United States Court of Appeals 

for the Federal Circuit ______________________ 

AIRBUS S.A.S.,

Appellant

v.

FIREPASS CORPORATION,

Appellee

______________________ 

2014-1808

______________________ 

Appeal from the United States Patent and Trademark 

Office, Patent Trial and Appeal Board in No. 95/001,555.

______________________ 

Decided: July 17, 2015

______________________ 

 MATTHEW BERKOWITZ, Kenyon & Kenyon LLP, New 

York, NY, argued for appellant. Also represented by

WALTER E. HANLEY, JR., ALOYSIUS ANTONY PFEFFER. 

 ERIC SHUMSKY, Orrick, Herrington & Sutcliffe LLP, 

Washington, DC, argued for appellee. Also represented by

ANDREW S. ONG, Menlo Park, CA; ROBERT M. ISACKSON, 

New York, NY. 

______________________ 

Before LOURIE, DYK, and MOORE, Circuit Judges.
2 AIRBUS S.A.S. v. FIREPASS CORPORATION

LOURIE, Circuit Judge. 

Airbus S.A.S. (“Airbus”) appeals from the decision of 

the United States Patent and Trademark Office (“PTO”) 

Patent Trial and Appeal Board (“Board”) in an inter 

partes reexamination dismissing Airbus’s cross-appeal for 

lack of jurisdiction.* See Airbus S.A.S. v. Firepass Corp., 

No. 95/001,555, 2013 WL 5866589 (P.T.A.B. Oct. 29, 2013) 

(“Board Decision”), reh’g denied, 2014 WL 2121080 

(P.T.A.B. May 19, 2014) (“Rehearing Decision”). Because 

the Board erred in dismissing the appeal, we vacate its 

decision and remand. 

BACKGROUND

Firepass Corporation (“Firepass”) owns U.S. Patent

6,418,752 (the “’752 patent”), which is directed to using 

hypoxic compositions for preventing and extinguishing 

fires. In October 2009, Firepass brought suit against 

Airbus in the District Court for the Eastern District of 

New York alleging infringement of, inter alia, several 

claims of the ’752 patent. In February 2011, Airbus filed 

a request for inter partes reexamination of the ’752 patent. In its request, Airbus proposed that each of original 

claims 1, 2, 4, 7, and 8 was anticipated under 35 U.S.C. 

§ 102 by U.S. Patent 5,799,652 (“Kotliar”). J.A. 171. 

Airbus also proposed that claims 1, 2, 4, and 7 were

anticipated under § 102 by (1) Boeing Military Airplane 

* The Leahy-Smith America Invents Act amended 

the inter partes reexamination provisions of the Patent 

Act. See Leahy-Smith America Invents Act, Pub. L. No. 

112-29, § 6, 125 Stat. 284, 299–305 (2011) (“AIA”). As 

those amendments do not apply here because the request 

for inter partes reexamination in this case was filed before 

the date of enactment, September 16, 2011, id., we express no opinion on the applicability of the AIA provisions 

to the current case.

 
AIRBUS S.A.S. v. FIREPASS CORPORATION 3

Co., “Vulnerability Methodology and Protective Measures 

for Aircraft Fire and Explosion Hazards,” Final Report 

AFWALTR-85-2060 (1986) (“AFWAL 2060”); and (2) T.C. 

Knight et al., “The AH-64A Nitrogen Inerting System,” 

AIAA-84-2480 (1991) (“Knight”). J.A. 174, 178. The PTO 

granted Airbus’s request in part, finding that Kotliar

presented a substantial new question of patentability, but 

also found that Knight and AFWAL 2060 did not present 

a substantial new question of patentability. In July 2011, 

the district court in the meantime stayed its litigation 

pending resolution of Airbus’s reexamination request.

During reexamination, Firepass added independent 

claim 91 and dependent claims 92–94. Claim 91 was 

based on original claim 1, and “includes both the limitations set forth in [c]laim 1 . . . , as well as additional 

narrowing limitations.” Appellee’s Br. 11. In response to 

the new claims, Airbus proposed the following obviousness rejections under 35 U.S.C. § 103: (1) claims 91–93 

over Kotliar in view of AFWAL 2060; (2) claim 94 over 

Kotliar in view of AFWAL 2060 and Knight; and (3) claim 

94 over Kotliar in view of AFWAL 2060 and the 

knowledge of one of ordinary skill in the art. The Examiner, however, found that the proposed rejections based on 

AFWAL 2060 and Knight did not present a substantial 

new question of patentability. Nevertheless, the Examiner ultimately rejected claims 91–94 under 35 U.S.C. § 112, 

¶ 1 for lack of written description. 

Firepass appealed from the rejection of claims 91–94

under § 112, ¶ 1, and Airbus cross-appealed from the 

Examiner’s refusal to adopt the proposed obviousness 

rejections of claims 91–94. Board Decision at *1. The 

Board first reversed the Examiner’s rejection of claims 

91–94 under § 112, ¶ 1, finding that the claims were 

supported by an adequate written description. Id. at *11. 

But the Board then dismissed Airbus’s cross-appeal 

relating to the same claims, finding that “the statutory 

authority for third-party requester appeals is . . . express-
4 AIRBUS S.A.S. v. FIREPASS CORPORATION

ly limited to the review of examiner final decisions that 

are ‘favorable to the patentability’ of a claim.” Id. at *12 

(quoting 35 U.S.C. §§ 134(c), 315(b) (2002)). The Board 

concluded that the “determination of a ‘[l]ack of a substantial new question of patentability is not a favorable 

decision on patentability.’” Id. (quoting Belkin Int’l, Inc. 

v. Kappos, 696 F.3d 1379, 1383 (Fed. Cir. 2012)). Accordingly, the Board dismissed Airbus’s cross-appeal for lack 

of jurisdiction. Id.

Airbus requested rehearing, but the Board denied the 

request. Rehearing Decision at *1. The Board wrote that 

§§ 134(c) and 315(b) and 37 C.F.R. § 41.61(a)(2) only 

provide for the Board to review a decision favorable to the 

patentability of any claim, including new claims. Id. at 

*2. The Board again concluded that the Examiner’s 

finding of no substantial new question of patentability 

was not a decision favorable to patentability. Id. (citing 

Belkin, 696 F.3d at 1383). The Board also confirmed that 

it did not dismiss the cross-appeal because the Examiner 

had found no substantial new question of patentability 

with respect to the original claims, but it did so based on 

the Examiner’s subsequent, independent determination 

that Airbus’s proposed rejections of new claims 91–94 

raised no substantial new question of patentability. Id.

Airbus timely appealed to this court. We have jurisdiction pursuant to 28 U.S.C. § 1295(a)(4)(A).

DISCUSSION

We review the Board’s legal determinations, including 

whether the Board possessed jurisdiction in a case before 

it, de novo. In re Gartside, 203 F.3d 1305, 1315 (Fed. Cir. 

2000). Statutory interpretation is a question of law that 

we likewise review de novo. In re Kathawala, 9 F.3d 942, 

945 (Fed. Cir. 1993).

Inter partes reexamination is a two-step process. 

First, “after the filing of a request for inter partes reexam-
AIRBUS S.A.S. v. FIREPASS CORPORATION 5

ination under section 311, the Director shall determine 

whether a substantial new question of patentability 

affecting any claim of the patent concerned is raised by 

the request.” 35 U.S.C. § 312(a) (2006). After the Director has determined that there is a substantial new question of patentability affecting a claim, the Director orders

“inter partes reexamination of the patent for resolution of 

the question.” Id. § 313. 

After institution, § 314(a) provides that “reexamination shall be conducted according to the procedures established for initial examination under the provisions of 

sections 132 and 133.” Id. § 314(a). The patentee is 

“permitted to propose any amendment to the patent and a 

new claim or claims, except that no proposed amended or 

new claim enlarging the scope of the claims of the patent 

shall be permitted.” Id. In addition, after institution, a 

third-party requester is limited to citing certain additional prior art: 

(1) which is necessary to rebut a finding of fact by 

the examiner;

(2) which is necessary to rebut a response of the patent owner; or

(3) which for the first time became known or 

available to the third party requester after the filing of the request for inter partes reexamination 

proceeding. Prior art submitted under paragraph 

(a)(3) of this section must be accompanied by a 

statement as to when the prior art first became 

known or available to the third party requester 

and must include a discussion of the pertinency of 

each reference to the patentability of at least one 

claim.

37 C.F.R. § 1.948(a) (emphasis added).

Airbus argues that the Board erred in dismissing the 

cross-appeal relating to the Examiner’s refusal to consider 
6 AIRBUS S.A.S. v. FIREPASS CORPORATION

proposed rejections to new claims because of a deemed

lack of a substantial new question of patentability. According to Airbus, Knight and AFWAL 2060 were properly cited under § 1.948(a)(2), and the determination of a 

substantial new question of patentability is irrelevant to 

new claims proposed by a patentee during the course of 

an inter partes reexamination. Airbus contends that the 

determination of a substantial new question of patentability is only applicable to arguments made by a requester in 

an inter partes reexamination request prior to institution. 

Airbus also argues that, in the alternative, an examiner’s 

decision that a proposed rejection raises no substantial 

new question of patentability is appealable because it is a 

decision favorable to patentability.

Firepass responds that the Board correctly dismissed 

Airbus’s cross-appeal because Airbus may not appeal from 

an examiner’s decision that a proposed rejection raises no 

substantial new question of patentability. Firepass 

asserts that § 312(a) obligates the Director to determine 

whether a substantial new question of patentability has 

been raised with respect to “any claim of the patent” that 

a third-party requester asks the PTO to review. Firepass 

argues that the relevant statutory framework, PTO 

regulations, and the Manual of Patent Examining Procedure (“MPEP”) do not distinguish between original and 

added claims. Therefore, Firepass contends that the 

substantial new question of patentability test was properly applied to new claims 91–94.

We agree with Firepass that a party may not appeal 

from an examiner’s decision that a proposed rejection fails 

to raise a substantial new question of patentability on the 

ground that such a decision is one favorable to patentability. Belkin, 696 F.3d at 1383. Such a decision is not a 

patentability decision, favorable or otherwise; it is a 

substantial new question decision. Thus, that argument 

of Airbus’s fails.
AIRBUS S.A.S. v. FIREPASS CORPORATION 7

However, the provision requiring a determination of a 

substantial new question of patentability was not applicable to the case once the Director already had ordered 

reexamination on the ground that other prior art raised a 

substantial new question of patentability. We therefore 

agree with Airbus that the Board erred in dismissing the 

cross-appeal for lack of jurisdiction because the Examiner 

incorrectly refused to consider proposed rejections to

newly-added claims after reexamination had been instituted.

Once reexamination has been instituted, it is only 37 

C.F.R. § 1.948(a)(2) that limits the prior art that can be 

raised by the third-party requester in proposed rejections 

to newly-added or amended claims. Although § 312(a) 

requires the Director to “determine whether a substantial 

new question of patentability affecting any claim of the 

patent concerned is raised by the request,” the statute 

notably does not contain the same requirement for proposed rejections to claims added or amended after institution of the reexamination. 35 U.S.C. § 312(a) (2006). 

Section 312 is expressly limited to the pre-institution 

request from the third party. Id.

Section 314 governs the conduct of inter partes reexamination proceedings, and it provides that “reexamination shall be conducted according to the procedures 

established for initial examination under the provisions of 

sections 132 and 133.” Id. § 314(a). Sections 132 and 133, 

in turn, discuss the initial prosecution of an application. 

See id. § 132 (titled “Notice of rejection; reexamination”); 

id. § 133 (titled “Time for prosecuting application”). None 

of those sections requires an examiner to evaluate proposed rejections to new claims added during reexamination for a substantial new question of patentability; 

instead, the statute only directs the examiner to follow 

“the procedures established for initial examination.” Id.

§ 314(a). 
8 AIRBUS S.A.S. v. FIREPASS CORPORATION

In addition to the framework established by § 314 for 

the conduct of reexamination proceedings, PTO regulations explicitly restrict the prior art that can be raised by 

the third-party requester once the Director has ordered 

inter partes reexamination. 37 C.F.R. § 1.948(a)(2) limits

a third-party requester to use of additional prior art that, 

inter alia, “is necessary to rebut a response of the patent 

owner.” The language, “is necessary to rebut,” provides a 

gatekeeping function to control the additional prior art 

that a third-party requester may bring into the reexamination. Section 1.948(a)(2) thus limits the third-party’s

ability to cite additional prior art against a newly-added 

or amended claim with respect to limitations for which 

the prior art has already been considered either during

original prosecution or in the request for reexamination. 

“The MPEP [is] commonly relied upon as a guide to 

patent attorneys and patent examiners on procedural 

matters . . . .” Litton Sys., Inc. v. Whirlpool Corp., 728 

F.2d 1423, 1439 (Fed. Cir. 1984). Although the MPEP 

does not have the force of law, it is entitled to judicial 

notice “so far as it is an official interpretation of statutes 

or regulations with which it is not in conflict.” Id. Here, 

the MPEP is consistent with the statutory scheme and 

§ 1.948(a)(2). MPEP § 2666.05, titled “Third Party Comments After Patent Owner Response,” pertains to 

§ 1.948(a)(2) and the limitations on submission of prior 

art by the third-party requester after the order for inter 

partes reexamination. According to § 2666.05, “any such 

new proposed rejection stands on the same footing as a 

proposed rejection presented with the request for reexamination.” MPEP § 2666.05 (2008). Section 2666.05 continues, citing MPEP § 2617 for “the required discussion of 

the pertinency of each reference,” and directing that “[a]n 

explanation pursuant to the requirements of 35 U.S.C. [§] 

311 of how the art applies is no less important at this 

stage of the prosecution, than it is when filing the request.” Id.
AIRBUS S.A.S. v. FIREPASS CORPORATION 9

Section 2617, in turn, provides guidelines for applying

prior art in the request for inter partes reexamination, 

and states that the request “must ‘set forth the pertinency 

and manner of applying cited prior art to every claim for 

which reexamination is requested.’” Id. § 2617 (quoting

35 U.S.C. § 311(b)(2) (2006)). Citing PTO regulations, 

§ 2617 requires a statement pointing out each substantial 

new question of patentability, but that requirement only 

extends to the request for reexamination. Id. (citing 37 

C.F.R. § 1.915(b)(3)). Consequently, neither § 2617 nor 

§ 2666.05 explicitly or implicitly directs an examiner to 

determine whether a proposed rejection presents a substantial new question of patentability with respect to a 

new or amended claim. Section 2617 only directs the 

third-party requester to present an explanation of how 

the proposed rejections apply to each of the claims, which, 

in the case of a request, entails a discussion of a substantial new question of patentability. 

In this case, Airbus’s proposed citation of prior art is 

well within § 1.948(a)’s permission to cite prior art “which 

is necessary to rebut a response of the patent owner.” 

That response that Airbus is entitled to rebut was the 

addition of new claims 91–94. Whether it rebuts those 

claims is a question for the Examiner on remand.

Firepass’s additional reliance on Belkin is misplaced. 

In Belkin we considered whether the Board has jurisdiction to decide if a substantial new question of patentability exists with respect to a prior art reference before 

institution of inter partes reexamination. Belkin, 696 

F.3d at 1382. We concluded that the “Director’s determination that an issue does not raise a substantial new 

question of patentability is not a decision favorable to 

patentability.” Id. at 1383. We explicitly declined, however, to “reach the issue of what prior art references the 

PTO may or may not consider during reexamination in 

response to an amended or substituted claim.” Id. at 1384 

n.2. Thus, Belkin does not inform our understanding of 
10 AIRBUS S.A.S. v. FIREPASS CORPORATION

the availability of prior art in a proposed rejection after 

reexamination has been instituted.

The Board erred here because it premised its dismissal of Airbus’s cross-appeal on the Examiner’s decision not 

to consider Airbus’s proposed rejections because of a lack 

of a substantial new question of patentability. But, once 

the Director ordered inter partes reexamination it was

§ 1.948(a), not a determination of a substantial new 

question of patentability, that governed the limitations on 

Airbus’s submission of prior art. Thus, the Examiner 

erred in evaluating Knight and AFWAL 2060 for a substantial new question of patentability, when his evaluation should have been conducted under § 1.948(a)(2). We 

have considered Firepass’s remaining arguments and find 

them unpersuasive. 

CONCLUSION

Because the Board erred in dismissing Airbus’s crossappeal for lack of jurisdiction, we vacate and remand for 

further proceedings consistent with this opinion.

VACATED AND REMANDED

COSTS

Costs to Airbus.