[00:00:00] Speaker 04:
This is Inray Black, 2018, 1166.

[00:00:04] Speaker 04:
Mr. Lucas.

[00:00:06] Speaker 00:
Good morning, Your Honors.

[00:00:12] Speaker 00:
James Lucas on behalf of Appellants Black and Hayes.

[00:00:18] Speaker 00:
May it please the Court?

[00:00:20] Speaker 00:
Appellants here are requesting this Court to reverse a decision by the Board, finding Claim 1,

[00:00:29] Speaker 00:
obvious as discussed in the briefs.

[00:00:32] Speaker 00:
We think it's readily transparent that the board did not make out a prima facie case of obviousness.

[00:00:40] Speaker 00:
The board addresses this multi-passage or multi-clause tag file limitation and specifically defines it as the tag file limitation and then goes through the art, the prior art, and never addresses multiple limitations in that tag file limitation.

[00:00:59] Speaker 00:
saying the board misconstrued this the tech file limitation i mean is this a claim construction no we're not saying that because uh the board did define the word tech file but what happens is it's really more of a just disregarded the claim language that the board determined and i think uh both parties determined to

[00:01:22] Speaker 00:
didn't require necessarily a construction, just ignored multiple clauses of the claim.

[00:01:31] Speaker 00:
And I can kind of address some of those.

[00:01:32] Speaker 05:
So you're saying the multiple clauses do not collectively constitute a tag file?

[00:01:38] Speaker 05:
I thought that was the point.

[00:01:42] Speaker 00:
Well, to be clear, the board did define the word tag file.

[00:01:46] Speaker 00:
The board never defined tag file limitation, but addressed

[00:01:49] Speaker 00:
I should say, did address the entire tag file limitation.

[00:01:52] Speaker 00:
It didn't do an actual claim construction of the tag file limitation.

[00:01:56] Speaker 00:
The point is then when it made this determination as to whether the prior art disclosed the elements of the claim, it just said it disclosed a tag file.

[00:02:06] Speaker 00:
It ignored the rest of the limitations of the tag file limitation.

[00:02:11] Speaker 00:
I think that's the point.

[00:02:12] Speaker 00:
And those are that the tag file has to be associated with a GUI-activatable link.

[00:02:19] Speaker 00:
for example, that the tag file has to be packaged together and include in a single file a definition of the controllable device and a listing of the commands.

[00:02:31] Speaker 00:
And then also, if you go down further into the claim, once a request is made on the GUI and the activatable link, it has to actually execute this tag file.

[00:02:42] Speaker 02:
What's your argument?

[00:02:44] Speaker 02:
Where's the error here?

[00:02:47] Speaker 00:
The error is really that the board

[00:02:50] Speaker 00:
failed to find that the prior art disclosed taught or suggested all the limitations of claim one and specifically all the limitations of the tag file limitations.

[00:03:04] Speaker 05:
So most, but your primary focus though is on the fact that

[00:03:09] Speaker 00:
the prior act doesn't disclose the storage of the definitions and commands in a in a single tag file and it doesn't it doesn't also at the slave relay and then also that that you can't basically use a cell phone hit the activatable link and execute that tag file that that's never they never even discussed that in fact if you look at the original decision

[00:03:31] Speaker 00:
which is appendix six through 16, and I'll direct you to a specific point, at appendix 14.

[00:03:42] Speaker 00:
They go through R-Ling, and then they say, we find this passage of R-Ling teaches a data structure that defines the command to be transmitted to a controlled device upon activation of a tag in a controlled device.

[00:03:53] Speaker 00:
That is strictly their definition of a tag file.

[00:03:56] Speaker 00:
They ignore all the other limitations of the tag file limitation

[00:04:01] Speaker 00:
that is physically discussed at appendix 10.

[00:04:04] Speaker 00:
They actually go through the two clauses.

[00:04:06] Speaker 05:
I understand this might be a matter of semantics, but you argue that they shouldn't have found that all the elements of the claim are in the prior art.

[00:04:17] Speaker 05:
But it seems like you're also saying because they misunderstood what all the elements of the claim are.

[00:04:26] Speaker 00:
Well, I think they just ignored them.

[00:04:28] Speaker 00:
And then, and then, and just found you're right.

[00:04:31] Speaker 00:
I mean, it's kind of blatant.

[00:04:32] Speaker 00:
They just found, yeah, the tag file is disclosed, but they forgot about the rest.

[00:04:37] Speaker 00:
I agree.

[00:04:37] Speaker 00:
It's almost so blatant.

[00:04:40] Speaker 00:
I agree with that.

[00:04:41] Speaker 00:
And then what happens is if you look at the rehearing decision, then the appellant

[00:04:47] Speaker 00:
you know, says, look, you didn't find all of these limitations of the tag file limitation are disclosed in the prior.

[00:04:53] Speaker 00:
You never even got there.

[00:04:54] Speaker 00:
You just said to the tag file and goes through all those limitations.

[00:04:57] Speaker 00:
And then they said, well, the board says, kind of agrees.

[00:05:01] Speaker 00:
And that says, well, it was implicit that we had, in our earlier opinion, we had done all that, OK, but still doesn't address all of those other limitations in the rehearing decision.

[00:05:13] Speaker 00:
So yes, I mean, I think the, the,

[00:05:17] Speaker 00:
The big issue is that the board failed to make out a permanent fashion case of obviousness because they failed to show that the prior art alone or in combination met, excuse me, disclosed, taught, or suggested all of the elements of claim one.

[00:05:32] Speaker 00:
That's flaring.

[00:05:33] Speaker 05:
If there was a motivation to combine not a Gmail, would that have been enough to fill the gap on those other limitations?

[00:05:43] Speaker 00:
No, I don't think so.

[00:05:45] Speaker 00:
They only use, at the end, in the rehearing decision, and actually I think the appeal decision, they only use Nakajima for direct transmission.

[00:05:57] Speaker 00:
Simply saying, originally the examiner actually said, if you might have noticed this, that the commands are directly transmitted to the TV and the auxiliary devices.

[00:06:07] Speaker 00:
Then the board switched over and said, and that doesn't make any sense, because the

[00:06:11] Speaker 00:
The remote control is not the slave relay.

[00:06:13] Speaker 00:
We have to make the slave relay the TV.

[00:06:15] Speaker 00:
The problem is Nakajima is completely different because Nakajima is basically just allowing all of your appliances to use a visual guide on the TV.

[00:06:31] Speaker 00:
Basically, everything's already there because it was brought in by the controlled appliances to the TV.

[00:06:38] Speaker 00:
What's unique about this is this basically

[00:06:40] Speaker 00:
the invention of the claim one, it allows you to take your cell phone and say, I want to watch the Super Bowl.

[00:06:46] Speaker 00:
And then what happens is you activate that, say like the thing for the listing for the Super Bowl.

[00:06:53] Speaker 00:
And what happens is you have a complete tag file that has the definitions of everything you need to see, to find the right device.

[00:07:03] Speaker 00:
Say you have a Samsung TV.

[00:07:05] Speaker 00:
It has that in there.

[00:07:06] Speaker 00:
And it also has the commands to set the TV to the right channels.

[00:07:10] Speaker 00:
In a complete executable file so you can hit that and makes us look and that's all stored on the slave relay and then it allows you to to write to the To to write to the Super Bowl and the TV to write to the Super Bowl because you've hit it on the cell phone It's very unique in that it's packaged and it's already

[00:07:32] Speaker 00:
It's all packaged together in a single executable file.

[00:07:35] Speaker 00:
I think that's another thing.

[00:07:35] Speaker 00:
You never see the word executed in any of the board's decisions.

[00:07:39] Speaker 00:
And that's telling because that relates to the second clause of the tag file limitation, where it specifically says executing the tag file, where upon a communication protocol corresponding to the definition and also corresponding to the commands is directly sent.

[00:08:01] Speaker 00:
I do want to address a couple of the... So that's really the crux of it on the issue of obvious.

[00:08:10] Speaker 00:
It's really that the board just failed to find that multiple limitations were disclosed by the prior art.

[00:08:15] Speaker 00:
And it's a blatant failure.

[00:08:18] Speaker 05:
In the reconsideration order, do you think that the board does not do enough to explain

[00:08:30] Speaker 05:
where it finds the other limitations?

[00:08:34] Speaker 00:
I do.

[00:08:34] Speaker 00:
I do think that.

[00:08:35] Speaker 00:
Let me just pull that up for you.

[00:08:37] Speaker 00:
It's very short, again, and this is where they now add in what we call an inherency finding that they never brought up before.

[00:08:47] Speaker 00:
What we meant to say implicit in that finding is that everything was in our link, both the definition and the commands.

[00:08:58] Speaker 00:
The problem is that

[00:09:00] Speaker 00:
They now rely exclusively on R-Link, it seems like, for everything in the tag file limitation.

[00:09:05] Speaker 05:
Pretty much everything other than the direct.

[00:09:07] Speaker 00:
The direct, exactly.

[00:09:09] Speaker 00:
But still not enough.

[00:09:09] Speaker 00:
And it's not enough because it doesn't address the execution.

[00:09:16] Speaker 00:
And I think that really just addresses, at most, the first clause of the tag file limitation.

[00:09:23] Speaker 00:
But it doesn't address, and you can see, it doesn't address the second clause of the tag file limitation, the in response clause.

[00:09:29] Speaker 00:
There's nothing about in response to receiving the request like we just talked about that you execute the tag file and then a communication protocol is sent and all that kind of stuff.

[00:09:42] Speaker 00:
None of that's discussed.

[00:09:43] Speaker 00:
They're just addressing the first clause at the very most.

[00:09:47] Speaker 00:
I can get into Arlene doesn't even disclose that because what Arlene does, but I don't even know if I need to unless you'd like to.

[00:09:54] Speaker 00:
Arlene doesn't even disclose that, but I think that's more of a

[00:09:57] Speaker 00:
a fact issue because what Arlene does is Arlene just takes state data.

[00:10:03] Speaker 00:
It has like a state server and all Arlene does is kind of looks at, you know, what the state is of certain appliances that are being controlled in different locations and then just reports back the state.

[00:10:17] Speaker 00:
Now, the only way you would ever even, so that state data alone,

[00:10:22] Speaker 00:
there's no command data and definition data packaged together with that state data.

[00:10:26] Speaker 00:
The only way you would ever even get into, there is the discussion of commands and command conversion, but the only way that happens is if you change locations and then you need the state server to have to try to recreate the state at the earlier location.

[00:10:45] Speaker 00:
It might not happen though, because it might be that you have the same exact TV in two different rooms, a lot of other stuff, regardless.

[00:10:52] Speaker 00:
That's not an executable situation.

[00:10:55] Speaker 00:
That's just basically, much later on, you might have to create commands, and you might have to create the definitions of the devices.

[00:11:02] Speaker 00:
So it still doesn't even disclose that first clause, and definitely doesn't even address the second clause of the tag file limitation.

[00:11:10] Speaker 00:
I think I will reserve unless there's further questions.

[00:11:13] Speaker 04:
We will do that.

[00:11:14] Speaker 00:
Thank you, guys.

[00:11:16] Speaker 04:
Take a look.

[00:11:21] Speaker 01:
Thank you, Your Honors, and may it please the Court.

[00:11:25] Speaker 01:
Our position is waiver, that Appellant made very limited arguments to the Board.

[00:11:33] Speaker 01:
I respectfully invite the Court's attention to page 188 of the record, and that's Appellant's brief argument to the Board.

[00:11:44] Speaker 01:
It only spans a few pages, and as the Board

[00:11:50] Speaker 01:
quoted in its decision, it was addressing tag file and the two clauses after tag file, definition of a controllable device, and a set of commands.

[00:12:05] Speaker 01:
We know the board addressed that by the board's decision.

[00:12:09] Speaker 05:
So what are you saying was waived, the issue of motivation to combine with respect to NACA Gmail?

[00:12:15] Speaker 05:
Or are you saying that it was waived, Your Honor?

[00:12:18] Speaker 04:
What was weird?

[00:12:21] Speaker 01:
That he targeted his arguments in his brief to the board at page 188 to 191, and they were just about a few limitations in the claim, not being present in the prior article.

[00:12:41] Speaker 05:
But the claim says what it says, right?

[00:12:44] Speaker 05:
So as it relates to the claim,

[00:12:47] Speaker 05:
There's a lot of limitations in the claims.

[00:12:50] Speaker 05:
And the parties collectively refer to those as essentially the tag file limitation.

[00:12:56] Speaker 05:
And my problem is I just don't see how Arling teaches everything.

[00:13:03] Speaker 05:
And I certainly don't see where the board says that Arling teaches everything.

[00:13:09] Speaker 05:
So what about that discussion was waived?

[00:13:13] Speaker 05:
And where in Arling do you find?

[00:13:15] Speaker 05:
I mean, the board just says, well, it must have been in there.

[00:13:18] Speaker 05:
I don't even understand that on reconsideration.

[00:13:20] Speaker 05:
The board just sort of says, well, in order to do what it did, it probably had to have this.

[00:13:26] Speaker 05:
But it didn't point to anything in our language to show us.

[00:13:31] Speaker 05:
So are you saying that he waived his right to have the board actually find the elements of the claim in the prior art?

[00:13:44] Speaker 01:
In part, Your Honor, because on page 164 of the record, the examiner over four pages set forth a strong prima facie case largely founded on Niwamoto, which shows the three block elements, a remote, a relay, and a controllable device such as a TV or DVR.

[00:14:14] Speaker 01:
And the examiner said, what's missing is just how you store the data to have a tag file as to the particular controllable device.

[00:14:33] Speaker 01:
Because Niwamoto did it by way of a user ID and apparatus.

[00:14:37] Speaker 01:
And that's on page 165.

[00:14:38] Speaker 05:
But the board just relies on our own.

[00:14:40] Speaker 01:
because that's all that was argued to the board.

[00:14:43] Speaker 01:
What was argued to the board was that the tag file part of the claim, which includes the two word phrase tag file and the definitions of the controllable device and the set of commands, that's the tag file part of the claim.

[00:15:00] Speaker 01:
Applicant in its four page argument section to the board said that those three parts of the

[00:15:10] Speaker 01:
tag file part of the claim are not found in, as the examiner said, Arling or Nakajima.

[00:15:18] Speaker 01:
But the board, in its first decision, said, yes, tag files found in Arling, and then it discussed Nakajima very thoroughly on page 15 of the record and said the big parts of the claim as to tag file are in Nakajima.

[00:15:33] Speaker 01:
Then on rehearing, the board realized that for Arling, it did

[00:15:39] Speaker 01:
its job about halfway.

[00:15:41] Speaker 01:
And then it iterated how the examiner, and this is on page 199 of the record, the examiner almost quoted from Arlen device definitions on page 199 of the record.

[00:16:00] Speaker 01:
And this is where the board in its second decision picked up on, this is an appeal

[00:16:09] Speaker 01:
going on here.

[00:16:10] Speaker 01:
There was a prosecution before the examiner with the examiner's findings, and the board used the examiner's findings.

[00:16:18] Speaker 02:
What does the board state its analysis or its reasoning with respect to the motivation to combine Ireland and Nakajima?

[00:16:26] Speaker 01:
Well, I have to say, Your Honor, that the examiner found the motivation as to... What does the board state the motivation?

[00:16:39] Speaker 01:
It doesn't, because it wasn't argued to the board specifically or generally.

[00:16:43] Speaker 02:
But that's what the board found.

[00:16:45] Speaker 02:
It found there's a motivation to combine Arlington and Nakajima.

[00:16:51] Speaker 02:
Other than just saying that, it doesn't explain what the motivation was or say anything else.

[00:16:57] Speaker 01:
I'm sorry, Your Honor.

[00:16:57] Speaker 01:
I respectfully disagree.

[00:16:59] Speaker 01:
Because what was argued to the board, and this is all that was argued to the board, again, page 188, 191,

[00:17:08] Speaker 01:
is that the two supplemental references, Arling and Nakajima, lack this tagfile part to the claim.

[00:17:18] Speaker 01:
And this is what we're relying on to the board.

[00:17:20] Speaker 01:
Once the board found that the tagfile part was present in two prior art references and the examiner had found motivation, and that's on page 167 of the record, the examiner

[00:17:36] Speaker 01:
had expressly said, which was not contested by the applicant to the Board of Appeals, the examiner said that one would have been motivated to use the functionality of Arling because it provides an established system of accessing information, improving overall operability.

[00:17:55] Speaker 01:
That's on page 166.

[00:17:55] Speaker 01:
So again, we have to present it this way because of what was argued specifically to the Board

[00:18:04] Speaker 01:
And the board addressed everything that was argued to it.

[00:18:07] Speaker 01:
As I said a little while ago, it took two decisions for the board to really show how Arling discloses the three parts of the tag file part, the command control, which comes from the specification that the board found, and the definition of controllable device and set of commands.

[00:18:28] Speaker 01:
And the board cleaned things up in its rehearing decision.

[00:18:31] Speaker 01:
But even in the rehearing request,

[00:18:34] Speaker 01:
which is on page.

[00:18:35] Speaker 05:
Well, I don't really understand.

[00:18:36] Speaker 05:
So tell me where in the rehearing decision you think the board really cleaned things up, because all I see is, well, we don't have to say that Erling really shows the definitions and commands in a single tag file, because it must have.

[00:18:54] Speaker 05:
I mean, it kind of says it inherently had to have.

[00:18:58] Speaker 05:
I don't understand it.

[00:19:01] Speaker 01:
It says more than that, Your Honor.

[00:19:05] Speaker 01:
What it says, I'm on page 4 of the record and starting near the top around line 5 on page 4.

[00:19:17] Speaker 01:
It said we did not disregard the other two limitations argued.

[00:19:22] Speaker 01:
And what it says here, it says this is where I was going with how it relies on the examiner's answer.

[00:19:28] Speaker 01:
The examiner quoted

[00:19:31] Speaker 01:
from Arling device definitions, and that's found on page 57 of the record in Arling paragraph 30.

[00:19:40] Speaker 01:
And so before the must store, which is around line 20 of this key page, this is page 3 of the Board's rehearing decision, page 4 of the record, above that, the Board says a lot.

[00:19:53] Speaker 01:
The Board says they agree with the examiner, and the Board's allowed to do this, that the examiner worked hard and made

[00:20:01] Speaker 02:
Did the board establish or find obviousness on a different basis than the examiner?

[00:20:07] Speaker 01:
No, not at all, Your Honor.

[00:20:09] Speaker 01:
The examiner combined the three references and Nakajima, buttresses, Arling, they both show the tag-file part of the claim and there was motivation in those two references that the examiner found to combine that with the primary reference, Niwamoto, and then

[00:20:27] Speaker 01:
applicant chose what to argue to the board for reverse voting.

[00:20:31] Speaker 02:
But wasn't this inherent disclosure that the board talks about that was something new that the board found?

[00:20:39] Speaker 02:
The examiner did not make that finding.

[00:20:44] Speaker 01:
The examiner actually did, Your Honor.

[00:20:47] Speaker 01:
It's about, on this page, page four of the record, the board expressly

[00:20:57] Speaker 02:
I know the board did.

[00:20:58] Speaker 02:
I'm talking about the examiner.

[00:21:00] Speaker 02:
The examiner did not make this inherent disclosure.

[00:21:03] Speaker 01:
No, the examiner made an express disclosure, and the board did it two ways on this page.

[00:21:08] Speaker 02:
And the board made an inherent disclosure in order to make it all work.

[00:21:13] Speaker 01:
I'm sorry, Your Honor.

[00:21:14] Speaker 01:
That's not all of it.

[00:21:15] Speaker 02:
And then it seems to me, and this goes to the question I was asking you before, there's no articulation of a motivation to combine on the basis of that inherent disclosure.

[00:21:26] Speaker 01:
Your Honor, I'd like to respectfully point the Court to, on this page four of the record, in the top part, the Board went to precisely the examiner's two pages, which made the findings I believe you're talking about, that the tag file part was disclosed in Arling.

[00:21:49] Speaker 01:
And so we see that on page four, discussing Arling paragraph 30, the Board went to the examiner's answer.

[00:21:57] Speaker 01:
It is our agreement with the examiner that Arling's teaching of command conversion to address a particular controllable device.

[00:22:03] Speaker 05:
So the board says, we didn't really ignore all these limitations.

[00:22:07] Speaker 05:
The examiner found that Arling and Nakashima taught them.

[00:22:12] Speaker 05:
And so we agreed.

[00:22:15] Speaker 05:
But that's it.

[00:22:16] Speaker 05:
And then they add the... In our agreement is that we found them.

[00:22:20] Speaker 05:
But it doesn't say how or where.

[00:22:23] Speaker 05:
And farther down in that

[00:22:26] Speaker 05:
page which you cite to as the detailed fixing of things by the board, it says Arling must store both devices definitions for the different devices as well as commands.

[00:22:41] Speaker 05:
But it doesn't say this is where Arling describes that or this is where Arling shows it.

[00:22:47] Speaker 05:
It just says it must do that inherently.

[00:22:52] Speaker 05:
I don't understand how that's an obvious misdetermination.

[00:22:56] Speaker 01:
It is, Your Honor, because just above that, the board just said that the examiner relied expressly on Arling paragraph 30 for the challenge limitations.

[00:23:12] Speaker 01:
And this sentence a little ways down is like a conclusion that because Arling, and respectfully inviting the Court's attention to Arling paragraph 30,

[00:23:26] Speaker 01:
pages 57 and 58 of the record.

[00:23:30] Speaker 01:
Arling on page 57 in paragraph 30 says, as the examiner and the board piggybacked on the examiner's finding, on page 57, this is Arling in paragraph 30, line 12, Arling says right there, device conversion definitions.

[00:23:51] Speaker 01:
And that is what the examiner was relying on to

[00:23:55] Speaker 01:
meet the other.

[00:23:57] Speaker 05:
What line are you on in paragraph 3?

[00:24:01] Speaker 01:
On page 50.

[00:24:02] Speaker 01:
Ten lines, ma'am.

[00:24:03] Speaker 01:
Yes.

[00:24:04] Speaker 01:
Okay.

[00:24:06] Speaker 01:
This disclosure is written in paragraphs.

[00:24:08] Speaker 01:
So there's a paragraph 30 in column 2, paragraph 30 going 12 lines down from that.

[00:24:16] Speaker 01:
We have device conversion definitions.

[00:24:19] Speaker 01:
And that's what the examiner was relying on.

[00:24:21] Speaker 01:
The examiner actually quoted that on page 199.

[00:24:25] Speaker 01:
The examiner talks about device definitions.

[00:24:27] Speaker 01:
And earlier in the prosecution, the examiner talked about Arling showing device definitions.

[00:24:33] Speaker 01:
So that's what the examiner was relying on.

[00:24:36] Speaker 01:
And the board expressly referenced that in its second decision.

[00:24:41] Speaker 01:
It should have in its first decision.

[00:24:42] Speaker 01:
But in its first decision, it had Nakajima, which expressly discloses

[00:24:50] Speaker 01:
in its paragraph 51, a controllable device specifications to generate interfaces and target controllable devices.

[00:24:58] Speaker 01:
So all of the tag file part of the claim is also supported by the substantial evidence in Nakajima.

[00:25:04] Speaker 01:
An applicant appellant to this court didn't contest that Nakajima finding, or at least I believe he hasn't.

[00:25:11] Speaker 01:
His primary focus was on the Arling analysis not being sufficient enough the first time through and the second time in their view.

[00:25:20] Speaker 05:
Nakajima shows that... Are you saying Nakajima shows anything other than the direct connection?

[00:25:26] Speaker 01:
Yes, Your Honor.

[00:25:27] Speaker 01:
As the board found on page 15 of the record in its first decision, Nakajima clearly, as the board was saying, Nakajima, and we know that by the board quoting what it was addressing before about Nakajima, it's on page 13, but Nakajima

[00:25:46] Speaker 01:
In this great block quote, this block quote has a lot of elements in it.

[00:25:50] Speaker 01:
It gets interface specifications from, this is in the middle of the block quote, auxiliary devices, and those are the controllable devices.

[00:25:59] Speaker 01:
So it's getting the uniqueness of each device to define and generate interfaces.

[00:26:04] Speaker 01:
And what we have here, a lot of us probably use universal remote controls as a remote, a relay in the middle, and then the relay is like a hub.

[00:26:12] Speaker 01:
It picks which device to go to, the board,

[00:26:16] Speaker 01:
addressed the arguments made to it, and the examiner set forth a full prima fiche case based on the evidence of record, which applicant then selected to the board.

[00:26:28] Speaker 05:
If the board has... Let me refer you to the figure that your portion of Arling was referring to.

[00:26:38] Speaker 05:
It's the figure, figure two.

[00:26:42] Speaker 04:
Yes, Your Honor.

[00:26:43] Speaker 05:
Now, this shows the definitions and the commands in separate places, right?

[00:26:53] Speaker 01:
They are used, Your Honor, yes, as, and the examiner didn't expressly rely on this, or the paragraph 31, which discusses device definitions, just those two words as a feature, item 135.

[00:27:09] Speaker 05:
That's from paragraph 30.

[00:27:11] Speaker 05:
So how is that in one tag path?

[00:27:16] Speaker 05:
How are those things in a single tag path?

[00:27:20] Speaker 01:
Well, Your Honor, I'm looking.

[00:27:25] Speaker 05:
Look at the difference between 135 and 132.

[00:27:33] Speaker 05:
135 is definitions.

[00:27:38] Speaker 05:
You see that?

[00:27:39] Speaker 01:
Yes, Your Honor.

[00:27:41] Speaker 01:
And we tried to understand that part of Appellant's brief, that how it would defeat the evidence actually relied on in paragraph 30, which says device definitions.

[00:27:53] Speaker 01:
And we don't think Arling is that narrow, that the Figure 2 embodiment is all that Arling is good for.

[00:28:01] Speaker 05:
And we tried to address that in our brief, that Arling... Figure 2 is what that Paragraph 30 cites to, and that's what the Board cited to.

[00:28:09] Speaker 05:
So I don't understand why that's not descriptive of what it is we're supposed to be looking at.

[00:28:19] Speaker 01:
But it also says that what we have in paragraph 30, as I referenced before line 12, device conversion definitions.

[00:28:30] Speaker 01:
And figures one and two are referenced in this paragraph.

[00:28:34] Speaker 01:
So what's going on here in

[00:28:37] Speaker 01:
this relied on substantial evidence by the board and examiner is that we've got device definitions and commands.

[00:28:46] Speaker 01:
It's very clear we have a lot of commands going on here.

[00:28:48] Speaker 01:
The question is that Arling uses, as has been challenged, device definitions.

[00:28:57] Speaker 01:
And how else would you isolate the device you wanted other than to have some type of

[00:29:04] Speaker 01:
within the command to get the command to go to that particular device.

[00:29:09] Speaker 01:
This is what the board and examiner relied on.

[00:29:10] Speaker 05:
So again, you're conceding that their entire analysis is that it must have been inherent in here.

[00:29:17] Speaker 05:
And you know that under our case law, the use of inherency in an obviousness analysis is an extremely limited concept.

[00:29:27] Speaker 01:
I'm sorry, Your Honor.

[00:29:29] Speaker 01:
This may take a few moments, seconds.

[00:29:33] Speaker 04:
Finish the answer.

[00:29:33] Speaker 01:
I'm not conceding.

[00:29:34] Speaker 01:
because when the board said the must at the bottom, and we agree this could have been better worded, above that, what the board was clearly relying on was what the examiner found, which I've referenced the court to pages 199.

[00:29:50] Speaker 05:
It doesn't matter what the examiner found if when you go back to the original source, it's not there.

[00:29:56] Speaker 05:
So if the examiner quote found it, the examiner's not evidence.

[00:30:00] Speaker 01:
Well, it's in Nakajima even more so than in Arling.

[00:30:04] Speaker 01:
And the board found these tag file parts to the claim in both references based on what was argued to the board.

[00:30:15] Speaker 01:
And I do submit that Nakajima is a clearer teaching in the concise block quote that the board used than Arling, which you do have to go across two pages in different figures.

[00:30:30] Speaker 01:
Nakajima hits the ball out of the park with,

[00:30:34] Speaker 01:
having interfaces and specifications from the auxiliary or controllable devices and that's a very strong position.

[00:30:44] Speaker 05:
So where does Nakajima disclose the tag file with all the limitations?

[00:30:49] Speaker 01:
As the board, thank you your honor, as the board found on page 15 the board was relying on Nakajima paragraph 51 and we have

[00:31:05] Speaker 01:
commands and we have controllable devices are the 104 to 108 and we get this is key specifications from these auxiliary devices and those specifications then generate interface interfaces and and we know that's electronics way of communicating so the specifications drive which auxiliary devices then at the end this is very key also targeted the

[00:31:34] Speaker 01:
relay targets particular controllable devices.

[00:31:38] Speaker 01:
So that's all that was needed for this broad claim, which just concerned one remote control and a controllable device at the end and a relay in the middle.

[00:31:47] Speaker 01:
And we submit that this claim could be maybe amended.

[00:31:50] Speaker 05:
But you conceded in your red brief that Nakajima wasn't offered for anything other than the direct transmission, right?

[00:31:58] Speaker 05:
I mean, this is my problem.

[00:31:59] Speaker 05:
A, you didn't argue waiver in your red break.

[00:32:01] Speaker 05:
B, you conceded in your red break that Nakajima was not the be all and end all, that it was only offered for this limited purpose.

[00:32:08] Speaker 05:
And that you had to find the combination of Arling, which you said covered all the tag file limitations, and Nakajima, which gives the direct connection.

[00:32:17] Speaker 05:
And that's how you put the two together.

[00:32:19] Speaker 05:
So you're coming up with a totally different argument here.

[00:32:21] Speaker 01:
I'm sorry, Your Honor.

[00:32:23] Speaker 01:
I believe.

[00:32:23] Speaker 05:
OK, well, you're way out of time.

[00:32:25] Speaker 05:
I'm sorry.

[00:32:25] Speaker 01:
Thank you.

[00:32:26] Speaker 04:
Thank you, Mr. Piccolo.

[00:32:30] Speaker 04:
Mr. Lucas S. from the Republican.

[00:32:33] Speaker 00:
Thank you, Your Honor.

[00:32:34] Speaker 00:
I'll be brief.

[00:32:35] Speaker 00:
I think the record is very clear that the examiner and the board never found that the tag file limitation we'd be discussing was disclosed by the prior art.

[00:32:47] Speaker 00:
There is no waiver.

[00:32:49] Speaker 00:
Those arguments were made by the appellant during the prosecution of the patent and also before this court, before the board,

[00:32:56] Speaker 00:
uh... specifically uh... they consistently addressed that's what counts for the board that's what counts for the board correct and then they were and i mean i can direct you to those if you'd like but i mean it was very clear that that uh... and in the appeal brief at uh... one eighty five through uh... through one eighty one it's it's argued you know over and i think at one eighty nine it's it's very clear that

[00:33:24] Speaker 00:
that the appellant is arguing that the entire tag file limitation is not disclosed by the prior art, also done at 190.

[00:33:33] Speaker 05:
Oh, does the board's citation to paragraph 30 of Arlen fix all that?

[00:33:40] Speaker 00:
It does not.

[00:33:41] Speaker 00:
First of all, going back to the, there was discussion about the examiner, excuse me, the board relying on the examiner.

[00:33:47] Speaker 00:
The examiner only found

[00:33:54] Speaker 00:
Initially, and it is obviously in this final offsection, that Arlene disclosed the definition and the commands.

[00:34:05] Speaker 00:
And that, once again, at the very most, is that first clause of the tag file limitation.

[00:34:15] Speaker 00:
We still, there's still, it was never even discussed.

[00:34:19] Speaker 00:
there's never any discussion of this complete executable tag file that's executed in that second clause.

[00:34:25] Speaker 00:
That's not mentioned in any of the decisions of the examiner at 164 to 175.

[00:34:31] Speaker 00:
The board at 1 through 5 and 6 through 16.

[00:34:36] Speaker 00:
It's just, you know, there's a significant, you know, just no wording about whether the prior art, no finding about whether the prior art

[00:34:47] Speaker 00:
the loaner in combination discloses the tag file limitation.

[00:34:51] Speaker 00:
All of the specific elements of the tag file limitation.

[00:34:55] Speaker 00:
It's never discussed.

[00:34:55] Speaker 00:
And then again, there's no motivation to combine ever discussed.

[00:34:59] Speaker 00:
And as pointed out, I mean, the grounds for rejection were changing by the board.

[00:35:08] Speaker 00:
They did add new bases, including an inherency fine that was discussed in the rehearing decision.

[00:35:17] Speaker 00:
And I think the appellants request complete reversal because I think it's clear from the record that there's no, that this claim is not obvious.

[00:35:29] Speaker 00:
The board should not have found it obvious.

[00:35:32] Speaker 05:
I understand the board didn't talk about Nimamoto, but the examiner did.

[00:35:38] Speaker 05:
So what does Nimamoto add to the analysis?

[00:35:42] Speaker 00:
So Nimamoto was, I mean, primarily, if you look at 165,

[00:35:47] Speaker 00:
And there was a discussion that Nimomoto might have talked about something in the tag file limitation.

[00:35:52] Speaker 00:
No.

[00:35:52] Speaker 00:
I mean, if anything, at 165, the examiner is very clear that anything related to a tag file is not disclosed in Nimomoto.

[00:36:01] Speaker 00:
And that's why he goes on and talks about Arling.

[00:36:04] Speaker 00:
I think what you do have in Nimomoto at the beginning is the GUI on a personal communication device.

[00:36:13] Speaker 00:
That's what the examiner was relying on for that.

[00:36:17] Speaker 00:
That you could use, for example, like a cell phone, and there was a graphic display.

[00:36:23] Speaker 00:
That's really the big thing.

[00:36:27] Speaker 00:
One other thing, there was a discussion about what Nakajima discloses.

[00:36:32] Speaker 00:
And obviously, it seems that the position on that's changed.

[00:36:36] Speaker 00:
But in the appeal, excuse me, in the original decision,

[00:36:42] Speaker 00:
The block quote actually is talking about the, I think, well, right before that, it's talking about the board relied on Nakajima for a slave relay.

[00:36:53] Speaker 00:
But obviously that changed, and I agree that in the rehearing decision, it's really that Nakajima is only disclosed for a direct transmission, but that's also incorrect.

[00:37:06] Speaker 00:
Unless you have any other questions, I think.

[00:37:09] Speaker 05:
It's incorrect that Nakajima shows a direct transmission?

[00:37:13] Speaker 00:
Correct.

[00:37:14] Speaker 00:
No, I wouldn't say direct transmission.

[00:37:16] Speaker 00:
It does show that their commands are being transmitted from the TV.

[00:37:22] Speaker 00:
But that's different from a slave relay.

[00:37:28] Speaker 00:
In isolation, there is a direct transmission.

[00:37:30] Speaker 00:
I agree with that in Nakajima.

[00:37:32] Speaker 00:
But that reads out the other issues.

[00:37:36] Speaker 00:
having an executable file that then... Right, so I mean, you still have to have the executable file.

[00:37:42] Speaker 05:
I guess my question is, did you ever argue to the board that there was no motive, assuming Erling showed all the tag limitations, did you argue to the board that there was no motivation to combine that with Nakajima?

[00:37:56] Speaker 00:
I think we did because of what the difference is in what Nakajima was doing.

[00:38:04] Speaker 05:
Where did you argue that?

[00:38:05] Speaker 00:
Let me double-check there.

[00:38:07] Speaker 00:
I'm looking at, I don't want to misstate, you know.

[00:38:17] Speaker 05:
I don't want you to either.

[00:38:18] Speaker 00:
Sorry.

[00:38:22] Speaker 00:
So I'm looking at the appeal brief at 190.

[00:38:25] Speaker 00:
We addressed Nakajima at 192, 191, but I think it more has to do with

[00:38:33] Speaker 00:
You couldn't combine that with Arlene because it doesn't disclose all the tag file type limitations.

[00:38:38] Speaker 00:
I don't think we address, it's just, you know, they're just display tags.

[00:38:45] Speaker 00:
They're showing what, for example.

[00:38:48] Speaker 05:
Okay, so if we find all the tag file limitations in Arlene, then that would be the end of the inquiry, at least with respect to whether there was a direct connection.

[00:39:03] Speaker 05:
shown through Nakajima.

[00:39:06] Speaker 00:
I think that's correct.

[00:39:08] Speaker 00:
I think we don't dispute that.

[00:39:09] Speaker 00:
Just strictly that commands are directly transmitted from a TV to an auxiliary device is disclosed by Nakajima.

[00:39:18] Speaker 00:
Yes.

[00:39:19] Speaker 03:
Thank you.