Federal Circuit Defines Scope of Reasonably Pertinent Analogous Art

The Federal Circuit vacated a PTAB decision reversing the examiner’s obviousness rejection under 35 U.S.C. § 103 of patent claims directed to “a fire prevention and suppression system that prevents and extinguishes fire using breathable air” because the PTAB “erred in its analogous art analysis.” Airbus S.A.S. v. Firepass Corp., No. 2019-1803 (Fed. Cir. 2019) (See U.S. Patent No. 6,418,752). The court found that the PTAB declined “to consider record evidence relied on…to demonstrate the knowledge and perspective of a person of ordinary skill in the art at the time of the invention.”

The ‘752 patent disclosed providing “a low-oxygen (‘hypoxic’) but normal pressure (‘normbaric’) atmosphere” in enclosed facilities so “fires are suppressed while humans can continue to breathe.” During an inter partes reexaminaAirbus v Firepasstion, the examiner rejected the claims as obvious in view of U.S. Patent No. 5,799,652 (Kotliar), which discloses “equipment for providing hypoxic air in an enclosed area for the purposes of athletic training or therapy.” Firepass appealed this rejection asserting that Kotliar was not analogous art.

As the court notes, “[t]wo separate tests define the scope of analogous prior art: “‘(1) whether the art is from the same field of endeavor, regardless of the problem addressed and, (2) if the reference is not within the field of the inventor’s endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved.’” The PTAB concluded that “Kotliar does not qualify as prior art under either of these two tests.” The PTAB reversed the examiner’s rejection explaining that “‘there is no articulated rational underpinning that sufficiently links the problem of fire suppression/prevention confronting the inventor’ of the ‘752 patent to the invention disclosed in Kotliar, ‘which is directed to human therapy, wellness, and physical training.’”

When applying the “field of endeavor” test, the PTAB, in citing the titles, claims, and written descriptions of the ‘752 patent and the ‘652 patent, concluded that the field of endeavor of the ‘752 patent is “‘devices and methods for fire prevention/suppression,’” and the field of endeavor of the ‘652 patent is “‘human therapy, wellness, and physical training.’” Further, the PTAB concluded that “‘Kotliar cannot reasonably be said to be within the field of endeavor’ of the ‘752 patent because “the term ‘fire’ does not appear at all in Kotliar.” The court affirmed the PTAB’s “field of endeavor” determination because concluding Kotliar was in the field of endeavor of fire prevention would “defy “common sense” and the “reality of the circumstances” that a factfinder must consider in determining the field of endeavor.” In re Bigio, 381 F.3d 1320, 1326 (Fed. Cir. 2004).

Turning to the “reasonably pertinent” test, Airbus argued that four prior art references “establish[ed] that the use of normbaric hypoxic atmospheres in enclosed environments was well-known in the art of fire prevention and suppression at the time of the invention.” The court noted that the PTAB “refused to consider [the four references] because they were ‘not cited or applied in the proposed rejection’” despite “the four references [being] considered by the examiner as part of other obviousness combinations.” The court also noted that, similar to the motivation to combine references in Randall Manufacturing v. Rea, 733 F.3d 1355 (Fed. Cir. 2013), analogous art is a “factual inquir[y] underpinning an obviousness determination that takes into account the knowledge and perspective of an ordinarily skilled artisan.” As such, the court held “an analysis of whether an asserted reference is analogous art should take into account any relevant evidence in the record cited by the parties to demonstrate the knowledge and perspective of a person of ordinary skill in the art.” In view of the prior art references, the court determined “[t]hese references could lead a reasonable factfinder to conclude that an ordinarily skilled artisan in the field of fire prevention and suppression would have looked to Kotliar for its disclosure of a hypoxic room, even though Kotliar itself is outside the field of endeavor.” Accordingly, the court vacated the PTAB’s decision and remanded for an analogous art analysis because the PTAB erred in its analysis of the “reasonably pertinent” test.

Lessons for Practice

As we saw in Smartdoor Holdings, the field of analogous art is fairly wide. This case appears to have expanded the field of analogous art even further by clarifying that the factfinder must consider “any relevant evidence in the record cited by the parties” and not merely references used to support a rejection of the claim. As such, successfully arguing to disqualify a prior art reference as non-analogous art looks to be even more challenging in light of this Federal Circuit decision.