In re GPAC Inc., 93-1216

• Citation: 57 F.3d 1573,35 USPQ2d 1116
• Decision Date: 20 June 1995
• Docket Number: No. 93-1216,93-1216
• Parties: In re GPAC INC.
• Court: United States Courts of Appeals. United States Court of Appeals for the Federal Circuit

Page 1573

57 F.3d 1573

35 U.S.P.Q.2d 1116

In re GPAC INC.

No. 93-1216.

United States Court of Appeals, Federal Circuit.

June 20, 1995.

Rehearing Denied; Suggestion for Rehearing In Banc Declined

Oct. 24, 1995.

Harry B. Jacobson, Jr., Jacobson, Price, Holman & Stern, Washington, DC, argued, for appellant. With him on the brief were Michael R. Slobasky and Jonathan L. Scherer.

Murriel E. Crawford, Associate Sol., Office of Sol., Arlington, VA, argued, for appellee. With her on the brief were Fred E. McKelvey, Sol. and Albin F. Drost, Deputy Sol.

Before MICHEL, Circuit Judge, SMITH, Senior Circuit Judge, and PLAGER, Circuit Judge.

EDWARD S. SMITH, Senior Circuit Judge.

GPAC, Inc., assignee of United States Patent No. 4,604,111 (the '111 patent), appeals the decision of the Patent and Trademark Office (PTO) Board of Patent Appeals and Interferences (Board) dated January 26, 1993 affirming the examiner's final rejection of claims 1-43, in a second reexamination of the '111 patent, for obviousness under 35 U.S.C. Sec. 103 (1988). We affirm the Board's rejection of claims 1-43, with certain modifications involving the Whitfield reference which was relied upon by the examiner.

Background

On August 5, 1986 the '111 patent was issued in the name of the inventor, Anthony Natale, and subsequently was assigned to GPAC. The '111 patent is directed to a method and system for controlling airborne asbestos contamination during the course of asbestos removal from an existing building. Prior to the introduction of the '111 patent technology, traditional asbestos control systems passively enclosed and sealed the asbestos removal area to prevent airborne fibers from escaping into the outside environment. These passive control systems not only encountered difficulty in maintaining airtight seals, thereby resulting in contamination leakage, but also subjected workers to excessively high concentrations of airborne asbestos fibers.

The Natale system employs a more dynamic approach to asbestos removal by intentionally opening the sealed work area to provide a large air inlet for continuous movement of substantial volumes of air through the enclosed space. In conjunction with air filtering means located at the downstream end of the work area, this continuous air flow creates negative pressure that retains the airborne asbestos within the enclosed space as it is expelled through the filters. In the event of loss of negative pressure within the asbestos removal area, the Natale system utilizes an automatically sealing flap that covers the air inlet, thereby preventing contamination of the outside environment.

On April 22, 1987 John Conrad filed the first reexamination request questioning the validity of the '111 patent. The '111 patent as issued recited claims 1 through 17; claims 18 through 29 were added by the patent owner during prosecution of the first reexamination. Upon first reexamination, the examiner rejected claims 1-29 as unpatentable under 35 U.S.C. Secs. 102, 103. One basis for the examiner's rejection under section 103 was the Asbestos book, which is the same principal reference serving as a basis for rejection in this appeal. An alternative basis for rejection in the first reexamination that also carries over to this appeal is the MICRO-TRAP document, which the examiner determined to be a prior art printed publication.

On March 31, 1989, on appeal to the Board, the examiner's rejection of claims 1-29 was reversed as to all claims because "the examiner ha[d] not provided the requisite factual basis to support a legal conclusion of obviousness under 35 U.S.C. 103." Ex parte Natale, 11 USPQ2d 1222, 1226-27 (Bd.App.1989). Following the Board's decision, a reexamination certificate issued on June 6, 1989 stating that original claims 1-17 and newly added claims 18-29 were patentable.

On November 23, 1990 a second reexamination request was filed with the PTO, culminating in the examiner's initial rejection of claims 1-29 as unpatentable on July 31, 1991. During ensuing prosecution of the second reexamination, the patent owner added claims 30-43. On December 4, 1991 the examiner finally rejected claims 1-43 as unpatentable under section 103 over the Asbestos reference in combination with a total of twelve secondary references that the examiner believed provided the "requisite factual basis" for obviousness that was lacking in the first reexamination rejection. The examiner also cited additional evidence submitted by the reexamination requestor in support of the examiner's determination that the MICRO-TRAP document was indeed a prior art printed publication, which buttressed his final rejection of all claims.

On appeal to the Board, the examiner's final rejection of claims 1-43 was affirmed on January 26, 1993. Ex parte GPAC, Inc., 29 USPQ2d 1401 (Bd.App.1993). The Board grouped the examiner's specific rejections into six categories as follows: (1) five categories within which certain claims were rejected over the Asbestos principal reference in combination with various secondary references that disclosed certain limitations of the claimed subject matter and (2) a sixth category rejecting all claims over the MICRO-TRAP document as a prior art printed publication. GPAC, 29 USPQ2d at 1402-03.

In affirming the examiner's rejections in each of the first five categories, the Board generally concluded that, because "the overriding thought in removing asbestos per the Asbestos book reference is to prevent asbestos from escaping outside the enclosed space, ... one of ordinary skill in the art in providing" the ventilation flaps disclosed in the secondary references "would use flaps that would seal their flow path against air exiting from the air space to the outside upon loss of the negative air pressure in the enclosed space in order to prevent asbestos escaping with the outgoing air." Id. at 1404. In response to certain other limitations recited within the claims of the '111 patent, the Board further concluded that one of ordinary skill in the art would have known: (1) to slightly oversize the ventilation flaps so as to isolate one environment from the other upon the loss of negative pressure in the enclosed space; (2) to provide directional means for guiding the inlet air to the area of highest concentration of airborne asbestos; (3) to design one of the inlet openings large enough to allow a person to step through; and (4) to require that the automatic sealing means comprise a flexible film flap.

In affirming the examiner's determination that the MICRO-TRAP document is a prior art printed publication, the Board concluded not only that the document "is a printed publication [that] can be relied upon in determining the patentability of the claimed subject matter" but also that the publication "further buttresses the case of obviousness established by the other references relied upon in the rejections." Id. at 1413.

Pursuant to 35 U.S.C. Sec. 141 (1988) and 28 U.S.C. Sec. 1295(a)(4)(A) (1988), this appeal followed. Because we conclude that our affirmance of the Board's rejection of all claims of the '111 patent over the Asbestos reference and the twelve secondary references is dispositive of the obviousness issue involved in this case, we do not reach the merits of the parties' arguments as to whether the MICRO-TRAP document is a prior art printed publication. See White v. Jeffrey Mining Mach. Co., 723 F.2d 1553, 1560 n. 8, 220 USPQ 703, 707 n. 8 (Fed.Cir.1983), cert. denied, 469 U.S. 825, 105 S.Ct. 104, 83 L.Ed.2d 49 (1984).

The Claims on Appeal

Because GPAC has not separately argued the patentability of each rejected claim but, rather, has elected to argue certain representative claims with which the remaining rejected claims will either stand or fall, our review will be limited to the Board's rejection of the following claims:

A. Representative of Claims 1-17 (the original '111 patent)

1. independent method claim 1 independent system claim 8

2. dependent method claim 2 dependent system claim 17

B. Representative of Claims 18-43 (added during two reexaminations)

1. independent method claim 18 independent system claim 24

2. dependent method claims 23 and 35 dependent system claims 28 and 40.

See In re King, 801 F.2d 1324, 1325, 231 USPQ 136, 137 (Fed.Cir.1986).

Standard of Review

Whether a reference or a combination of references renders a claimed invention obvious under 35 U.S.C. Sec. 103 is a question of law subject to full and independent review in this court. Gardner v. TEC Sys., Inc., 725 F.2d 1338, 1344, 220 USPQ 777, 782 (Fed.Cir.), cert. denied, 469 U.S. 830, 105 S.Ct. 116, 83 L.Ed.2d 60 (1984). We review for clear error the underlying factual findings leading to an obviousness conclusion. In re Woodruff, 919 F.2d 1575, 1577, 16 USPQ2d 1934, 1935 (Fed.Cir.1990). Furthermore, under this standard of review we disturb a factual finding of the Board only if definitely and firmly convinced that the Board has erred. In re Caveney, 761 F.2d 671, 674, 226 USPQ 1, 3 (Fed.Cir.1985); see United States v. United States Gypsum Co., 333 U.S. 364, 395, 68 S.Ct. 525, 541-42, 76 USPQ 430, 443 (1948). These factual findings include: (1) the scope and content of the prior art; (2) the level of ordinary skill in the art at the time of the invention; (3) objective evidence of nonobviousness; and (4) the differences between the prior art and the claimed subject matter. Specialty Composites v. Cabot Corp., 845 F.2d 981, 989, 6 USPQ2d 1601, 1607 (Fed.Cir.1988) (citing Graham v. John Deere Co., 383 U.S. 1, 17-18, 86 S.Ct. 684, 693-94, 148 USPQ 459, 467 (1966)). In determining the scope and content of the prior art, "[w]hether a reference ... is 'analogous' is a fact question" that we review for clear error. In re Clay, 966 F.2d 656, 658, 23 USPQ2d 1058, 1060 (Fed.Cir.1992).

Scope and Content of the Prior Art

The Board upheld the validity of the '111 patent in the first reexamination; however, it invalidated the '111...