[00:00:00] Speaker 03:
Good morning, Your Honor.

[00:00:02] Speaker 03:
May it be as the court.

[00:00:10] Speaker 03:
My name is Matthew Dowd.

[00:00:11] Speaker 03:
I represent the appellants, the two inventors of the application at issue.

[00:00:15] Speaker 03:
That's on appeal from the board.

[00:00:17] Speaker 03:
Your Honor, I'd like to start off with just a few points about what's not in dispute.

[00:00:23] Speaker 03:
There's no dispute that the I-BILT process and spinnable analysis applies here.

[00:00:28] Speaker 03:
The PTO doesn't dispute that.

[00:00:31] Speaker 03:
There's no dispute that our inventors were the first to identify the problem with the prior art, or that they were also the first to identify a solution to the prior art.

[00:00:44] Speaker 01:
See, your problem for me is you want to rely on sponable.

[00:00:48] Speaker 01:
I don't know how to say that.

[00:00:49] Speaker 01:
I'm just going to say it.

[00:00:49] Speaker 03:
I say spinoble.

[00:00:50] Speaker 01:
Spinoble, whatever.

[00:00:52] Speaker 03:
Oh, I'm going to say sponable.

[00:00:53] Speaker 03:
Sponable.

[00:00:54] Speaker 03:
You're correct.

[00:00:55] Speaker 01:
So you rely on that.

[00:00:58] Speaker 01:
I don't think that in general your representations about that case are wrong when there's an unknown problem.

[00:01:04] Speaker 01:
But the problem here and what makes this case different from that one is that there was a separate reason that the agency found for combining, which is improving structural integrity.

[00:01:15] Speaker 01:
So I don't know if that case governs here when there is a separate motivation at play.

[00:01:24] Speaker 01:
I mean, yes, your inventor came up with

[00:01:27] Speaker 01:
a problem and a way to cure that problem.

[00:01:29] Speaker 01:
But if there was a motivation to come to that same conclusion but for other reasons, then I don't understand the problem.

[00:01:38] Speaker 03:
I think the problem is twofold with respect to that.

[00:01:44] Speaker 03:
I think you can accept the fact that in certain situations, there might be another motivation to get to the same solution.

[00:01:51] Speaker 03:
We don't dispute that.

[00:01:53] Speaker 03:
In those instances, I think the proper way to analyze it

[00:01:57] Speaker 03:
is to weigh the evidence.

[00:01:59] Speaker 03:
And so I will process evidence is evidence of non-obviousness.

[00:02:06] Speaker 03:
The PTO doesn't dispute that.

[00:02:09] Speaker 03:
Now, the second fold, we dispute that the examiner gave a reasoned or rationale or motivation to make the modification.

[00:02:19] Speaker 01:
If you look at the office- You don't think that when they said structural integrity, that was sufficient?

[00:02:24] Speaker 03:
No, Your Honor.

[00:02:25] Speaker 03:
Well, and I'll add something to that, because in the non-final action, the three words that the examiner used was obvious design choice.

[00:02:35] Speaker 02:
Right.

[00:02:35] Speaker 02:
And in the final office action, they talked about improving the strength of the product and structural integrity.

[00:02:42] Speaker 02:
Correct.

[00:02:42] Speaker 02:
And then in the examiner's answer, they repeated that again.

[00:02:46] Speaker 02:
And as I understood the proceedings below, Mr. Conrad

[00:02:54] Speaker 02:
didn't dispute any of that, the legal argument was solely devoted to just arguing about spawnable and eyeball process, and that spawnable and eyeball process have to be considered in the obviousness context.

[00:03:13] Speaker 02:
As I understand it, at one point, Conrad's attorneys accepts that there was a prima facie case of obviousness made, but then

[00:03:24] Speaker 02:
they feel like they rebutted with the spawnable theory of the invention story here.

[00:03:31] Speaker 02:
And I guess I have the same question Judge Moore has, which is we have cases such as Purdue Pharma, for example, where you've indicated when there is a separate through line for ultimately making the claimed product and that it would be obvious to do so, then

[00:03:53] Speaker 02:
why does a case like Ible Processor Spawnable apply?

[00:03:57] Speaker 03:
Well, let me ask, I'll answer that last part directly, because the PTA doesn't dispute that Spawnable and Ible Processor applies.

[00:04:05] Speaker 02:
Well, maybe they don't dispute that Spawnable and Ible Processor are good law, and it's ultimately up for us to decide to what degree does Spawnable apply.

[00:04:16] Speaker 02:
And do we agree, therefore, with the board's approach here, which was to

[00:04:22] Speaker 02:
not wrestle with the invention story given that there was a separate independent line of motivation to make this adjustment to this urine deflector that doesn't need to somehow at all impact the invention story here.

[00:04:43] Speaker 03:
Well, Judge Chen, I think if you're suggesting that the PTO can

[00:04:48] Speaker 03:
ignore the spawnable eyeball process evidence if there's a separate reason to get to the solution.

[00:04:54] Speaker 03:
I think that's incorrect under the law.

[00:04:56] Speaker 03:
I mean, yeah, I didn't detail all... Under what law?

[00:04:59] Speaker 03:
Under this case, this court's law, and as well as... In what case?

[00:05:03] Speaker 01:
After what?

[00:05:04] Speaker 03:
All right, so turning to Purdue Farmer, for example, you mentioned Purdue Farmer.

[00:05:08] Speaker 03:
Purdue Farmer, the primary reason the court didn't accept the spawnable argument was that that was a product claim

[00:05:17] Speaker 03:
at issue, and the evidence that was being advanced was more relevant to the method of making it.

[00:05:25] Speaker 03:
So in addition to that, we have Leo products, Leo pharmaceutical products, which is very, very similar to this case in that there was, the claim in that case was directed to a pharmaceutical composition of three components.

[00:05:40] Speaker 03:
It was vitamin D analogs, corticosteroids, and a solvent.

[00:05:44] Speaker 03:
And there was a long recognition

[00:05:46] Speaker 03:
that in the prior art, there was a stability problem.

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And the claim required that it be a stable solution.

[00:05:54] Speaker 03:
And the primary reason that the court considered the spotable evidence was that it was an invention story.

[00:06:03] Speaker 03:
But more than an invention story, it's an explanation of why what looks like, in hindsight, an obvious design choice is not really obvious.

[00:06:14] Speaker 01:
And I would like to also... I'm sorry.

[00:06:16] Speaker 01:
I just feel like this is a very basic concept.

[00:06:19] Speaker 01:
And the basic concept is throughout our cases for decades, we have held that the reason that someone advocates the skilled artist may have been motivated to make the combination does not have to be the same reason that the inventor sought to make the claim combination.

[00:06:36] Speaker 01:
That's throughout our cases very clearly.

[00:06:41] Speaker 03:
Judge Moore, I accept that's in some cases, in many cases in fact, but there hasn't been a case that has to address this issue particularly if we're talking about, well, let me, I'll back up.

[00:06:54] Speaker 03:
If we're accepting that the examiner's, you know, four or five word explanation of why to modify the prior art is sufficient.

[00:07:04] Speaker 03:
something that you did not argue against below.

[00:07:07] Speaker 03:
Well, that's what the PTO is arguing.

[00:07:09] Speaker 02:
Well, let's assume for the moment that's true.

[00:07:11] Speaker 03:
That's right.

[00:07:11] Speaker 03:
I'm assuming for the moment, for my answer right now, that that's true.

[00:07:15] Speaker 03:
So what I'm suggesting, and I think advocating, is that you have that evidence on one side of the obviousness line.

[00:07:24] Speaker 03:
And then we have this binomial, spawnable, eyeball process evidence on the other side.

[00:07:29] Speaker 03:
And so even in a situation where you have both

[00:07:33] Speaker 03:
routes to the end product, there has to be some weighing of the evidence.

[00:07:38] Speaker 01:
The PTO... Don't agree.

[00:07:39] Speaker 01:
I don't even understand the logic of it.

[00:07:41] Speaker 01:
If there's one reason to make the combination and a skilled artist would make it for that reason, it doesn't matter to me at all if there were 10 other reasons to make the combination that the skilled artist didn't know about or understand that only the inventor realized.

[00:07:55] Speaker 01:
I don't understand why that ought to weigh against the obviousness.

[00:08:00] Speaker 01:
If there's one really good reason to make the combination that everybody knew about

[00:08:03] Speaker 01:
or what skilled artisan would understand in advance, who cares if the skilled artisan didn't understand all the other reasons?

[00:08:09] Speaker 01:
I don't see why that's relevant.

[00:08:10] Speaker 01:
It doesn't have to be obvious for every reason, just for one.

[00:08:13] Speaker 03:
Correct, Judge.

[00:08:14] Speaker 03:
I agree with that, Judge Moore.

[00:08:15] Speaker 03:
But let me focus on the board's analysis here, because I don't really think that that's what they did.

[00:08:21] Speaker 03:
So if you look at Appendix 5, and this is in the board's opinion, and this is really where they, I think, went off track in considering the evidence that we presented in terms of the spawnable evidence,

[00:08:33] Speaker 03:
And this is the middle of paragraph.

[00:08:35] Speaker 03:
The board says, appellants do not apprise as how the combined teachings of Conrad and Rabindran would fail to inherently solve the problem proposed by the appellants.

[00:08:47] Speaker 03:
And so this idea of inherently solving the problem, that's a fundamental problem with the board's analysis.

[00:08:55] Speaker 03:
Any later developed combination of elements necessarily solves a problem.

[00:09:01] Speaker 03:
that was identified solely by the inventors and solved solely by the inventors.

[00:09:07] Speaker 03:
There's no way to reconcile that statement and that reasoning in the board's opinion with either I will process or respond.

[00:09:17] Speaker 01:
I'll be honest, I don't really understand that sentence either, but I do understand the board as to have separately at the top of the page adopted the improving structural integrity of strength of the connection motivation.

[00:09:31] Speaker 03:
Great.

[00:09:32] Speaker 03:
I agree with that.

[00:09:33] Speaker 03:
But what I'll say, in terms of the merits of that separate motivation to modify the prior art, I just don't think it's sufficient under this court's case law.

[00:09:43] Speaker 03:
For example, if we look at the reason, this was the reasoning in the final office action and the examiner's answers.

[00:09:52] Speaker 03:
There's nothing in raviendron that talks about a scene or a seamless device.

[00:09:58] Speaker 03:
There's nothing in raviendron that talks about

[00:10:01] Speaker 03:
why you would, quote unquote, improve structure integrity.

[00:10:05] Speaker 03:
What does that mean, actually?

[00:10:06] Speaker 03:
There's nothing in the Conrad 009 application that suggests that you would want to strengthen the integrity of the device.

[00:10:16] Speaker 03:
It's a flexible device.

[00:10:17] Speaker 03:
Why make it less flexible?

[00:10:19] Speaker 03:
Why make it more flexible?

[00:10:21] Speaker 03:
I think our ultimate point is that in considering this bears conclusory statement,

[00:10:26] Speaker 03:
It is pure hindsight, in this case, where the examiner saw one missing element, the lack of a seam, found a close reference.

[00:10:36] Speaker 03:
We don't dispute that it's a close reference.

[00:10:38] Speaker 02:
It's practically a 102 reference, isn't it?

[00:10:41] Speaker 03:
Correct, Your Honor.

[00:10:42] Speaker 03:
It is.

[00:10:42] Speaker 03:
It's missing one element, but it's not a 102 reference.

[00:10:45] Speaker 03:
It's an obviousness reference.

[00:10:46] Speaker 03:
And that's exactly why Chief Justice Taft, in eyeball process, focused so much on the importance of why

[00:10:54] Speaker 03:
the inventors who had solved the problem in terms of the pitch angle for the printing machine, why that invention was non-obvious.

[00:11:02] Speaker 03:
It goes back to statements that have been repeated in this court's case law and the CCPA's case law that once you identify... If we conclude that you never attacked the examiner's prima facie rationale for obviousness,

[00:11:22] Speaker 02:
strengthening the product, having improved structural integrity, then this argument in front of us right now is off the table, right?

[00:11:33] Speaker 02:
What it boils down to is your theory that the invention story counts every single time and needs to be taken into account every single time, even if there's a completely separate theory for motivation to render the claim obvious.

[00:11:52] Speaker 02:
Is that fair to say?

[00:11:54] Speaker 03:
In terms of that describing our legal position, I think that's right.

[00:12:01] Speaker 03:
But if I may just restate so, I'm clear.

[00:12:04] Speaker 03:
Because I think when you assess obviousness in terms of a motivation to combine or a motivation to modify the priority, you're always assessing the strength of it.

[00:12:15] Speaker 03:
You're always assessing, well, how strong is the motivation?

[00:12:17] Speaker 03:
Is it almost directly on point?

[00:12:19] Speaker 03:
Is it telling you to modify this particular element

[00:12:22] Speaker 03:
Is it telling you to modify this element for this particular reason, but in a different device?

[00:12:26] Speaker 03:
So therefore, you could use that reasoning to the prior device that's at issue in the rejection.

[00:12:33] Speaker 03:
All of those go to the strength of the argument that the examiner is presenting.

[00:12:38] Speaker 03:
And whenever you have that, you have to consider countervailing evidence.

[00:12:42] Speaker 03:
And that's what we're saying here.

[00:12:44] Speaker 01:
No, countervailing evidence would be other people didn't think it would improve structural integrity.

[00:12:50] Speaker 01:
or countervailing evidence would be structural integrity wasn't important in this space because you wanted a device that was more flexible, not less.

[00:12:57] Speaker 01:
Countervailing evidence wouldn't be a separate, wholly distinct silo of motivation.

[00:13:04] Speaker 01:
I don't understand how that is countervailing evidence.

[00:13:09] Speaker 03:
Well, Your Honor, it certainly is.

[00:13:10] Speaker 01:
I think it is because it tells you that... How does it countervail whether someone would be motivated based on structural integrity to make this

[00:13:20] Speaker 03:
Because there's a recognition that there's a problem that hadn't been... A different problem.

[00:13:26] Speaker 01:
There's nothing to do with structural integrity that you're going to recognize and then fix.

[00:13:30] Speaker 03:
Well, what I would say, Judge Moore, is that there's no evidence that there's a problem with the structural integrity.

[00:13:35] Speaker 01:
And so in terms of... But that's the argument that Judge Chen said you needed to assume was potentially off the table.

[00:13:43] Speaker 01:
So why don't you help me?

[00:13:46] Speaker 01:
Where did you make that argument below?

[00:13:49] Speaker 01:
Where did you all argue that the examiner's claims about structural integrity were insufficient or inaccurate or flexibility is actually preferred?

[00:14:00] Speaker 01:
Where did you make some argument that would contradict that motivation?

[00:14:05] Speaker 03:
So I see I'm way into my rebuttal time.

[00:14:08] Speaker 03:
If I can answer that when I stand up again.

[00:14:11] Speaker 03:
Absolutely.

[00:14:12] Speaker 01:
Thank you, Your Honor.

[00:14:14] Speaker 01:
All right.

[00:14:14] Speaker 01:
OK.

[00:14:15] Speaker 01:
Mr. Piccolo, please proceed.

[00:14:20] Speaker 00:
Thank you, Honors.

[00:14:20] Speaker 00:
It may please the court.

[00:14:23] Speaker 00:
I heard that the PTO did not weigh the problem evidence in applicant specification.

[00:14:29] Speaker 00:
I respectfully dispute that.

[00:14:31] Speaker 00:
And really quickly, I have citations by the examiner discussing a problem, appendix page 94, 130, 131.

[00:14:39] Speaker 00:
The examiner was discussing the problem argued by applicant and the board on pages

[00:14:46] Speaker 00:
three and five and on page five multiple times talked about the problem and spinnable and the argument that applicant presented in its brief to the board appearing at pages 116 to 121 of the record.

[00:15:01] Speaker 00:
That argument is about problem and spinnable, about problem and spinnable which we answered.

[00:15:08] Speaker 02:
Why did your red brief say that

[00:15:10] Speaker 02:
the spawnable evidence and argument has to be always taken into account in a 103 analysis.

[00:15:18] Speaker 02:
When there's a counter theory to that, which is if there's a completely independent basis for motivation to combine references that renders the claims obvious, then the invention story is not really something that needs to be taken into account.

[00:15:35] Speaker 00:
Thank you, Your Honor.

[00:15:38] Speaker 00:
Because the board and examiner

[00:15:40] Speaker 00:
considered that evidence, it was best for us to say... They considered it?

[00:15:46] Speaker 02:
Well, by talking about the problem and it not making a difference against the strong references Ravendran has... I guess I'm talking more about a legal question right now, which is, am I misreading something in your red brief, which seems to suggest that despicable evidence and argument always has to be taken into account in any 103 analysis when it's presented.

[00:16:09] Speaker 02:
And that

[00:16:12] Speaker 02:
It's a curious thing to say, because it runs into the teeth of what Judge Moore was saying before, which is whatever is the motivation for an inventor to come up with a particular invention doesn't have to be the same basis that perhaps the PTO would use in order to find claims to be obvious.

[00:16:32] Speaker 00:
Thank you, Rhonda.

[00:16:33] Speaker 00:
I don't think we said it that way.

[00:16:34] Speaker 00:
What we said was we didn't take exception with the case law, Spinoeble Idle Process.

[00:16:39] Speaker 00:
And when there is that evidence,

[00:16:41] Speaker 00:
As the board and examiner addressed it, since that was the primary argument to the board, the board had a strong case because the board and the examiner discussed the problem.

[00:16:54] Speaker 00:
So I think in the best of both worlds, even if it should not have been considered, the examiner and board expressly considered it.

[00:17:03] Speaker 00:
And respectfully inviting the court's attention to footnote four in the board's opinion,

[00:17:08] Speaker 00:
It talked about the spinnable case and above.

[00:17:11] Speaker 00:
It talked about how the problem proposed by appellants was basically solved by ravendran without ravendran expressing so, because ravendran has no seam.

[00:17:25] Speaker 00:
And therefore, it collects no liquid.

[00:17:30] Speaker 00:
So ravendran.

[00:17:32] Speaker 00:
So are you saying the board at footnote four

[00:17:37] Speaker 02:
took into account the sponable argument?

[00:17:39] Speaker 00:
Yes.

[00:17:40] Speaker 00:
Yes, because above that, too, near where the footnotes dropped, it says we are looking at appeal brief 8 to 11 in the middle of that page and addressing the problem proposed by appellants.

[00:17:55] Speaker 00:
And pages 8 to 11 of the brief to the board are the problem and sponable arguments, which the board said, and what we're talking about in the specification, is

[00:18:07] Speaker 01:
But I don't even understand that sentence.

[00:18:10] Speaker 01:
And I don't understand your reliance on it.

[00:18:11] Speaker 01:
It makes absolutely no sense.

[00:18:20] Speaker 01:
That's exactly the point.

[00:18:24] Speaker 01:
The point is,

[00:18:25] Speaker 01:
His argument is, we put two things together that had never been put together and solved a problem.

[00:18:30] Speaker 01:
So for the board to say, he doesn't explain to us how when you put these two things together, it doesn't solve the problem.

[00:18:36] Speaker 01:
Hello, that's as it mentioned.

[00:18:38] Speaker 01:
That sentence makes no sense.

[00:18:40] Speaker 01:
And your articulation of your argument makes even less sense to me right now.

[00:18:44] Speaker 00:
Because, Your Honor, the board was addressing what was presented to it was spinnable and the problem evidence.

[00:18:53] Speaker 00:
And all that was in the specification

[00:18:55] Speaker 00:
was seams collect liquid.

[00:18:59] Speaker 00:
So the board said, and largely relying on what the examiner said, the examiner said in the quote down below, the argued problem and the argued problem, and that's the spinnable evidence of seams collect liquid, have been carefully considered.

[00:19:16] Speaker 00:
And that's in the examiner's answer four to five.

[00:19:20] Speaker 00:
And that's at 130 to 131 of the record.

[00:19:24] Speaker 00:
So when we agreed

[00:19:25] Speaker 00:
with his legal propositions that such evidence should be considered.

[00:19:30] Speaker 00:
And I think maybe what Your Honor Judge Shen was referring to is on pages 16 to 17 of our red brief, we were talking about, yes, the examiner and board considered both the prior art, which had a strong prima facie case, everything but the lack of a folding seam and ravendran had an integrally formed seam, which

[00:19:54] Speaker 00:
collects no liquid.

[00:19:55] Speaker 00:
And so then we said what the board and examiner did was spot on because it considered both the prior art and his little evidence of a problem.

[00:20:07] Speaker 00:
And the evidence I think it could help the court to focus on is on page 16 of the record in paragraph 10, where all they say in this specification is a seam collects liquid.

[00:20:19] Speaker 00:
So that's the problem.

[00:20:21] Speaker 00:
And the board said, and the examiner said,

[00:20:24] Speaker 00:
that raviandrin, because it is seamless, is not going to have that problem.

[00:20:28] Speaker 00:
It performs the function that this invention was intended to perform.

[00:20:34] Speaker 00:
So because the examiner and board went the extra mile, if you will, of considering the evidence.

[00:20:40] Speaker 00:
And that's what was presented in the brief to the board.

[00:20:43] Speaker 00:
In the brief to the board, respectfully inviting the court's attention to page 116 of the record

[00:20:53] Speaker 00:
passage starts with spinnable and talks about problem in the specification.

[00:20:57] Speaker 00:
It quotes, references paragraph 10 of the specification earlier, which talks about a seam collecting liquid.

[00:21:08] Speaker 00:
So the board addressed what was argued to it.

[00:21:12] Speaker 00:
So the board committed no reversible error because the board also affirmed the cream of fish case, which was waived and not argued specifically in the brief to the board.

[00:21:22] Speaker 00:
And I'd also like to talk about how Leo Pharmaceuticals was a case concerning a lot of secondary evidence going on there.

[00:21:32] Speaker 00:
It had long passages in the opinion about unexpected results evidence, commercial success, long felt but unsolved need, and much teaching away evidence.

[00:21:43] Speaker 00:
So if I may respectfully urge the court that the board

[00:21:49] Speaker 00:
did extra, yes.

[00:21:50] Speaker 00:
It also had the prima facie case, which was waived.

[00:21:53] Speaker 00:
And as is typical, when an applicant urges that I found this problem, it should outweigh the prima facie case, the board took the extra step to shore up the case totally as to what was argued to it and said, your evidence of seams collect liquid has been considered, but we still affirm the examiner's strong prima facie case.

[00:22:20] Speaker 01:
So you think that the board, as a matter of law, has the obligation to weigh somehow in assessing motivation combined both the inventor's story about what caused him to make the combination alongside a separate basis for combining that they came up with on their own?

[00:22:39] Speaker 00:
Well, there are CCPA cases that say that the evidence of a problem, Spinaubo, Weissman, I was looking at earlier today, cases say consider

[00:22:49] Speaker 00:
the applicant's identification of a problem as urging in the applicant's favor.

[00:22:56] Speaker 00:
And as a matter of fact, I think the case law goes to it needs to be either in the form of an affidavit or in the specification, which was in this case.

[00:23:05] Speaker 00:
And again, on page 16, the total.

[00:23:07] Speaker 01:
So is your answer to my question yes?

[00:23:09] Speaker 01:
Do you believe our case law would require the board to consider both the articulation of a problem

[00:23:16] Speaker 01:
and consider that as negative evidence of a motivation combined alongside the articulation of the solution to a separate problem, which would be positive evidence, and they have to somehow weigh those two against each other?

[00:23:31] Speaker 00:
Yes, Your Honor.

[00:23:32] Speaker 00:
I think Leo Pharmaceuticals says that.

[00:23:35] Speaker 02:
The problem with what I think you're saying is that you would be conceding that there's a flaw in the board's decision, because the board never took on

[00:23:47] Speaker 02:
the argument by the other side that there was a long-standing unappreciated problem.

[00:23:55] Speaker 02:
And that long-standing unappreciated problem was that urine collects in this seam of their urine deflector.

[00:24:04] Speaker 02:
And then that urine ultimately causes an icky smell that's very undesirable.

[00:24:09] Speaker 02:
And so they figured out that cause of that problem that no one else had figured out

[00:24:17] Speaker 02:
And so therefore, that can be a basis for patentability per Eibel process and Spawnable.

[00:24:25] Speaker 02:
The board never took that on.

[00:24:26] Speaker 02:
What the board did was it clung to its alternative independent theory for why the claims would be obvious, strengthening the overall product or whatever, and then said that resulting obvious product would inherently solve the problem raised by the other side.

[00:24:45] Speaker 02:
But that's not the same thing as actually taking into account the invention story of recognizing a problem that had not been appreciated before in the art.

[00:24:56] Speaker 02:
And the board never actually took that piece on.

[00:25:00] Speaker 02:
And that's the problem with what I think is, what I'm hearing is the agency's concession that, yes, they have to take that off.

[00:25:11] Speaker 00:
I'm sorry, Your Honor.

[00:25:12] Speaker 00:
I'm trying to answer it.

[00:25:14] Speaker 00:
in a way as to what the board did.

[00:25:15] Speaker 00:
And the board addressed the evidence.

[00:25:19] Speaker 00:
It could have used a couple of more sentences.

[00:25:21] Speaker 00:
But the board was talking about inherently that even if there is this problem, and the examiner, again, respectfully inviting the court's attention, the examiner said at the bottom of page five, the argued problem and intended use have been carefully considered.

[00:25:37] Speaker 00:
So that's the problem evidence.

[00:25:40] Speaker 00:
So the examiner expressly considered it.

[00:25:42] Speaker 00:
And all it was was seams collect liquid.

[00:25:45] Speaker 00:
And they said that, well, look at ravendran.

[00:25:48] Speaker 00:
Ravendran is stronger.

[00:25:50] Speaker 00:
It's all one piece.

[00:25:51] Speaker 00:
It'll surely do the job.

[00:25:53] Speaker 00:
And that's the examiner's prima facie case, which the applicant did not contest to the board.

[00:25:59] Speaker 00:
So the board, one, had the wave ground of prima facie case, and then, two, focused on the spinobol-ibol process, which Leo Pharmaceuticals

[00:26:10] Speaker 00:
can support that you consider such evidence.

[00:26:14] Speaker 00:
And the board addressed the evidence that the examiner also addressed.

[00:26:20] Speaker 00:
So to the extent the board did more than it had to, it's reversible error.

[00:26:24] Speaker 01:
So are you telling me that if I view this opinion... It's harmless error, excuse me.

[00:26:29] Speaker 01:
If I view this opinion as the board not weighing... If I view this opinion as neither the examiner nor the board,

[00:26:39] Speaker 01:
weighing the problem identified by the inventor, along with his proposed solution, on the one hand, against its own problem that it suggested might motivate a skilled artist in some sort of structural integrity problem based on a seam.

[00:26:59] Speaker 01:
If I don't read the board's opinion as having done what you claim it did on page five, should I reverse?

[00:27:06] Speaker 00:
No, Your Honor, for two reasons.

[00:27:08] Speaker 00:
One, the board, as was talked about before, the strong prima facie case has its own reason for affirmance, that the evidence has to be really significant for it to outweigh the strong prima facie case.

[00:27:26] Speaker 01:
What evidence has to be really significant?

[00:27:28] Speaker 00:
That if there's evidence of a problem overcoming

[00:27:31] Speaker 01:
the strong prima facie case as... But if I don't read the board as having addressed whether that evidence was strong or not, how can I leave this decision intact?

[00:27:44] Speaker 00:
Because the board referenced, okay, and because it is, it was considered by the board, I'm sorry, so assuming it wasn't considered by the board, then

[00:28:00] Speaker 00:
It was harmless error because of the strong prima facie case.

[00:28:06] Speaker 00:
KSR, there's a predictable result here, a predictable variation, the strong prima facie case.

[00:28:12] Speaker 00:
And Kahn, you don't need the same reason to combine the reference.

[00:28:16] Speaker 00:
And those were his arguments to the board, which the board kept on deflecting, that you don't have to have the same problem, but the same reason in the prior art.

[00:28:26] Speaker 00:
Henry Dillon, as we discussed.

[00:28:27] Speaker 02:
Let me see if I can get something

[00:28:30] Speaker 02:
out of you.

[00:28:31] Speaker 02:
Do you agree with Judge Moore's earlier statement when she was having a colloquy with your opposing counsel that when the board and the agency have a legitimate basis for motivation to combine references that's completely independent and separate from the motive the inventor had behind his invention story,

[00:28:57] Speaker 02:
which was based on some recognized problem that was unappreciated, then that's all the agency needs to issue a legitimate sound 103 rejection.

[00:29:11] Speaker 02:
It doesn't need to take into account that separate invention story.

[00:29:16] Speaker 00:
Yes, Your Honor, because... Okay.

[00:29:20] Speaker 00:
Thanks.

[00:29:20] Speaker 00:
Thank you.

[00:29:21] Speaker 01:
If Judge Lurie was here, he would have loved it when you said the Board was deflecting all of the

[00:29:27] Speaker 01:
Appellant's argument, so I know I don't think it was actually an intentional pun, but it was nonetheless an enjoyable one Thank you all So if I may to address your question from earlier if I understood the PTO is arguing that and acquiescing in the idea that the spinnable if evidence had to have been a

[00:29:55] Speaker 01:
Considered as part of the motivation to combine which is something that you argued, but I took some disagreement with but apparently Mr. Piccolo disagrees with me and believes the PTO did have an obligation to Analyze that argument that's the way I understood his oral argument today lots of quotable portions that said that so if I were to under interpretation Yeah, but that was his argument whether it's right or not is a different question But if I was to understand him representing that the agency held the view that the spinnable evidence always had to be considered Do you think they considered it in this case?

[00:30:25] Speaker 03:
No, Judge Moore.

[00:30:27] Speaker 03:
And that's how I understood the colloquy back and forth.

[00:30:30] Speaker 03:
I mean, with the exception of Judge Chen's final question, I understood... Judge Chen's rehabilitation of the witness?

[00:30:37] Speaker 01:
Yeah, go ahead.

[00:30:37] Speaker 03:
I'll leave that alone.

[00:30:39] Speaker 03:
Good choice.

[00:30:41] Speaker 03:
But no, I understand that was the PTO's position.

[00:30:44] Speaker 03:
And I think part of the issue in this case is sort of the... In fact, that wasn't just their position today.

[00:30:50] Speaker 01:
That was kind of their position in the brief on page 15, wasn't it?

[00:30:53] Speaker 01:
Their position in the brief on page 15 was

[00:30:55] Speaker 01:
The agency did consider this evidence and came to a conclusion.

[00:30:59] Speaker 03:
Correct.

[00:31:00] Speaker 03:
And I think we addressed that fairly clearly in our reply brief.

[00:31:03] Speaker 03:
I am aware of no case from this court that would uphold that footnote from the board as actually evaluating the evidence that was presented to it.

[00:31:14] Speaker 03:
They acknowledge it.

[00:31:15] Speaker 03:
And I think this is what we said in our brief.

[00:31:16] Speaker 03:
They acknowledge the evidence, but they never evaluate it.

[00:31:19] Speaker 03:
There's not a single consideration of weighing the evidence.

[00:31:23] Speaker 03:
You know, if Mr. Piccolo's position is as I understand it, I think we're on the same page in terms of what you have to do with the spin novel and I will process evidence.

[00:31:32] Speaker 03:
And I think part of the confusion is that this is an issue that does not come up very frequently.

[00:31:37] Speaker 03:
I think it's an issue that doesn't come up as cleanly as it does here with respect to facts and the focused issue.

[00:31:48] Speaker 03:
I tried to keep my brief short to the court,

[00:31:51] Speaker 03:
But there are CCPA cases that address in more detail in Ray Roberts, in Ray Pease, in Ray Conover.

[00:32:00] Speaker 03:
And all of those, I mean, they're all examples of where there's one missing element.

[00:32:05] Speaker 03:
And the examiner seems to pluck that element from the prior art, makes the combination, and says, well, the invention's obvious.

[00:32:13] Speaker 02:
And their rebuttal... Is there an independent motivation to combine in all of those?

[00:32:18] Speaker 02:
isn't in any way impacted by the invention story?

[00:32:23] Speaker 03:
So for example, in Roberts, well, let me preface that.

[00:32:29] Speaker 03:
I'm not aware of any case where there's spinaural evidence, like we have here, and a few conclusory words, on the other hand, from the examiner, and where the board and this court has said, well, those conclusory words are sufficient to overcome the eyeball process evidence.

[00:32:47] Speaker 03:
But, for example, in in Ray Roberts, the invention dealt with corrugated plastic film, and it had to have a coefficient of less than .04 or .40.

[00:32:58] Speaker 03:
And in many cases, an examiner might argue, well, it's just routine experimentation, routine opposition to go to below .4.

[00:33:08] Speaker 03:
And the CCPA recognized that in that case, there was evidence, meaning an explanation,

[00:33:17] Speaker 03:
of why it wasn't obvious because there was a recognition of the source of the problem.

[00:33:22] Speaker 03:
And one final thing I will say is that in this case, this case is a little different than Spinavel and Eibel process because in both of those cases, the problem was already recognized in the prior art.

[00:33:36] Speaker 03:
So in one sense, this invention is even less obvious than what was considered in prior cases because, and this is the way we framed it in the brief,

[00:33:47] Speaker 03:
as a source of the problem or identifying the cause of the problem.

[00:33:50] Speaker 03:
But here we go one step further away from obviousness because we now, our inventors did identify the problem.

[00:33:57] Speaker 03:
Up until now, there has been no problem that's ever been indicated or associated with the prior devices.

[00:34:04] Speaker 03:
And all the examiner did was select an element, the missing element.

[00:34:09] Speaker 03:
And honestly, the examiner used our explanation of why you would leave out a scene.

[00:34:15] Speaker 03:
And as one final closing statement, Your Honors, I'd submit that in some sense, I think that the examiner and the board itself got a little distracted by the seeming simplicity of the device.

[00:34:32] Speaker 03:
And I think we all recognize that.

[00:34:34] Speaker 01:
It's a P-deflector, Mr. Dowd.

[00:34:37] Speaker 03:
Your Honor, I know.

[00:34:38] Speaker 01:
The word seemingly simplicity, I'll take that as yet another pun.

[00:34:43] Speaker 03:
Judge Moore, thank you.

[00:34:45] Speaker 03:
Thank you, Your Honor.