[00:00:06] Speaker 04:
The first case for argument this morning is 18-2355 in Ray Grant.

[00:00:10] Speaker 04:
Mr. Sunstein.

[00:00:13] Speaker 04:
Good morning.

[00:00:21] Speaker 01:
Honorable judges, good morning.

[00:00:26] Speaker 01:
The genius.

[00:00:26] Speaker 01:
That's a good start.

[00:00:28] Speaker 01:
I liked it.

[00:00:30] Speaker 01:
Thank you.

[00:00:32] Speaker 01:
The genius of the invention claimed in this appeal shows in its very first step.

[00:00:41] Speaker 01:
To reduce the volume of liquid organic waste, the first step is to add something to the waste.

[00:00:50] Speaker 01:
In particular, in the first step, one adds a porous material

[00:00:55] Speaker 01:
such as sand, to the liquid organic waste.

[00:00:59] Speaker 01:
As an aspect of the invention, the sand changes the physical environment of the organic waste in a matter that it can then be reduced in volume using a special type of burning called smoldering combustion.

[00:01:15] Speaker 01:
Unlike flame combustion, in which the burning liquid or solid becomes gasified and the burning gas makes the flame,

[00:01:24] Speaker 01:
The smoldering combustion reaction occurs directly between the combusting material and oxygen, and there is no flame.

[00:01:33] Speaker 01:
Organic liquids do not smolder by themselves.

[00:01:38] Speaker 01:
The inventors realized that they could achieve smoldering combustion of organic liquid waste by mixing it with a porous medium such as sand.

[00:01:49] Speaker 04:
Now, we understand the invention

[00:01:52] Speaker 04:
The concern is, you know, the reason you're here is because the board concluded that the two references combined make the invention obvious.

[00:02:02] Speaker 04:
So why don't you, everything you said, I mean, you've got to convince us on a substantial evidence review that the board was wrong in concluding that these two references did the trick on obviousness.

[00:02:14] Speaker 04:
So why don't you turn to that issue?

[00:02:16] Speaker 01:
So the principal reference used in the rejection has little to do with the claim subject matter

[00:02:23] Speaker 01:
Because the principal reference does not concern the claimed method of reducing the volume of liquid organic waste.

[00:02:32] Speaker 01:
I don't understand what you're saying.

[00:02:34] Speaker 02:
The coal tar can be a waste, right?

[00:02:39] Speaker 02:
It can be a waste.

[00:02:41] Speaker 02:
And in fact, it's referred to specifically in the specification here as a waste.

[00:02:49] Speaker 01:
coal tar is one of a bunch of things that can be referred to as waste.

[00:02:54] Speaker 01:
But in fact, what's the... It's not waste if you purchase it, is the idea.

[00:02:59] Speaker 01:
Exactly.

[00:03:00] Speaker 01:
And in fact, the very beginning of the application in paragraph two in the background art section, appendix page 28, management of organic liquids when they become wastes is a complex problem.

[00:03:17] Speaker 02:
So if the inventors here had gone out and found some waste coal tar and used that in the Poroni thesis, that would have qualified.

[00:03:33] Speaker 02:
But the fact that they purchased it instead of picked it up off the ground makes it different?

[00:03:47] Speaker 02:
It's a difference between purchasing it and picking some waste up off the ground.

[00:03:52] Speaker 01:
When one purchases a component from a supply house, one knows what one ordered and one gets it.

[00:04:01] Speaker 01:
When one purchases, if I make a purchase of a product from a supply house, I know what I ordered and I get it.

[00:04:11] Speaker 01:
If I go to the ground and pick stuff up that's randomly put there that has been discarded, I have no idea what it is.

[00:04:21] Speaker 01:
And that's the difference in many respects.

[00:04:24] Speaker 01:
Of course, in this thesis, Peroni was just testing methods of remediating contaminated soil.

[00:04:32] Speaker 01:
Now, if it's contaminated soil, it already has stuff in it.

[00:04:37] Speaker 01:
The claimed method isn't

[00:04:40] Speaker 01:
contaminated soil, the claim method involves just having a volume.

[00:04:44] Speaker 01:
It's just called a volume, and it's liquid.

[00:04:47] Speaker 01:
It's a liquid volume of stuff that I don't want.

[00:04:50] Speaker 02:
The plant specification talks about remediating contaminated soil.

[00:04:56] Speaker 01:
That's prior art, yes.

[00:04:58] Speaker 01:
Certainly it's prior art.

[00:04:59] Speaker 01:
It does talk about remediating contaminated soil.

[00:05:03] Speaker 01:
But that's not the subject of this application.

[00:05:06] Speaker 04:
This application... I don't understand.

[00:05:08] Speaker 04:
If it's prior art,

[00:05:10] Speaker 04:
That's what makes it obvious.

[00:05:13] Speaker 01:
Yes, but the it is the question.

[00:05:21] Speaker 01:
And in the prior art, what had been invented was a way of starting with soil underground, stuff that's below ground, that has things like coal tar in it.

[00:05:35] Speaker 01:
That was in the prior art.

[00:05:37] Speaker 01:
And Peroni's thesis concerned that prior art.

[00:05:40] Speaker 01:
But what's claimed here is not stuff that's in the soil.

[00:05:44] Speaker 01:
I have a collection of liquid waste.

[00:05:47] Speaker 01:
For example, when I changed the oil in my car.

[00:05:51] Speaker 01:
And when I was a kid, I did that.

[00:05:53] Speaker 01:
When I changed the oil in my car, the oil that comes out of that car is waste.

[00:05:59] Speaker 01:
It can't be reused.

[00:06:00] Speaker 01:
And I have to have a way of discarding it.

[00:06:01] Speaker 01:
That's liquid waste.

[00:06:03] Speaker 01:
That's liquid organic waste.

[00:06:05] Speaker 01:
And I have that already collected.

[00:06:09] Speaker 01:
The claims that are pending here, we already have the liquid waste that's collected.

[00:06:15] Speaker 01:
Unlike the prior art situation, it's not contaminating soil.

[00:06:19] Speaker 01:
No.

[00:06:20] Speaker 01:
In the present case, it's liquid that I have collected, and I need to dispose of it.

[00:06:25] Speaker 01:
What do I do with that oil that I took out of my car?

[00:06:29] Speaker 01:
What these guys say, what the application says, and this is surprising, and that's why I began with it, because it seems crazy.

[00:06:37] Speaker 01:
They take that oil and they say, mix it with sand.

[00:06:41] Speaker 01:
Mix that oil with sand, then start blowing air through it, warm it up, and you can get that thing to make a reaction that generates heat and gradually consumes the liquid.

[00:06:54] Speaker 01:
Of course, I'm left with the sand, but that's all right.

[00:06:57] Speaker 01:
I can deal with sand.

[00:06:59] Speaker 03:
I've gotten rid of the oil.

[00:07:03] Speaker 03:
The obviousness, non-obviousness analysis is not whether the specific items are the same.

[00:07:14] Speaker 03:
The issue is what would one of ordinary skill in the art gather from that prior art reference that would be relevant to creating this alleged invention?

[00:07:29] Speaker 03:
Agreed.

[00:07:30] Speaker 03:
That's the issue.

[00:07:31] Speaker 03:
that one's soil and one's not as such.

[00:07:36] Speaker 03:
It's not the issue.

[00:07:38] Speaker 03:
The issue is, why isn't that of significant information to one of ordinary skill in the art?

[00:07:47] Speaker 01:
Certainly what one did in the past was important.

[00:07:51] Speaker 01:
And if you remember, the starting material in the prior art is contaminated soil.

[00:07:58] Speaker 01:
The starting material

[00:08:00] Speaker 01:
that's in the present claim is that engine oil I've drained out of my car.

[00:08:05] Speaker 01:
What's the difference?

[00:08:06] Speaker 01:
The engine oil isn't mixed with anything.

[00:08:09] Speaker 01:
The engine oil is just engine oil.

[00:08:11] Speaker 01:
How do I get rid of it?

[00:08:13] Speaker 01:
So the invention says, take that engine oil, mix it with sand, and then use smoldering combustion.

[00:08:19] Speaker 01:
In the prior art, it was already mixed, right?

[00:08:24] Speaker 01:
Somebody had already taken the engine oil

[00:08:26] Speaker 01:
and dumped it into the ground.

[00:08:28] Speaker 01:
In effect, that's the problem that was dealt with in the prior.

[00:08:31] Speaker 01:
The engine oil got into the ground.

[00:08:33] Speaker 01:
How do I clean up the ground?

[00:08:35] Speaker 01:
And so the invention says, OK, into the ground, blow some oxygen, generate some heat, and get smoldering combustion going.

[00:08:46] Speaker 01:
In the present case, we don't have contaminated ground.

[00:08:51] Speaker 01:
We don't have any ground at all.

[00:08:52] Speaker 01:
We just have the engine oil that came out of the car.

[00:08:57] Speaker 01:
How do I get rid of that engine oil?

[00:09:00] Speaker 01:
You mix it with something.

[00:09:01] Speaker 01:
That's what our guys figured out.

[00:09:03] Speaker 01:
That's what our guys figured out.

[00:09:04] Speaker 01:
That was already the case in the prior art.

[00:09:07] Speaker 01:
No.

[00:09:07] Speaker 01:
It was mixed with dirt.

[00:09:09] Speaker 01:
Who did the mixing?

[00:09:12] Speaker 01:
I think the thing is, what might happen, you remember the Eibel process case.

[00:09:18] Speaker 01:
If stuff happens by accident, we're not talking about that.

[00:09:21] Speaker 01:
In this case, the person who has the engine oil to get rid of,

[00:09:26] Speaker 01:
purposely add sand and it institutes smoldering combustion.

[00:09:31] Speaker 01:
And that's a big difference.

[00:09:32] Speaker 01:
Remember the board in this case, the board says they're not relying on the remediation of soil as prior art.

[00:09:42] Speaker 01:
They said that.

[00:09:43] Speaker 01:
They said instead they're relying solely on the experiments that are described in the Peroni thesis to test the soil remediation techniques.

[00:09:55] Speaker 01:
And one of the remarkable things about the board's position is that they don't cite a single passage in Peroni that talks about reducing the volume of waste.

[00:10:12] Speaker 01:
They don't talk about reducing the volume of organic liquid waste because the Peroni thesis never talks about it.

[00:10:19] Speaker 02:
This is, in a way, Peroni talks about getting rid of the waste.

[00:10:25] Speaker 02:
Is that different from reducing the volume of it?

[00:10:30] Speaker 01:
He does not talk about getting rid of the waste.

[00:10:34] Speaker 01:
Peroni discusses removing soil contaminants.

[00:10:38] Speaker 01:
And in that case, the oil that was spilled is a contaminant, yes.

[00:10:43] Speaker 01:
But it is not the same as starting with the volume of the motor oil I just drained out of my car and reducing its volume of initio.

[00:10:52] Speaker 03:
But that's only one step removed.

[00:10:55] Speaker 03:
You have the oil before it goes into the ground.

[00:10:59] Speaker 03:
Peroni has it in the ground.

[00:11:02] Speaker 03:
What's the big deal?

[00:11:03] Speaker 01:
It's a huge deal because the step of mixing wasn't taught before or understood.

[00:11:11] Speaker 01:
And in fact, Peroni had worked on this project.

[00:11:15] Speaker 01:
He was studying remediation.

[00:11:17] Speaker 01:
And it took him a long time working with the other inventors to figure out this is a big deal.

[00:11:22] Speaker 01:
The idea that you can reduce the volume of something by mixing sand into it is extraordinary.

[00:11:29] Speaker 01:
That's not simple.

[00:11:30] Speaker 01:
That's breakthrough thinking.

[00:11:33] Speaker 01:
And it's not obvious, and it's not taught by anything.

[00:11:36] Speaker 01:
The board wants its decision to be unreviewable.

[00:11:40] Speaker 01:
If you look at its approach, they don't quote a single place in Peroni.

[00:11:47] Speaker 01:
There's no quotation.

[00:11:48] Speaker 01:
of any sentence, there's not even a citation of any sentence that talks about reducing the volume of waste.

[00:11:58] Speaker 04:
You're into your rebuttal time, so why don't we hear from the government?

[00:12:01] Speaker 01:
Thank you so much.

[00:12:13] Speaker 00:
Good morning.

[00:12:15] Speaker 00:
Good morning, Your Honors.

[00:12:16] Speaker 00:
May it please the Court?

[00:12:17] Speaker 00:
I'd like to address a couple of points that Grants Council raised.

[00:12:22] Speaker 00:
First of all, the Peroni thesis does describe volumetric reduction of waste at a PPX 827.

[00:12:29] Speaker 00:
It says that 99.5% of the contaminant coal tar is removed through this smoldering combustion process.

[00:12:38] Speaker 00:
And but just to a broader point, I mean, I just like to point out that Dr. Pablo Perrone, who's the author of the Prone thesis, is also an inventor.

[00:12:47] Speaker 00:
And I think one of the problems here is he published his thesis two years before he filed his first patent application.

[00:12:53] Speaker 04:
So that's troubling.

[00:12:57] Speaker 00:
Right.

[00:12:59] Speaker 00:
And the other point is that his thesis only describes almost all of the claimed steps entirely except an express discussion of the batch mixing step.

[00:13:09] Speaker 00:
And arguably, the thesis suggests batch mixing because he's creating these experiments as bench top experiments.

[00:13:17] Speaker 02:
He mixes in sand in the thesis, right?

[00:13:19] Speaker 02:
What's that?

[00:13:20] Speaker 02:
In the thesis, he describes adding sand, right?

[00:13:24] Speaker 00:
Yes, exactly.

[00:13:25] Speaker 00:
He describes.

[00:13:40] Speaker 00:
At 867, there's actually a picture here, and it shows that he has a beaker, one layer of sand, then there's a second layer of the sand and the coal tar that is mixed together.

[00:13:51] Speaker 00:
You start with coal tar in its liquid form, you have the sand in its dry form, you mix those two together.

[00:13:58] Speaker 00:
Expressly says you've mixed them.

[00:14:00] Speaker 00:
It doesn't say how you mix them Then it says you force air through this you ignite it you form the smoldering combustion reaction you remove 99.5% of the Contaminant coal car and that's almost the entire claim right there The only part that's missing is the batch mixing step which the examiner and the board looked at Beaumont which describes it's another process for

[00:14:26] Speaker 00:
treating industrial organic waste.

[00:14:29] Speaker 00:
And it describes continuous mixing and batch mixing.

[00:14:32] Speaker 00:
It actually says when you're producing, generating smaller batches and smaller amounts, it's preferable to use a batch mix, especially when you're trying to obtain a specific solids content level.

[00:14:44] Speaker 00:
And that's exactly what Peroni is doing in the thesis.

[00:14:46] Speaker 00:
So it makes sense to use a batch mixing process.

[00:14:50] Speaker 00:
And even Grant's counsel argued in the reply brief he wouldn't use a continuous mixing method with Peroni's thesis because he's testing these in batches.

[00:15:01] Speaker 03:
Despite the fact that Paolo Peroni is one of the inventors, they argue there was no motivation to read what he had already worked on.

[00:15:14] Speaker 03:
or to use it when they were inventing this.

[00:15:18] Speaker 03:
Do you want to speak to the motivation issue?

[00:15:21] Speaker 00:
Yeah.

[00:15:21] Speaker 00:
So I think their argument is that Peroni's thesis in his mind, when he was doing that thesis and conducting those tests, he was thinking about remediating contaminated soil.

[00:15:32] Speaker 00:
And therefore, it should be limited to that teaching.

[00:15:36] Speaker 00:
But the problem is, and the examiner and the board addressed that issue, is that by simulating the contaminated soil, he actually started with the liquid coal tar and the sand, and he mixed it together.

[00:15:47] Speaker 00:
He carried out all of those claimed steps.

[00:15:50] Speaker 00:
And one of skill in the art reading that thesis wouldn't be limited to what Dr. Peroni was thinking at the time.

[00:15:56] Speaker 00:
They would just see that he started with this contaminant waste coal tar.

[00:15:59] Speaker 00:
You mixed it with sand.

[00:16:01] Speaker 00:
You put oxygen through it.

[00:16:02] Speaker 00:
You ignited it.

[00:16:03] Speaker 00:
You smoldered it.

[00:16:04] Speaker 00:
And you removed 99.5% of the coal tar.

[00:16:08] Speaker 00:
And one of the skill in the art reading, that's what they would understand it.

[00:16:11] Speaker 00:
So it's not limited to what Dr. Peroni was thinking at the time.

[00:16:16] Speaker 00:
And the motivation to combine with Beaumont, I think, is pretty

[00:16:19] Speaker 00:
pretty strong because they're both treating industrial waste.

[00:16:22] Speaker 00:
They both have to mix the contaminant or the waste material with some other ingredients.

[00:16:27] Speaker 00:
There's only two ways to do it.

[00:16:28] Speaker 00:
And when you're trying to get to a desired solid content level, Beaumont says that batch mixing is preferred.

[00:16:40] Speaker 00:
So unless there are other questions, I'll yield the rest of my time.

[00:16:55] Speaker 01:
As to the combination, the board takes the position there is no need to show a basis for it because Beaumont is only used to show feeding a series of batches of the waste organic liquid and the porous material into a vessel.

[00:17:14] Speaker 01:
The board statement is wrong in the first place because Beaumont describes processing of atomized sludge.

[00:17:22] Speaker 01:
and fails to describe feeding batches of the waste organic liquid in the porous material into a vessel.

[00:17:29] Speaker 01:
Sludge, as we explained in our brief, isn't organic waste.

[00:17:34] Speaker 01:
And if you look at their sludge stuff, it has nothing to do with organic waste.

[00:17:39] Speaker 01:
The board's wrong in the second place, because there still has to be some reason for turning to Beaumont.

[00:17:46] Speaker 01:
The examiner argues there is an advantage of mixing batches

[00:17:49] Speaker 01:
of reduced size so as not to operate when enough material is not available for mixing, thereby conserving energy compared to a continuous feed."

[00:18:00] Speaker 01:
That happens to be quoted in our opening brief on page 30.

[00:18:06] Speaker 01:
It makes no sense because Peroni concerns remediation of contaminated soil for which batch processing would make no sense.

[00:18:17] Speaker 01:
Remember, with contaminated soil, we're feeding air into it.

[00:18:22] Speaker 01:
We're heating it.

[00:18:23] Speaker 01:
And it just goes on a continuous basis.

[00:18:27] Speaker 01:
And indeed, as we have shown, the board says that it does not base its rejection on the soil remediation methods discussed in the Peroni reference.

[00:18:36] Speaker 01:
And furthermore, as to Peroni's benchtop experiments,

[00:18:40] Speaker 01:
We show on pages 32 and 33 of the opening brief that each bench-top experiment of Peroni already involves a very small volume of a distinct and unique combination of components.

[00:18:54] Speaker 01:
And so batch processing in that context makes no sense.

[00:18:59] Speaker 01:
I don't see how those two references get combined at all, given each possible way that they could be combined.

[00:19:09] Speaker 01:
The board gives short shrift to Peroni's declarations, and we think that a person of ordinary skill in the art, as the declarations attest, wouldn't construe the Peroni thesis in the way that the board has done.

[00:19:29] Speaker 01:
Although eight patent offices around the world have allowed claims to this technology leading to patent grants in 31 countries, the board has acted otherwise.

[00:19:40] Speaker 01:
It has chosen to ignore the pesky facts of this case that undermine its position.

[00:19:45] Speaker 01:
It ignores key reference evidence in the Peroni declarations, the failure of the Peroni thesis to explicitly disclose this method of reducing the volume of above ground liquid waste,

[00:19:56] Speaker 01:
It ignores the absence of a rationale for combining the Peroni thesis concerning remediation of contaminated soil using smoldering combustion with Beaumont concerning flame combustion of atomized sludge.

[00:20:10] Speaker 01:
And it ignores the fact that the coal tar came from a supply house is simply not waste.

[00:20:16] Speaker 01:
We think that's the basis for reversal.

[00:20:19] Speaker 04:
Thank you.

[00:20:20] Speaker 04:
Thank you very much.

[00:20:22] Speaker 04:
We thank both parties and the cases committed.