[00:00:02] Speaker 03:
The next case for argument is 18-1944, Henry Rosen.

[00:00:54] Speaker 01:
Good morning.

[00:00:55] Speaker 01:
Good morning, Your Honor.

[00:00:56] Speaker 01:
Please proceed.

[00:00:57] Speaker 01:
May it please the court.

[00:00:59] Speaker 01:
The case that we have before us today relates generally to a composition for the control of bed bugs.

[00:01:06] Speaker 01:
The inventors in this case have determined that this composition is actually quite effective and have built a small business around it specifically for the control of bed bugs.

[00:01:17] Speaker 04:
At the bottom of page 24 of the blue brief and continuing on to 25,

[00:01:22] Speaker 04:
You claim that a person's guilt would construe inert ingredients as inactive ingredients.

[00:01:28] Speaker 04:
Do you have any posited testimony on this in the record?

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

[00:01:33] Speaker 01:
I didn't catch the last part.

[00:01:34] Speaker 04:
Do you have any person skill testimony on that in the record?

[00:01:40] Speaker 01:
We do not, Your Honor.

[00:01:42] Speaker 01:
So that statement draws primarily from the reference itself, which I believe comes from the Hiramoto reference.

[00:01:51] Speaker 01:
So it labels this very long list of relatively unrelated components.

[00:01:59] Speaker 01:
That's not the question I had.

[00:02:00] Speaker 01:
Right, right.

[00:02:01] Speaker 01:
It labels them as... No, it's not the question I asked.

[00:02:07] Speaker 04:
You're asking us to interpret it.

[00:02:09] Speaker 04:
You said that a person with skill would interpret it.

[00:02:16] Speaker 01:
So that list is labeled List 4A, which is from the Code of Federal Regulations.

[00:02:22] Speaker 01:
In the description in the Code of Federal Regulations, it describes it as, and I have

[00:02:30] Speaker 01:
I have exactly what it describes it as.

[00:02:35] Speaker 01:
List 4A is generally reserved for those substances that are common foods or substances that are ubiquitous in nature and not expected to present a hazard to human health or to the environment.

[00:02:47] Speaker 02:
Council, this is a composition claim.

[00:02:49] Speaker 02:
It lists a half a dozen or so components.

[00:02:53] Speaker 02:
And all of them are in the prior art.

[00:02:57] Speaker 02:
And most of them are described as being effective for insecticides or other pests.

[00:03:06] Speaker 02:
And what has been shown to be exceptional compared with what one would expect from putting all these components together.

[00:03:16] Speaker 01:
Well, we believe that the USPTO, so where we, there may not be any secondary considerations here within the case itself, but we believe that the USPTO has nevertheless failed to provide a prima facie case of obviousness here.

[00:03:36] Speaker 01:
Simply based on the fact that it's a known problem in the art that bed bugs are

[00:03:42] Speaker 01:
resistant to conventional insecticides, so it's not it's not necessarily expected that these conventional very common household ingredients would come together to make to make a composition that would be effective to treat against these bed bugs.

[00:04:02] Speaker 04:
government notes that if you had wanted to limit the plain composition to controlling bed bugs, you could have included an affirmative limitation.

[00:04:10] Speaker 04:
But you didn't.

[00:04:11] Speaker 04:
What's your response to that?

[00:04:14] Speaker 01:
So if I'm understanding your question, Your Honor, your

[00:04:18] Speaker 01:
basically asking why the limitation of the use in the preamble should be considered to be part of the claim.

[00:04:27] Speaker 01:
And the reason for that is based on various case laws from this very court.

[00:04:33] Speaker 01:
For example, the Corning Glass case, which we discussed in our brief, the court mentions that the effect preamble language should be given can be resolved only on review of the entirety of the patent.

[00:04:49] Speaker 01:
to gain an understanding of what the inventors actually invented and intended to encompass by the claim.

[00:04:55] Speaker 01:
Now, the only thing – the only type of insecticide discussed in this application is for bed bugs, and no other insect is discussed or described at all.

[00:05:09] Speaker 01:
The claims are very obviously narrowly tailored toward a composition for treating bed bugs.

[00:05:16] Speaker 04:
Okay.

[00:05:16] Speaker 04:
Let me read you from page 20, then.

[00:05:19] Speaker 04:
At bottom, if appellants wanted to limit the claim composition to controlling bed bugs, they could have included an affirmative limitation requiring that result, or perhaps better included a separate method claim, reciting that particular use of the claim composition.

[00:05:35] Speaker 04:
But appellants did not do that.

[00:05:37] Speaker 04:
Rather, appellants canceled method claims for, quote, controlling climax infestations by applying the composition in claim one during an examination

[00:05:46] Speaker 04:
in response to a restriction requirement.

[00:05:49] Speaker 04:
Appellants cannot moot that restriction by reading method limitations in Composition Claim 1.

[00:05:56] Speaker 01:
Yes, Your Honor, the method claims were restricted out early on, but we do disagree that, number one, that a purpose is specifically for method claims.

[00:06:12] Speaker 01:
Purposes are routinely included in preamble language.

[00:06:17] Speaker 01:
for a number of reasons, one reason of which is kind of discussed in the Enrae Klein decision from this court, which basically held that the preamble language serves to, informs as to what the relevant prior art should be considered.

[00:06:35] Speaker 04:
The claim pesticide

[00:06:40] Speaker 04:
specification states may also contain one or more additional ingredients.

[00:06:48] Speaker 04:
Will one ingredient suffice?

[00:06:50] Speaker 01:
I'm sorry, Your Honor.

[00:06:51] Speaker 01:
Can you repeat the first part?

[00:06:53] Speaker 04:
Sure.

[00:06:54] Speaker 04:
In the red brief at two, the government notes that the specification

[00:07:02] Speaker 04:
also states that the claimed pesticide, quote, may also include one or more additional ingredients, close quote.

[00:07:15] Speaker 04:
My question is, will one additional ingredient suffice?

[00:07:25] Speaker 01:
I'm sorry, Your Honor.

[00:07:27] Speaker 01:
I'm not exactly recalling this part.

[00:07:29] Speaker 02:
Well, it's a comprising claim, so it would include one or more.

[00:07:34] Speaker 01:
Yes.

[00:07:35] Speaker 01:
Yes.

[00:07:36] Speaker 01:
Yes, it could.

[00:07:40] Speaker 02:
But the fact is, the claim without the preamble stands on its own, because it's a composition of x, y, z, or w, x, q, r, x, y, and z, or whatever.

[00:07:53] Speaker 01:
Yes, ordinarily.

[00:07:56] Speaker 02:
So the preamble isn't part of the claim.

[00:08:01] Speaker 01:
We believe that the case law supports that the preamble should at least inform as to what should be considered relevant prior art.

[00:08:15] Speaker 04:
Excuse me.

[00:08:16] Speaker 04:
In the red brief at 33, the government says you waived your arguments regarding Olson.

[00:08:21] Speaker 04:
as disclosing the inclusion of sodium chloride because you didn't raise it before the PTAB.

[00:08:27] Speaker 04:
Did you raise those arguments before the PTAB?

[00:08:32] Speaker 01:
We did raise them during prosecution.

[00:08:34] Speaker 01:
I'm not sure that they were raised before the PTAB itself.

[00:08:42] Speaker 01:
So I take that as a no, because you wouldn't know you were arrested.

[00:08:45] Speaker 01:
Correct.

[00:08:46] Speaker 01:
Correct.

[00:08:48] Speaker 02:
Is there a method claimed pending?

[00:08:53] Speaker 01:
There is not, Your Honor.

[00:08:54] Speaker 01:
Oh.

[00:08:57] Speaker 01:
And actually the PTO never actually disputes at any point that despite the fact that these ingredients are all common and accepted as generally safe, that the product is in fact effective against bed bugs.

[00:09:13] Speaker 01:
The office never raised a rejection based on utility or enablement.

[00:09:18] Speaker 01:
But the patent office here did not meet its burden to prove a prima facie case of obviousness.

[00:09:27] Speaker 01:
At the most basic level, it just hasn't met the grand factors.

[00:09:33] Speaker 01:
Because it did not show that there was a motivation to select these particular ingredients from among the thousands of possibilities available across the six.

[00:09:43] Speaker 04:
Do you agree that Enan and Olson disclosed six of claim one's limitations?

[00:09:48] Speaker 04:
uh... that you know laurel sulfate potassium sorbet sorbate salt sodium chloride and organic acid and essential oil and water.

[00:09:57] Speaker 01:
I am aware of that your honor.

[00:09:59] Speaker 01:
They disclose it without without the context and the

[00:10:03] Speaker 01:
without the context of the difficulties of treating bed bugs.

[00:10:09] Speaker 01:
So the examiner used the enin reference as the primary reference here.

[00:10:14] Speaker 01:
Well, enin also discloses treatment of over 2,000 other types of insects, including bed bugs.

[00:10:25] Speaker 01:
But another thing that Enon says is that its compositions would not be predicted to work evenly across the board.

[00:10:34] Speaker 01:
Now this, taken with the appellant's own specifications stating that conventional insecticides don't ordinarily work on bed bugs,

[00:10:46] Speaker 01:
the skilled artisan just would not look to ENIN for any, would not believe that the disclosure of ENIN would provide any reasonable expectation of success for controlling bed bugs specifically.

[00:11:05] Speaker 01:
In doing so, the PTO also

[00:11:10] Speaker 01:
Sorry, sorry, I've kind of lost my place.

[00:11:14] Speaker 01:
I'd like to talk a little bit more about the phrase composition for control of cymex in the preamble.

[00:11:23] Speaker 01:
We believe that the board should not have read this limitation out of the claim.

[00:11:31] Speaker 01:
So, for example, I began discussing in Ray Klein earlier.

[00:11:36] Speaker 01:
The preamble in that case recited a convenience nectar mixing device for use in preparation of sugar water nectar for feeding hummingbirds, orioles, or butterflies.

[00:11:47] Speaker 01:
But the court in that case found that the problem there was not just a problem for compartment separation.

[00:11:56] Speaker 01:
It was a much more specific problem of multiple ratio mixing.

[00:12:01] Speaker 01:
And that information only came from the preamble.

[00:12:05] Speaker 01:
So the court in that case sided with the appellants in a narrow construction in order to find that several of the references constituted

[00:12:16] Speaker 01:
non-analogous art, and we believe the Court should do the same here.

[00:12:24] Speaker 01:
And just one more remark, and I'd like to save the rest of my time for

[00:12:29] Speaker 01:
for rebuttals, knowing the scope of the problem is critical to developing a work in composition which speaks to the path taken by the state artisan and therefore logically establishes the bounds for the prior art.

[00:12:47] Speaker 03:
If there are no further questions.

[00:12:59] Speaker 00:
Police Court, William Lamarca for the PTO.

[00:13:04] Speaker 00:
Really, our only point, Your Honor, I think there's no dispute that the prior references have all the ingredients disclosed.

[00:13:11] Speaker 03:
Well, here's what I'm struggling with a bit, and that's only 1D, the nutrient source, nutrient source, and yeast.

[00:13:20] Speaker 03:
So, you know, there are a lot of references around here.

[00:13:24] Speaker 03:
There was some discussion of this about the IDS, you know, and what the examiner – seemed to be a little tension between what the examiner said, what the board said.

[00:13:34] Speaker 03:
So can you just take a shot at it?

[00:13:36] Speaker 00:
Yeah, nutrient source.

[00:13:36] Speaker 00:
Well, my understanding of what that means in the claim and from the record what I've gleaned is

[00:13:42] Speaker 00:
The nutrient source in this particular example is yeast.

[00:13:46] Speaker 00:
The Olson reference specifically says to use food attractants.

[00:13:50] Speaker 00:
The idea is you've got an insecticide to kill insects, you add a food attractant that draws the insects to the insecticide, they eat it, and this is how they get the insecticide.

[00:14:02] Speaker 04:
The sodium chloride concentration

[00:14:05] Speaker 04:
interestingly is the same as it is in human blood.

[00:14:09] Speaker 04:
Right.

[00:14:09] Speaker 04:
How is that not a food attractant for this particular thing?

[00:14:13] Speaker 00:
Yeah, I mean, I think you could interpret it that way, Your Honor, but for purposes of this record, the examiner didn't look to that as a food attractant.

[00:14:20] Speaker 00:
They looked to that as one of the things that act as the insecticide.

[00:14:24] Speaker 00:
In other words, one of the active ingredients that actually kills the bug.

[00:14:28] Speaker 04:
You mean human blood kills the bug?

[00:14:29] Speaker 00:
No, no, but I think when you have salt

[00:14:33] Speaker 00:
It might be similar to human blood.

[00:14:35] Speaker 00:
That could act as an attractive.

[00:14:36] Speaker 00:
But I don't think the examiner viewed it that way in this particular case.

[00:14:40] Speaker 00:
Sodium chloride, acids, oils, all these things can act as insecticides.

[00:14:46] Speaker 00:
And they're natural.

[00:14:47] Speaker 00:
They're not harmful to the environment.

[00:14:50] Speaker 00:
That's the idea.

[00:14:50] Speaker 00:
And all the prior art pretty much teaches that.

[00:14:53] Speaker 00:
I mean, I don't think there's any dispute that all of the prior art that's been cited talks about safe insecticides.

[00:14:59] Speaker 04:
What I took away from these briefs is I planted lemongrass in my garden.

[00:15:04] Speaker 00:
Yeah, but I think getting back to Chief Judge Prost's question about the yeast, the food attractant, the nutrient source, Olson specifically says it would be good to include a food attractant with your mixture.

[00:15:18] Speaker 03:
But Olson doesn't cite yeast.

[00:15:19] Speaker 00:
Correct.

[00:15:20] Speaker 00:
But the other references, there are two other references I believe,

[00:15:24] Speaker 00:
Hiramoto has a list of the food ingredients, and I believe opposing counsel was mentioning it was an FDA list, and that FDA list includes as one of the food ingredients yeast.

[00:15:35] Speaker 02:
Would you say he could have overcome this rejection if he had a comparative test between his composition with yeast and the same composition without yeast?

[00:15:48] Speaker 00:
Well, what I can say, Your Honor, is

[00:15:51] Speaker 00:
We understand the law.

[00:15:53] Speaker 00:
I think the way you've articulated it partly here today is that if there's a composition of matter, a list of ingredients like we have here, the office comes forth with prior art that discloses at least overlapping disclosure of those ingredients, and they've done that.

[00:16:07] Speaker 02:
Many of them for the same purpose.

[00:16:09] Speaker 00:
Many of them for the same purpose.

[00:16:10] Speaker 00:
And if the applicant wants to come back and rebut that, one of the things that they could do is come forth with some evidence of criticality, evidence of unexpected results, evidence showing that their specific combination, their specific unique combination, has some type of special results.

[00:16:26] Speaker 00:
But they would have to produce evidence.

[00:16:28] Speaker 00:
They would have to come forward with some evidence to show that.

[00:16:30] Speaker 02:
And none of that happened here.

[00:16:31] Speaker 02:
And if the CIMEX treatment had been the key, we could have filed a divisional on the method.

[00:16:39] Speaker 00:
And I believe...

[00:16:41] Speaker 00:
I believe there was a restriction here.

[00:16:44] Speaker 00:
Those method claims were taken out.

[00:16:46] Speaker 00:
And of course, they would have the opportunity to file a divisional on those method claims, Your Honor.

[00:16:50] Speaker 00:
That's, of course, at their fingertips if they choose so.

[00:16:53] Speaker 00:
But ultimately, I think your question, you're right.

[00:16:57] Speaker 00:
If they could come back with some evidence showing that a specific combination is somehow unique or critical and show some experimental evidence to establish that, that would be a different story.

[00:17:07] Speaker 00:
The office would have to consider that and make a determination.

[00:17:11] Speaker 00:
But ultimately, all the ingredients are disclosed by the prior art.

[00:17:15] Speaker 00:
We believe the prior art is in the same field of endeavor.

[00:17:18] Speaker 00:
We don't even think you need to even reach the question about whether or not they're seeking to solve the same exact problem.

[00:17:23] Speaker 00:
It's in the same field.

[00:17:25] Speaker 00:
What's the field?

[00:17:26] Speaker 00:
Insecticides that are safe and environmentally safe.

[00:17:28] Speaker 00:
That's the field.

[00:17:29] Speaker 00:
The ordinary artist from trying to come up with this would look to these references.

[00:17:33] Speaker 00:
And because they would look to these references, because they are analogous art,

[00:17:37] Speaker 00:
We think it's sufficient for the obviousness rejection that was written.

[00:17:41] Speaker 00:
And as a result, we have a prima facie case.

[00:17:45] Speaker 00:
And there is no evidence to come forth to rebut that prima facie case.

[00:17:48] Speaker 00:
And as a result, we think the agency's decision should be affirmed.

[00:17:52] Speaker 00:
Any other questions?

[00:17:54] Speaker 00:
Thank you, Your Honors.

[00:17:55] Speaker 00:
Thank you.

[00:18:05] Speaker 01:
So I would just like to make a few quick points to piggyback on some of the questions that just came up.

[00:18:12] Speaker 01:
First, regarding the nutrient source.

[00:18:17] Speaker 01:
So the office hinges much of their arguments on the fact that this Hiramoto reference actually discloses a food source.

[00:18:24] Speaker 01:
Well, this list

[00:18:28] Speaker 01:
list 4a as they call it is not a list of food sources, not unless you consider Douglas fur bark, nylon, oyster shells, and sawdust to be sources of food.

[00:18:42] Speaker 01:
If I was a bug, I mind.

[00:18:46] Speaker 01:
I'm sorry?

[00:18:47] Speaker 01:
I said if I was a bug, I mind.

[00:18:51] Speaker 01:
possibly, but the list was in the context for human consumption.

[00:19:01] Speaker 01:
But regardless, the

[00:19:07] Speaker 01:
The office then cites to the Olson reference to show that there would have been motivation to have a nutrient source, which then goes back to the Hiramoto reference, which discloses this food source.

[00:19:21] Speaker 01:
But the loop is really not closed, because there's nothing in Hiramoto that would make the skilled artist think that yeast could be food.

[00:19:33] Speaker 01:
especially food for bed bugs.

[00:19:39] Speaker 01:
The last point that I'd like to make is just to generally speak about kind of the mechanism of how the inventors believe that this composition works.

[00:19:50] Speaker 01:
So the composition is developed to mimic human tissue.

[00:20:00] Speaker 01:
So that's kind of where the sodium chloride comes in and where the yeast comes in.

[00:20:04] Speaker 01:
This kind of combination is new, and that's not really shown to have been done before.

[00:20:15] Speaker 01:
So the bedbugs come in and engorge themselves, and when that happens, their bodies just blow up.

[00:20:22] Speaker 01:
I don't know if you've ever seen pictures of it, but they get very big.

[00:20:25] Speaker 01:
And once that happens,

[00:20:29] Speaker 01:
the remainder of the composition in the local environment interacts with their exoskeleton, and it kind of begins this suffocation effect.

[00:20:39] Speaker 01:
And the inventors believe that it kills them in seconds.

[00:20:43] Speaker 01:
And this effect is not really talked about in any of the prior art, and as far as we know, it's new, novel, and unobvious.

[00:20:54] Speaker 03:
Okay.

[00:20:55] Speaker 03:
Thank you.

[00:20:55] Speaker 03:
Thank you very much.