mean it's relevant to another, even when we're talking about independent and defended claims.

[00:21:48] Speaker 01:
How about I propose an example?

[00:21:50] Speaker 01:
Claim one says all mammals, humans, animals, et cetera.

[00:21:54] Speaker 01:
Claim two says skunks.

[00:21:58] Speaker 01:
Maybe claim two limited to skunks, dependent claim,

[00:22:01] Speaker 01:
maybe a reference with regard to humans or birds or fish or something, maybe that could be relevant to claim one because it's so broadly written, but maybe that's not actually relevant to claim two because it's so narrowly written.

[00:22:14] Speaker 01:
Is that possible?

[00:22:15] Speaker 00:
I would agree with Your Honor on that, and I will just point out that each claim is entitled to its own analysis and its own separate consideration.

[00:22:24] Speaker 01:
And if the examiner... I don't know in this case whether what I just said is true, but I've been worried about a rule of law that went so broadly as to say because something is relevant to an independent claim, it therefore is necessarily relevant to a dependent claim.

[00:22:36] Speaker 00:
This is an independent... 91 has also written in independent form, just so the record's clear.

[00:22:41] Speaker 01:
Thank you.

[00:22:42] Speaker 00:
But they are two independent claims with different limitations and... You correct me on my misspeaking very nicely.

[00:22:48] Speaker 01:
I want to applaud you for that.

[00:22:49] Speaker 01:
Thank you.

[00:22:50] Speaker 03:
Both claims

[00:22:52] Speaker 03:
are supported by the same specification.

[00:22:56] Speaker 00:
That would be true for every claim of the patent under any circumstances.

[00:23:01] Speaker 00:
If not, you'd be having a whole different set of discussions about rejecting the claims.

[00:23:08] Speaker 00:
One point I would like to address that my learned opponent has raised is that it essentially isn't fair that the examiner didn't have the opportunity to address these issues because they weren't supposedly raised during prosecution.

[00:23:23] Speaker 00:
and that the board should therefore have remanded rather than simply reversing.

[00:23:28] Speaker 00:
However, the examiner did have the opportunity in response to the brief on appeal before the PTAB to address the issues raised in the opening brief by FirePass.

[00:23:41] Speaker 00:
And the examiner's answer simply incorporated the RAN below and did not add any argument or any analysis

[00:23:51] Speaker 00:
to the initial consideration.

[00:23:54] Speaker 00:
So the examiner had the opportunity at that time to say, you know what, maybe I was a little sloppy.

[00:24:00] Speaker 00:
I could have done a better job with the rejection.

[00:24:04] Speaker 00:
So I'll take it back, issue a better rejection, and we wouldn't be sitting here right now.

[00:24:09] Speaker 00:
But the examiner didn't do that.

[00:24:10] Speaker 00:
The examiner took the position that the ran was fine as it was, and the final rejection would stand as it was.

[00:24:19] Speaker 00:
And so the examiner has had the opportunity to address this very issue and declined to do anything about it.

[00:24:28] Speaker 00:
You're looking puzzled, Judge Stahl.

[00:24:30] Speaker 00:
Have I?

[00:24:31] Speaker 00:
OK.

[00:24:33] Speaker 00:
One thing when considering the reasonable pertinence of the Kotlyar reference to claim 91, etc., is that Kotlyar says nothing about fire.

[00:24:42] Speaker 00:
We should keep that in mind.

[00:24:44] Speaker 00:
As Judge Laurie pointed out, the title of the invention is very different for the reference.

[00:24:50] Speaker 00:
It's athletic training equipment, as opposed to the claimed invention, which is for fire prevention and suppression.

[00:24:55] Speaker 00:
And the Cotlear patent, the 652 patent, in fact doesn't even use the word fire in it whatsoever.

[00:25:04] Speaker 00:
So what one of ordinary skill in the art would glean from reading Cotlear should bear keep in mind that that is not something that is taught either expressly or implicitly in Cotlear.

[00:25:20] Speaker 00:
I have nothing further on my end.

[00:25:22] Speaker 00:
Unless the court has further questions for me, I would concede my last minute and change.

[00:25:28] Speaker 03:
I think you have told us everything that is reasonably pertinent.

[00:25:32] Speaker 00:
Thank you, Your Honor.

[00:25:35] Speaker 03:
Mr. Chapman has some rebuttal time.

[00:25:38] Speaker 04:
Mr. Chapman, one of the things that came out in that last bit of argument was that the examiner did not have the four references in order to be able to consider them.

[00:25:49] Speaker 04:
And I know the examiner wasn't even considering analogous art because that argument hadn't been made.

[00:25:55] Speaker 04:
And so how do you respond to that?

[00:25:57] Speaker 04:
I mean, did the board actually say we're not going to consider this, not only because it's not pertinent to this inquiry, but also because the examiner didn't get to consider it?

[00:26:08] Speaker 02:
Let me back up and just say you're correct when you said just a minute ago that the issue of whether or not Kotlier was analogous art was never disputed before the examiner.

[00:26:18] Speaker 02:
There were several rejections based on Kotlier as the primary reference, obviousness rejections, not just the anticipation rejection.

[00:26:25] Speaker 02:
FirePass constantly never questioned that it was available as prior art, they just argued that it didn't have certain claim limitations, there was no motivation to combine.

[00:26:34] Speaker 02:
So there was no reason for the examiner in analyzing

[00:26:38] Speaker 02:
rejections for claim 91 and 92 93 94 to address the issue of whether Kotler was analogous art or all this knowledge because it wasn't relevant to a disputed issue now in our submission there was some question about whether we presented these references all these references the four of them were presented in other grounds that were relied on so the examiner's findings were made in the context of other rejections of other claims which there were about a hundred

[00:27:05] Speaker 02:
But they were of record.

[00:27:07] Speaker 02:
The prior art is all of record.

[00:27:09] Speaker 02:
Examiner's findings are of record.

[00:27:10] Speaker 02:
And in Randall, it was similar in the sense that the prior art in question was not involved in the specific rejection on appeal, but had been discussed in other contexts within the re-examination.

[00:27:23] Speaker 02:
So there's no difference in my submission between Randall and this case.

[00:27:27] Speaker 02:
The other thing is

[00:27:29] Speaker 02:
I don't fire pass and the board criticized the examiner's rejection and our proposal of that.

[00:27:34] Speaker 01:
Were these four references introduced to the examiner in any way with regard to the particular claims?

[00:27:41] Speaker 02:
That's exactly what I was about to get to.

[00:27:42] Speaker 02:
So in our proposed rejection of claim 91, we had a claim chart.

[00:27:47] Speaker 02:
and our comments referred to both Gustafson and the 1167 report, which are two of the four references that we're now relying on.

[00:27:58] Speaker 02:
And we cited those references when we were addressing how the preamble of Claim 91, which is the only part of Claim 91 that mentions preventing or suppressing fires,

[00:28:10] Speaker 02:
was obvious.

[00:28:12] Speaker 02:
And the point that was being made was that the Cotlear 652 breathable hypoxic air environment prevents and suppresses fires.

[00:28:21] Speaker 02:
And then we pointed to the knowledge of one of ordinary skill, as documented in Gustafson and the 1167 report, that documents that.

[00:28:29] Speaker 02:
And if you'd like, I can give you the citation for that.

[00:28:31] Speaker 02:
It's appendix 2548 to 2550.

[00:28:37] Speaker 02:
And that was for claim 91, the independent claim at issue now.

[00:28:40] Speaker 02:
Back at the beginning.

[00:28:42] Speaker 01:
2548 and 25 what?

[00:28:42] Speaker 02:
2548 to 2550.

[00:28:47] Speaker 02:
Three pages.

[00:28:49] Speaker 02:
And then back in the original reexamination request, we also had a more fulsome discussion about this exact issue with respect to claim one in the request.

[00:28:58] Speaker 02:
And so I could look up the sites for those I didn't have a chance, but it's in our appendix, it's in our request, and in the claim charts for claim one that we submitted with the original request, which pointed the same evidence in Guffston's and in the 1167 report.

[00:29:12] Speaker 02:
But I think that Randall stands for the proposition that that doesn't really matter.

[00:29:17] Speaker 02:
What matters is, is it of record and is it relevant?

[00:29:20] Speaker 02:
And if it is, it has to be considered.

[00:29:22] Speaker 02:
Because when you're analyzing obviousness, the knowledge of one of ordinary skill in the art is a foundational fact that has to be considered at all stages.

[00:29:31] Speaker 02:
And I don't think there's any dispute that

[00:29:33] Speaker 02:
in determining whether a prior art reference is analogous art, that somehow you don't assess that from the perspective of one of ordinary skill.

[00:29:40] Speaker 02:
You do.

[00:29:41] Speaker 02:
You have to.

[00:29:41] Speaker 02:
And so you have to take into account what they knew.

[00:29:44] Speaker 02:
And our submission is that when you do that, it's clear that Cotley was reasonably pertinent and that the board erred when it refused to consider that evidence.

[00:29:54] Speaker 02:
I see I have nine seconds.

[00:29:56] Speaker 03:
No, I think you were in arrears.

[00:29:59] Speaker 03:
So we will conclude the argument then in case of submission.

[00:30:03] Speaker 03:
Thank you very much.