[00:00:04] Speaker 01:
We've got a little roving this morning, so after the first case, we'll take a break.

[00:00:08] Speaker 01:
We can come shortly thereafter.

[00:00:10] Speaker 01:
The first case for argument this morning is 18-2259, Inray Escobosa.

[00:00:16] Speaker 01:
Mr. Lucas, whenever you're ready.

[00:00:18] Speaker 01:
Good morning.

[00:00:22] Speaker 03:
Good morning.

[00:00:24] Speaker 03:
James Lucas on behalf of the Escobosa Appellants.

[00:00:29] Speaker 03:
May it please the court?

[00:00:32] Speaker 03:
We would ask that Claim 1,

[00:00:34] Speaker 03:
of the 761 application be allowed, asked this court to reverse the board and find the claim patentable.

[00:00:46] Speaker 03:
As shown in our briefing, we think the board has failed to meet its prima facie burden of showing the obviousness of claim one based on Chemek and Alport.

[00:01:00] Speaker 03:
The board's decisions are missing

[00:01:03] Speaker 01:
significant factual findings regarding the disclosure of the... Is that because there were no findings made or simply because you're in disagreement with whether or not the board could incorporate the examiner's analysis and adopt it as its own?

[00:01:18] Speaker 03:
I think it's both, actually.

[00:01:21] Speaker 03:
I think definitely there are no findings made in the board's decision.

[00:01:25] Speaker 03:
Even if you look at, if you say the board incorporated the examiner's findings, I still believe the board's decision is lacking because the examiner failed to make.

[00:01:34] Speaker 03:
factual findings on disclosure of multiple limitations and also on the motivation to combine.

[00:01:40] Speaker 03:
So I think it applies both ways.

[00:01:43] Speaker 03:
Even if the court were to find that the both board decisions incorporated every finding of the examiner, the decision still is lacking and the board still did not meet its burden of making a prima facie case.

[00:01:56] Speaker 01:
I wanted to talk a little bit about the motivation issue.

[00:01:59] Speaker 03:
Okay.

[00:01:59] Speaker 03:
Yeah, that's a pretty easy one.

[00:02:01] Speaker 03:
You can go to

[00:02:04] Speaker 03:
There's no doubt that the board never even discussed that.

[00:02:07] Speaker 03:
I can take you to the initial decision, 258 through 263.

[00:02:15] Speaker 03:
Motivation to combine is never even discussed.

[00:02:17] Speaker 03:
The same with the rehearing decision.

[00:02:22] Speaker 03:
Okay, so with the assumption that the Just want to make clear the board doesn't even discuss it then we can go to the we go to the examiner's final office action, and it's extremely

[00:02:43] Speaker 03:
cursory and does not provide what this court requires to find a motivation to combine.

[00:02:49] Speaker 00:
But look, we review a decision that's not opinion.

[00:02:55] Speaker 00:
And why wasn't the board correct?

[00:03:00] Speaker 00:
You've got first data and second data.

[00:03:06] Speaker 00:
In the first data, our disclosure of the plurality of devices in the second data functions, right?

[00:03:14] Speaker 00:
And aren't these both in the two references, ChemInc and Alport?

[00:03:22] Speaker 00:
And that's why the chief judge was trying to direct you to motivation, which seemed to have gotten lost.

[00:03:28] Speaker 03:
I do want to talk about the motivation combined.

[00:03:30] Speaker 03:
But I don't believe the first and second data are disclosed in the reference.

[00:03:38] Speaker 03:
But more importantly, the

[00:03:40] Speaker 03:
later limitations the selection limitation and the the pre-programmed sequence limitation are also not disclosed because you what we believe the examiner and the board did is just read the claim kind of in a vacuum just talk about the data the first and second data that's not enough what this claim requires is you have a web server you

[00:04:00] Speaker 03:
You need to take the first data, which has to identify multiple control products, multiple control devices.

[00:04:08] Speaker 03:
We don't even think that was shown by Chemek, because in Chemek, what you're doing is you're just clicking on one device, a listing of a device, and you're just downloading the GUI for that device.

[00:04:18] Speaker 03:
Okay, so that's not disclosed.

[00:04:20] Speaker 03:
Secondly, the second data, you need to identify an activity or multiple activities performed by all these devices that have been identified.

[00:04:30] Speaker 03:
Then what you do is after you use that first and second data to select from a database a pre-programmed sequence, so more instructions that have been pre-programmed.

[00:04:42] Speaker 03:
And what that does is that,

[00:04:45] Speaker 03:
that allows multiple devices to be controlled for a certain activity or multiple activities, actually.

[00:04:53] Speaker 03:
So we don't think, if you look at the board's decision, you look at the examiner's decision, they don't even address that selection step.

[00:05:00] Speaker 03:
They don't even address the pre-broke program sequence step.

[00:05:04] Speaker 03:
So we would say that the examiner and the board's decision completely lacking in showing disclosure of all the claim limitations.

[00:05:12] Speaker 03:
I did want to get to the motivation to combine though, because I think that's also extremely insufficient.

[00:05:20] Speaker 03:
If you look at

[00:05:27] Speaker 03:
If you look at appendix 146, this is the first time the examiner talks about it.

[00:05:39] Speaker 03:
And then he repeats it later on in the final office action.

[00:05:42] Speaker 03:
It says it would have been obvious to one very skill in the art to modify the system of chemical as disclosed by all port because this provides for a flexible and adaptable remote control device that can be configured based on various users preferences and control options.

[00:05:56] Speaker 03:
There's no reference to any of the

[00:05:58] Speaker 03:
That's just grossly insufficient for a motivation to combine under the court's precedent.

[00:06:03] Speaker 03:
It's just conclusory.

[00:06:05] Speaker 03:
It's not supported by any reference to the prior art.

[00:06:10] Speaker 03:
And we would say that the decision fails and should be reversed based on that alone.

[00:06:16] Speaker 03:
And then just touching on that,

[00:06:26] Speaker 03:
If you go right below that on 146, and these findings are repeated in the final office action, but the discussion of those two other limitations

[00:06:43] Speaker 03:
is at 145, and that's the selection and the pre-program sequence.

[00:06:48] Speaker 03:
You can see there, there's no real reference.

[00:06:52] Speaker 03:
It's just a repeat at 145 of the claim language.

[00:06:56] Speaker 03:
There's no, I guess, discussion of where these items are disclosed in the prior art.

[00:07:11] Speaker 03:
So I wanted to, I mean, I think it's our position, the board's decision, completely insufficient.

[00:07:18] Speaker 03:
To the extent the court wants to look more at the final office section, again, also insufficient in that it didn't show disclosure of any of all the limitations and didn't show a motivation combined.

[00:07:32] Speaker 03:
that the court requires, basically very summarily talks about motivation combined, avoids multiple limitations, and just very insufficient under, for example, some of the cases we cited, In Re Dem Bixak, which is 175 F3 1994.

[00:07:52] Speaker 03:
Judge Mayer should be familiar with that case, where it's very clear that

[00:08:00] Speaker 03:
The court found that the obviousness finding was just grossly insufficient, and the motivation to combine was not supported.

[00:08:09] Speaker 03:
Again, also in Enrede, Giannelli, 739 F1375, there was no explanation of, Judge Laurie should be familiar with this case, no explanation of why or how a person of ordinary skill in the art would modify the prior art.

[00:08:26] Speaker 00:
It isn't useful to try

[00:08:30] Speaker 00:
this court with judges.

[00:08:31] Speaker 00:
We write on behalf of the panel, on behalf of the court.

[00:08:38] Speaker 03:
Understood.

[00:08:39] Speaker 03:
The point really is that there's no how and why on the motivation to combine.

[00:08:42] Speaker 03:
Nothing whatsoever.

[00:08:43] Speaker 03:
That's very clear from the final office action.

[00:08:46] Speaker 03:
The examiner just summarily talks about remote controls in general and says it was obvious to combine the two references.

[00:08:56] Speaker 03:
And that's just not enough based on the court's teachings.

[00:09:00] Speaker 03:
Again, also insufficient factual findings regarding disclosure of the combined prior art.

[00:09:08] Speaker 03:
If there's no further questions.

[00:09:09] Speaker 01:
Thank you.

[00:09:26] Speaker 02:
Your honors, and may it please the court.

[00:09:28] Speaker 02:
Appellant's focus is on disputing the board's factual findings regarding the teachings of the prior art.

[00:09:33] Speaker 02:
However, substantial evidence supports that the combination of Kemeck and Alport disclose each of the claim limitations.

[00:09:39] Speaker 01:
It's pretty thin, though, right?

[00:09:40] Speaker 02:
The board's decision, correct, is?

[00:09:43] Speaker 01:
Yeah, but your position is it doesn't matter because they've incorporated the examiners.

[00:09:48] Speaker 02:
Correct.

[00:09:49] Speaker 02:
As this court has said in in-rate create, it is appropriate for and commonplace for the administrative body to incorporate the fact-finding body's findings.

[00:09:59] Speaker 02:
And that's exactly what the board did here.

[00:10:01] Speaker 02:
So they incorporated the examiner's final rejection.

[00:10:04] Speaker 01:
Did they ever say that?

[00:10:05] Speaker 01:
Did they state they're incorporating the examiner's final rejection?

[00:10:09] Speaker 02:
So there's not the word incorporate or adopt.

[00:10:12] Speaker 02:
And my understanding is that this court's precedent does not require specific magic rules.

[00:10:18] Speaker 02:
But they do indicate that they are relying and agreeing with the examiner's rejection.

[00:10:23] Speaker 02:
Show me.

[00:10:24] Speaker 02:
Certainly.

[00:10:24] Speaker 02:
If you start at page appendix six and in the middle of that page,

[00:10:34] Speaker 02:
They say, we do not find appellant's arguments persuasive and agree with the examiner's findings.

[00:10:39] Speaker 02:
Then they quote the claim and cite the final action, pages five through seven.

[00:10:44] Speaker 02:
Then continuing at, if that was not clear enough, in their rehearing decision at appendix 10, they say in the second to the last sentence of the first full non-quote paragraph,

[00:11:03] Speaker 02:
They say, in our decision, we cited to the final action for the relied upon teachings to address the disputed limitations, citing to the page that I just talked about, and again, citing to the final actions at page 5 through 7.

[00:11:16] Speaker 02:
And looking at this court's precedent in In re Cree and In re Hyatt, this language, for example, In re Hyatt, the board there just said, we affirm for the reasons of the examiner

[00:11:29] Speaker 02:
And this court said that that was considered adopting the examiner's rejection.

[00:11:33] Speaker 02:
So there's not a magic word that needs to be used as far as we incorporate or we adopt.

[00:11:39] Speaker 02:
But based on this court's precedent, I believe saying we agree with and citing to the exact pages twice, both in the board's decision, the final, or excuse me, the first decision and the rehearing decision is sufficient to apprise this court that they were adopting the examiner's rejection.

[00:11:56] Speaker 02:
Taking the examiner's rejection, they did lay out where each of the limitations was disclosed, and they provided additional detail.

[00:12:03] Speaker 02:
And then the board adopted that and provided additional detail in response to the arguments.

[00:12:07] Speaker 02:
And the examiner also provided a motivation to combine the references, which was not conclusory or insufficient.

[00:12:14] Speaker 02:
Indeed, it was to provide a flexible and adaptable remote control suitable for a user's preferences and control options.

[00:12:21] Speaker 02:
And that flows directly from the teachings of the prior art.

[00:12:25] Speaker 02:
If you look at appendix page 168, and that is where the examiner addressed the motivation to combine, they start in the middle of the paragraph talking about Chemek presenting a plurality of graphic user interfaces, and the user is given a choice.

[00:12:45] Speaker 02:
That's talking about the user's preference.

[00:12:47] Speaker 02:
It then goes on and talks about Allport, which is the second reference, and talks about the control options that they want to use.

[00:12:54] Speaker 02:
And then that ends, that whole entire discussion ends with the motivation discussing the fact that they want to provide, that one would be motivated to provide a flexible and adaptable remote control configured based on user's preferences, and that's discussed in Chemek, and control options, and that's discussed in Alport.

[00:13:11] Speaker 02:
This was never disputed by appellant on appeal to the board.

[00:13:16] Speaker 02:
We just mentioned that in our opening brief, and they did not point to any place in the reply brief where they disputed the motivation to combine, said that this was insufficient, said that more was needed.

[00:13:26] Speaker 02:
And therefore, that explains why the board adopted the examiner's rejection.

[00:13:30] Speaker 02:
It was not in dispute before the board.

[00:13:34] Speaker 01:
That sentence is a very odd sentence, right?

[00:13:37] Speaker 01:
The one on 168.

[00:13:38] Speaker 01:
It would have been obvious to one with ordinary skill in the art to modify the system of cheming, as disclosed by Alport, because this provide

[00:13:48] Speaker 01:
There's a few words missing.

[00:13:59] Speaker 02:
I would say based on various users' preferences or missing an S on the word provides.

[00:14:05] Speaker 02:
However, I believe that while not completely clear, the path can be easily discerned by what the examiner was saying, that you can get the idea of why this was motivation.

[00:14:17] Speaker 02:
And again, this was never disputed before the board.

[00:14:20] Speaker 02:
As the appellant's counsel pointed out, this was stated in the rejection, which he pointed to before the final rejection.

[00:14:27] Speaker 02:
And then this was cited in the final rejection.

[00:14:30] Speaker 02:
It was not mentioned in the appeal brief.

[00:14:33] Speaker 02:
It was not mentioned in the reply brief.

[00:14:35] Speaker 02:
All they argued was that if you combine them, it would lead to something different.

[00:14:40] Speaker 02:
They never said there was not a motivation to combine.

[00:14:43] Speaker 00:
You're saying that while this was not the board's finest hour, it was correct.

[00:14:48] Speaker 02:
That's correct, Your Honor.

[00:14:50] Speaker 02:
Both the path can be discerned of what the rejection was.

[00:14:54] Speaker 02:
And taking all three decisions together, the board's final rejection, or excuse me, the examiner's final rejection, the board's decision, and the rehearing request, those three together, those three papers, are sufficient to apprise this court of what the basis and the grounds of rejection are to enable judicial review.

[00:15:12] Speaker 01:
So if the board is going to incorporate the examiner's final rejection and not provide any of its own independent analysis, why would a party ever try to have a final rejection review?

[00:15:25] Speaker 02:
I think they may not always just incorporate the final rejection.

[00:15:31] Speaker 02:
And that's the step to getting to this court.

[00:15:33] Speaker 02:
If they felt that the board was insufficient or the examiner is insufficient, they can still raise those issues to this court.

[00:15:42] Speaker 02:
The idea is that that's the process that happens.

[00:15:45] Speaker 02:
You appeal the final rejection to the board.

[00:15:47] Speaker 02:
The board may not adopt completely, and there's many cases that they do not, and the board either reverses or provides additional explanation.

[00:15:55] Speaker 02:
They don't always just completely incorporate.

[00:15:58] Speaker 02:
And then that's also a step in getting to this court, where if the incorporation is lacking, as

[00:16:04] Speaker 02:
Appellant's counsel pointed out the Imre Dimvizak case.

[00:16:08] Speaker 02:
There, there was absolutely no motivation to combine.

[00:16:11] Speaker 02:
So that's different.

[00:16:12] Speaker 02:
Here, there was a motivation to combine.

[00:16:14] Speaker 02:
But in that case, they came all the way up to this court.

[00:16:16] Speaker 02:
And the court said, no, there's no motivation.

[00:16:19] Speaker 02:
Go back.

[00:16:20] Speaker 02:
So that would be why there still is a motivation, pun not intended, to come to this court and appeal to the board first.

[00:16:29] Speaker 02:
With respect to a few of the arguments made by appellant's counsel,

[00:16:34] Speaker 02:
With respect to the first data, Chemec does disclose a list of appliances that was cited by the examiner, and it's very clear from the reference itself.

[00:16:45] Speaker 02:
And with respect to the fact that a user selects one appliance out of that, there's no exclusion in the claim language on user involvement.

[00:16:53] Speaker 02:
A user can be involved.

[00:16:55] Speaker 02:
Appellant specification is replete with examples of a user selecting different options.

[00:17:01] Speaker 02:
There's no exclusion on a user selecting.

[00:17:03] Speaker 02:
The server, the web server, just has to use it in some fashion.

[00:17:07] Speaker 02:
And here they use this first data, this list of appliances, by displaying it.

[00:17:12] Speaker 02:
That is a use.

[00:17:13] Speaker 02:
It's within the broad language of the claims.

[00:17:16] Speaker 02:
With respect to, finally I'd like to address the Inray-Ginelli case with respect to motivation to combine.

[00:17:23] Speaker 02:
That was a different situation there.

[00:17:26] Speaker 02:
There was a physical combination.

[00:17:28] Speaker 02:
They were

[00:17:30] Speaker 02:
The board was trying to modify a pushing device to make it a pulling device, and the only analysis was that one would be capable of doing so.

[00:17:42] Speaker 02:
That is not the situation here.

[00:17:43] Speaker 02:
The examiner did not rely on mere capability without explaining how such

[00:17:49] Speaker 02:
non-intuitive physical modification would be made.

[00:17:51] Speaker 02:
Here, they combined two very well-known pieces of art, both directed in the same area of appellant's claims, the universal remote control device area, programming universal controls, talking about how and why, when one would ought to do this.

[00:18:08] Speaker 02:
And they combined them and articulated a clear motivation to combine.

[00:18:11] Speaker 02:
So it's not like the Enrage and LA case, where they were relying on a mere capability of doing this.

[00:18:16] Speaker 02:
They gave a reason.

[00:18:18] Speaker 02:
And if your honors have no more questions, thank you.

[00:18:29] Speaker 03:
Just briefly, there was some discussion about that the no motivation to combine argument was never raised before the board, and that's incorrect.

[00:18:43] Speaker 03:
to 200, the argument was made by the appellants that the examiner had not made a motivation to combine finding.

[00:18:56] Speaker 03:
Regarding the motivation to combine finding, I mean, we're looking at the final office action is appendix

[00:19:09] Speaker 03:
168.

[00:19:10] Speaker 03:
And it's three lines, and really what it's saying is it doesn't even take into account any of the limitations that were discussed, the first data or the second data, or it doesn't mention that at all.

[00:19:24] Speaker 03:
It really, if you look at it, is saying they should be combined because they both relate to remote controls.

[00:19:31] Speaker 03:
That's just really not enough.

[00:19:32] Speaker 03:
They're saying both pieces of art relate to remote controls, so they should be combined.

[00:19:39] Speaker 03:
And that's just grossly insufficient.

[00:19:41] Speaker 00:
Isn't there a normal motivation?

[00:19:43] Speaker 00:
within the field to improve a device and to incorporate a feature that's in the same kind of device to make them more convenient?

[00:19:59] Speaker 03:
I mean, are you just saying, would, if you're asking, would one-off skilling art just normally be motivated to look at other art?

[00:20:08] Speaker 03:
I mean, I think that, that

[00:20:10] Speaker 03:
that generally is true, but I think our case law is very clear that that's just saying you would just look at other art is not enough.

[00:20:19] Speaker 03:
You need to actually detail the explicit motivation to combine when you're combining these two references and how it arrives at the claimed invention.

[00:20:32] Speaker 03:
They just have not done that.

[00:20:34] Speaker 03:
That site doesn't even

[00:20:35] Speaker 03:
reference the art, doesn't even reference one of skill in the art.

[00:20:38] Speaker 03:
It does reference one of skill in the art, but doesn't talk about just a common knowledge.

[00:20:43] Speaker 03:
And it doesn't key on what the examiner has said was in the art that they would use to combine.

[00:20:53] Speaker 03:
So I think that's another reason it's insufficient.

[00:20:55] Speaker 03:
And to be clear, there was a lot of discussion about incorporating the examiners

[00:21:02] Speaker 03:
The examiner's actions are also insufficient on the factual disclosure findings, and we made that clear in the brief.

[00:21:14] Speaker 03:
It's not just, if I had to summarize what they're really saying is what the examiner says over and over again and the board just adopts is,

[00:21:21] Speaker 03:
Well, one piece of art has the ability for you to just select a product to be controlled, and another piece of art has the ability to program an activity.

[00:21:37] Speaker 03:
That's it.

[00:21:37] Speaker 03:
That's really all they talk about.

[00:21:39] Speaker 03:
the entire claimed invention is obvious based on those two disclosures.

[00:21:43] Speaker 03:
Okay, that's not enough.

[00:21:44] Speaker 03:
If you actually look at the claim, this is a much more complex claim that is very interrelated and has later limitations.

[00:21:52] Speaker 03:
And I say that

[00:21:54] Speaker 03:
Because I still don't believe CHEMIC even discloses multiple devices.

[00:21:59] Speaker 03:
We're talking about a system where you can basically program an activity that's going to control multiple devices and multiple activities.

[00:22:09] Speaker 03:
And then a server is going to use that and take preprogrammed sequences to control all these activities and all these devices.

[00:22:22] Speaker 03:
once you press a button.

[00:22:24] Speaker 03:
And that is not disclosed in either of those references or the combination.

[00:22:27] Speaker 03:
And so we would say we would ask the board, excuse me, we would ask this court to reverse the finding of unpatentability based on obviousness and allow claim one and its depending claims to be found patentable.

[00:22:42] Speaker 03:
Thank you.