What is analogous art in United State patent law? AIRBUS v. FIREPASS

To get a patent on an invention in the United States, an inventor must file a patent application with the United States Patent and Trademark Office. For the patent application to be granted, the invention must meet all of the requirements of Untied States patent law. The United States Patent and Trademark Office with review the patent application and determine whether the invention disclosed in the patent application meets all the requirements for a patent. If the United States Patent and Trademark Office determines that all the requirements are met the inventor will be granted a patent on the invention in the United States. A patent grants the patent owner the exclusive right to make, use, sell or import the invention in the United States.

One of the requirements that an invention must meet to be granted a patent is that the invention cannot be obvious. This may seem like a simple requirement, but the term obvious has a special definition in patent law. 35 U.S.C. 103 of United States patent law outlines the definition of obviousness. 35 U.S.C. 103 states that a patent for a claimed invention may not be obtained … if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art (POSITA) to which the claimed invention pertains.

A POSITA is not considered to be omniscient, therefore, not everything which might qualify as prior art will actually be deemed prior art. For a reference to be considered prior art available to a POSITA, the reference must be from an analogous art as the invention. This means that if a reference is not analogous to the field of technology of an invention in a patent, the reference will not be considered prior art. Two 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.”

Simply stated, a reference that is from a completely different branch of technology will not render a patent obvious.

AIRBUS S.A.S. v. FIREPASS CORP., 2019-1803 (C.A.F.C. 2019) is a case which touches on the subject of analogous art. Airbus requested an inter partes reexamination of U.S. Patent No. 6,418,752 owned by Firepass. The ’752 patent discloses a fire prevention and suppression system that prevents and extinguishes fires using breathable air which is low in oxygen or hypoxic. U.S. Patent No. 5,799,652 (Kotliar), is an earlier-issued patent with the same named inventor as the ’752 patent. Kotliar discloses equipment for providing hypoxic air in an enclosed area for the purposes of athletic training or therapy. The ’752 patent discloses using hypoxic air for fighting fires, the ‘652 patent discloses using hypoxic air for athletic training.

The examiner in the inter partes reexamination rejected the ’752 patent as obvious in light of the ‘652 patent. Firepass appealed to the Patent Trial and Appeal Board on the grounds that the ‘652 patent is not analogous art. The Board found that Kotliar was not analogous art and reversed the examiner’s rejections. The Board explained that “[t]here 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.” Airbus then appealed the Board’s decision to the Court of Appeals for the Federal Circuit.

The Federal Circuit found that the Board’s decision was supported by substantial evidence, however the Board had not considered the combination of the ‘652 patent and several other pieces of prior art provided by Airbus. Motivation to combine and the scope of analogous art are both factual inquiries underpinning an obviousness determination that take into account the knowledge and perspective of an ordinarily skilled artisan. The Federal Circuit vacated the Board’s decision and remanded with instructions to consider whether the other pieces of prior art would make the ‘652 patent reasonable pertinent.

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