PTAB Must Consider Evidence Showing Prior Art Is Analogous to Invention

Before Lourie, Moore, and Stoll. Appeal from the Patent Trial and Appeal Board.

Summary: Whether an asserted prior art reference is reasonably pertinent to the particular problem solved by the invention, and thus analogous art, must account for the knowledge and perspective of a person of ordinary skill in the art at the time of invention.

Airbus requested an Inter Partes Reexamination of a patent owned by Firepass directed to low-oxygen fire-suppression technology. Airbus argued certain claims were obvious in light of an earlier Firepass patent directed to low-oxygen athletic training therapy. The examiner rejected those claims as obvious in light of the earlier-issued patent. The PTAB reversed and found that the earlier-issued patent was not analogous art. In doing so, the PTAB refused to consider four prior art references that Airbus argued provided a link between low-oxygen therapy and low-oxygen fire suppression, because the references were not specifically cited against the specific challenged claims in the proposed rejection.

The Federal Circuit reversed. The court acknowledged that the earlier-issued patent was not from the same field of endeavor as the challenged patent. But the court vacated the PTAB’s finding that the earlier-issued patent was not reasonably pertinent to the particular problem addressed by the inventor. It held that an analysis of whether a reference is analogous art must account for evidence in the record regarding the knowledge of a person of ordinary skill in the art. The Board erred by refusing to consider the linking art, even though it was not specifically cited against the specific claims at issue.

Editor: Paul Stewart

Written by: Christopher Lewis & Mark Kachner