[00:00:00] Speaker 04:
This is number 20, 1891, in Ray Alford Miller Contracting.

[00:00:06] Speaker 00:
Ms.

[00:00:06] Speaker 04:
Frisinski.

[00:00:08] Speaker 00:
Thank you, Judge Newman.

[00:00:09] Speaker 00:
Good morning, Your Honors.

[00:00:10] Speaker 00:
May I please the court?

[00:00:12] Speaker 00:
The board invalidated all claims of 005 patent as being obvious over two prior art references, Bird and Saks.

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The appellant is asking this court to reverse the board's decision, affirming the examiner for several reasons.

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First, the reversal of the board's decision is warranted because in its determination, the board did not make any factual findings on the claim element strip being bent along its longitudinal axis.

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And even if the board made factual findings regarding this element of the claim, it was not supported by substantial evidence.

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During re-exam and on appeal to the board, appellant argued that

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The clips of BART are bent laterally as opposed longitudinally as required by independent claims 1, 10, 13, and 16 of the 005 patent.

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Just because a cross-sectional view of BART shows an edge having a 90-degree angle does not suggest that the bird discloses a longitudinally bent structure as claimed.

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Further,

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The appellant argued that in response to non-final office action, response to final office action on appeal brief and reply brief, that BART significantly discourages the investigation of any longitudinal bent structures used for the clip for the reason

[00:01:44] Speaker 00:
that the clips in BERT are bent laterally, not longitudinally.

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In response, the examiner generally pointed to Figure 226 to find the missing element of the claim.

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The board then stated that the examiner's rejection finds that BERT teaches all aspects of the appellant's claim except wire mesh.

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We believe that this pointing to figure 226 cannot be sufficient to meet the substantial evidence standard because no reasonable mind would accept the examiner's assertion as adequate for finding that BIRD discloses or suggests the claim element should be bent along its longitudinal axis.

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The board ending

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statement was, accordingly, we sustained the examiner's rejection of claim 1 through 19.

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And we believe it is not enough to pass the standard established by this court in several cases, starting with in Rebrena, in Recre, ICON Health, and non-precedential opinion in Cutsworth, the motive power.

[00:02:56] Speaker 00:
There is no express adoption of examiner findings.

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There is no reference or incorporation by reference to any detailed record.

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Instead, like in ICON Health and Hasworth, the PTAP final decision was spent much on summarizing the party's

[00:03:13] Speaker 00:
Arguments and the board offered only conclusory analysis of its own on the question of obviousness and more to the point where one finds street being bent along its longitudinal axis.

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We believe that at the minimum the remand is proper based on the caseload that I just referenced.

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It follows that the combination teaches a way which concept varies, of course, upon the issue of motivation to combine.

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Essentially, teaching a way is anti-motivation to combine, and Polvita would not have had a reason to combine birth and sex, clearly absent the one element as claimed in the challenge patent.

[00:03:57] Speaker 02:
Next up... Excuse me.

[00:03:59] Speaker 02:
This is Judge Lynn.

[00:04:01] Speaker 02:
Yes, Your Honor.

[00:04:03] Speaker 02:
Did your client contest the longitudinal access claim limitation before the board?

[00:04:09] Speaker 00:
Yes, Your Honor.

[00:04:12] Speaker 02:
I'm sorry.

[00:04:16] Speaker 02:
Where did your client contest that?

[00:04:20] Speaker 00:
In response to the non-final office action appendix 384 and 385,

[00:04:28] Speaker 00:
in response to final office action, Appendix 0423, on appeal brief, Appendix 460 and 461, and in reply brief, Your Honor, 496 to 498.

[00:04:43] Speaker 02:
And even if the board may not have made his own fact findings, the board adopted the examiner's conclusions with respect to the longitudinal access limitation.

[00:04:56] Speaker 02:
Is that right?

[00:04:58] Speaker 00:
Well, the board stated basically that the examiner found all elements of the claims.

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And what the examiner did, examiner referenced figure 2226 for the proposition that there is the missing element of the claim.

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But other than that, we believe that under the existing case law, it is not enough

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for the board to simply restate without their own, if you will, your own elaboration on the subject, that this is enough for the board to conclusively state that this meets the element of the claim.

[00:05:49] Speaker 03:
Council, when we're looking at BERT and seeing BERT being applied to some

[00:05:55] Speaker 03:
steel beam or arch, and we see that the clips of BERT are bent.

[00:06:04] Speaker 03:
And I understand your view that they're bent along its so-called lateral axis because that's the shorter length of those clips.

[00:06:18] Speaker 03:
But why couldn't it also be considered being bent along its longitudinal axis since there

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That's the y-axis.

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That's the vertical axis along which they're being applied to some building.

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Therefore, its longitudinal axis, as understood, is how it's positioned on some structure.

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And so therefore, because that's the y-axis, that's the longitudinal axis.

[00:06:50] Speaker 00:
Your Honor, I guess the answer to that question is because the examiner focused on CLIP

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with the wings of four and seven only.

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For the first time, the solicitor brought up the so-called assembly street nine.

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That hasn't been brought up in before.

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And it's another point is, for example, solicitor brought up figure one, which I think that your honor is referring to, because if the court looks at figures two to six,

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It is hard to basically, well, it's not hard to imagine, but I do not believe that just assembling or assembling those strips will create a straight line or some unitary strips that will serve the purpose of 005 patent.

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And it will go completely counter the bird, basically.

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because BERT is created for curved edges, not straight edges.

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And that was one of the points that we made in answers to examiners and on appeal.

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And Solicitor advanced this argument for the first time in the responses brief and brought up never use figure one and argued that this is somehow unitary street that bends longitudinally.

[00:08:20] Speaker 00:
And that's why in the clips, I'm sorry.

[00:08:24] Speaker 03:
Yeah, here's another question.

[00:08:26] Speaker 03:
Looking at figure seven of BERT, there's the BERT invented corner bead.

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And then there's also a conventional corner bead at the very bottom of that as illustrated.

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And as we can see, it's got a lot more width or length, depending on how you look at it.

[00:08:50] Speaker 03:
And I was just curious, for that conventional corner bead as illustrated in BERT, if you were to use a wire mesh, basically combine it with SACS such that you use the wire mesh there for that conventional corner bead, would that have all of the limitations of your claim?

[00:09:10] Speaker 00:
I don't believe so, Your Honor.

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And the reason why is because figure seven of BERT has

[00:09:18] Speaker 00:
While the individual clips of BART appear to be straight, BART specifically teaches that other rigid corner beads, not BART, are used on straight edges.

[00:09:30] Speaker 03:
And nothing in BART actually says the entire bead can be used on the straight edges, but merely says that... I'm referring to the other bead in Figure 7, the one at the very bottom of that arc.

[00:09:47] Speaker 03:
that is a conventional corner bead?

[00:09:51] Speaker 03:
And whether you used a wire mesh for that, would that have all the claimed limitations?

[00:10:00] Speaker 00:
Well, I guess it depends what kind of wire mesh will be used because what... The wire mesh is that.

[00:10:08] Speaker 00:
No.

[00:10:09] Speaker 00:
The answer to that is no, for the reason that we also explained how that would destroy the purpose of birth.

[00:10:19] Speaker 00:
Because, Your Honor, because basically the board divorcing longitudinal rigid structure of SACS mesh to modify the structure of bird creep is not proper for the reason that SACS mesh is not any kind of mesh because it has longitudinal rigidity that in no way can make bird operational because bird is designed to curve spaces, surfaces.

[00:10:49] Speaker 00:
And even if one can modify solid clip of BART with suck mesh, this combination would suffer from the same deficiency.

[00:10:57] Speaker 00:
This is the element of the claim, which is street being bent along its longitudinal axis.

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And in some, the substantial evidence showed that BART specifically discourages the investigation of any longitudinally bent structure used for the clip, because the clip has a lateral bend.

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And SACS discourages or teaches away from combination with BART.

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So again, purpose of BART is to provide a corner beat for curved corners, and the combination with SACS would not allow for a smooth curve, and therefore would render BART unsatisfactory for its intended purpose.

[00:11:37] Speaker 00:
So that's basically the argument that I guess answers your honor question.

[00:11:44] Speaker 04:
Okay, any more questions at the moment?

[00:11:48] Speaker 04:
All right, we'll save you a full rebuttal time.

[00:11:50] Speaker 04:
Let's hear from the other side.

[00:11:52] Speaker 04:
Ms.

[00:11:53] Speaker 04:
Lateef.

[00:11:55] Speaker 01:
Thank you, Judge Newman.

[00:11:56] Speaker 01:
May it please the court?

[00:11:58] Speaker 01:
Substantial evidence supports the board's finding that AMC's claimed invention is obvious over BERT in view of stats.

[00:12:05] Speaker 01:
With respect to appellant's argument that this claim limitation about a longitudinal access claim was argued before the board

[00:12:14] Speaker 01:
Um, there's actually no evidence of that.

[00:12:16] Speaker 01:
There was a forfeiture here and as a result, this court should not consider that argument today.

[00:12:22] Speaker 01:
Um, I, in my briefing, your honors may note that I use the word waiver, but I filed this prior to the Google tech holding.

[00:12:30] Speaker 01:
So as I speak today, I will refer to forfeiture.

[00:12:35] Speaker 01:
What was forfeited?

[00:12:37] Speaker 01:
This argument that the combination does not disclose the longitudinal access claim limitation.

[00:12:42] Speaker 01:
So that's a limitation that says that the strip was bent along its longitudinal access.

[00:12:48] Speaker 01:
If you look at what AMC argued to the board, they made two arguments.

[00:12:54] Speaker 01:
One argument was that the combination taught away because allegedly BERT is only used for curved opening.

[00:13:02] Speaker 01:
And then the second argument that they made was that the combination destroys the purpose of BERT for that very same reason about allegedly BERT is only used for curved openings.

[00:13:14] Speaker 01:
They did not argue that there were any limitations missing within the combination.

[00:13:20] Speaker 04:
You're saying that they were required to foresee what they might hear from the other side and argue against it.

[00:13:30] Speaker 04:
I think let's just set aside

[00:13:33] Speaker 04:
this question of forfeiture and make sure that what the office did and what the board did was fair and just and adequate and not retrospectively impose artificial barriers.

[00:13:52] Speaker 01:
Sure, Your Honor.

[00:13:53] Speaker 01:
If you look at the final office action on page APPX 397,

[00:13:58] Speaker 01:
The examiner made a finding and in that finding, he said that the strip is bent along its longitudinal axis and cited two figures, two through six.

[00:14:07] Speaker 01:
So there was nothing for AMC to have to anticipate that argument.

[00:14:11] Speaker 01:
Uh, the examiner made a finding and when AMC appealed to the board, they never disputed that particular finding.

[00:14:20] Speaker 04:
They didn't have to.

[00:14:22] Speaker 01:
It's not in the prior art.

[00:14:26] Speaker 01:
Well, they didn't dispute that it's not in the prior art, Your Honor.

[00:14:28] Speaker 01:
They didn't make an argument to the board that the examiner made an erroneous rejection because a limitation was missing, that the combination couldn't be because this particular limitation was missing.

[00:14:39] Speaker 04:
Well, the examiner didn't say it was in the prior art.

[00:14:44] Speaker 04:
The prior art was cited for other purposes, which are before us.

[00:14:52] Speaker 01:
So the examiner said that that particular limitation was found in Burt, and it pointed to figures two through six.

[00:15:01] Speaker 01:
And so if AMC did not agree with that, AMC should have argued to the board that the examiner made an erroneous finding, and they did not do that.

[00:15:12] Speaker 01:
Well, Ms.

[00:15:13] Speaker 02:
Latif, this is Judge Lynn.

[00:15:15] Speaker 02:
Let's put aside for the moment any forfeiture or waiver argument and just focus on

[00:15:22] Speaker 02:
the limitation.

[00:15:24] Speaker 02:
Okay.

[00:15:26] Speaker 02:
Where in BERT is that limitation disclosed?

[00:15:31] Speaker 01:
So if you look at BERT on page APPX 22, BERT's Figure 6, BERT is talking about, BERT has several unitary clips 9, and those unitary clips sit on top of a wire nose 3.

[00:15:48] Speaker 01:
And so Figure 6 is showing you a planar view of that.

[00:15:52] Speaker 01:
And if you look at those strips, they form these sort of wings, four and seven.

[00:15:59] Speaker 01:
That's what you're looking at, to the left and to the right.

[00:16:02] Speaker 01:
And so those unitary clips along wire nose three are longitudinally bent.

[00:16:10] Speaker 01:
And if you were to extend this up against a wall, this is just a short view.

[00:16:14] Speaker 01:
But if you were to extend this wire and have it up against a wall, that is longitudinally bent.

[00:16:21] Speaker 01:
You sure it is?

[00:16:22] Speaker 04:
But birth is related to a curved corner.

[00:16:27] Speaker 04:
So you're changing the facts.

[00:16:31] Speaker 01:
Well, that's AMC's argument.

[00:16:33] Speaker 01:
But the examiner and the board found that birth can be used on substantially straight corners.

[00:16:40] Speaker 01:
It may prefer curved corners, but it does not discourage or say that it cannot be used against straight corners.

[00:16:47] Speaker 04:
And in fact, it doesn't teach it.

[00:16:50] Speaker 04:
is concerned with a curve.

[00:16:52] Speaker 04:
That was its structure and its invention.

[00:16:58] Speaker 01:
Well, if you look at APPX 24, Your Honor, and you look at line 38, it says, my flexible beads cooperate with any straight type of corner reinforcement.

[00:17:11] Speaker 01:
And then a few lines down, line 43, it says, my bendable beads need not be cut to the exact length of an arch.

[00:17:20] Speaker 01:
If a standard length should be longer than required, the excess may simply extend onto the straight corner.

[00:17:27] Speaker 01:
It's not against being used on substantially straight corners.

[00:17:34] Speaker 01:
That is an argument that AMC is making, but that is not what BERT is actually saying.

[00:17:38] Speaker 01:
And you can kind of see that in Figure 7, where it's showing that bottom part, which is the prior, and then it might be kind of start at the curve.

[00:17:49] Speaker 01:
But if, for some reason, what that passage that I just read was saying is that it could also be on that substantially straight part.

[00:17:57] Speaker 01:
BERT does not discourage that, does not say that it cannot work, does not say that it should not work.

[00:18:03] Speaker 01:
And so the examiner and the board found that BERT actually does not disclose that it is only used for curved edges.

[00:18:13] Speaker 01:
So it is our argument that if you remove the forfeiture, which we believe is valid, but if this court decides that it has discretion to hear those arguments, substantial evidence still supports the fact that this longitudinal access claim limitation is present in BERT, and to Judge Newman,

[00:18:34] Speaker 01:
At this point, it can also be used on substantially straight corners.

[00:18:42] Speaker 01:
So I don't know if the court has any questions, but basically, I just want to argue that there was a motivation to combine here because the examiner made a finding as to why the art would be motivated.

[00:18:57] Speaker 01:
I mean, I'm sorry, why the art would be combined.

[00:18:59] Speaker 01:
The AMC did not dispute that particular finding.

[00:19:03] Speaker 01:
And the board affirmed it when it affirmed the examiner's findings in this case.

[00:19:11] Speaker 04:
Any more questions for Ms.

[00:19:12] Speaker 04:
Lateef?

[00:19:14] Speaker 02:
No, thank you.

[00:19:15] Speaker 04:
No?

[00:19:16] Speaker 04:
You have your rebuttal time, Ms.

[00:19:18] Speaker 00:
Brzezinski.

[00:19:19] Speaker 00:
Thank you, Your Honor.

[00:19:20] Speaker 00:
Again, nothing in BERT actually says the entire beat can be used on straight edges.

[00:19:26] Speaker 00:
But it merely says that invention can be used in addition to rigid beats

[00:19:32] Speaker 00:
as shown in Figure 7 of BART.

[00:19:34] Speaker 00:
As to motivation to combine, the Board, our position is that the Board did not meet its burden in showing that Posita would have been motivated to combine BART with SACS in the way as to include the claim elements being bent along its longitudinal axis.

[00:19:52] Speaker 00:
And the Board also did not explain that there would be a reasonable expectation of success that BART and SACS would meet all the claimed elements.

[00:20:01] Speaker 00:
There is no explanation as to why Posita would have taken the longitudinally rigid wire mesh of socks, reduce it in size, turn it 90 degrees to allow bird lateral bend.

[00:20:16] Speaker 00:
And the board erroneously claims that the suggestion for the modification need only apply to the combination with socks, which has nothing to do with whether bird itself is usable on straight edges.

[00:20:30] Speaker 00:
Again, the ability to be used on straight edges goes directly to the heart of the missing claim element being bent along its longitudinal axis, which the board failed to find after the examiner failed to find that as well.

[00:20:46] Speaker 00:
That's all I have.

[00:20:47] Speaker 00:
Thank you very much.

[00:20:49] Speaker 04:
Any more questions?

[00:20:51] Speaker 04:
Thank you.

[00:20:53] Speaker 04:
Okay.

[00:20:53] Speaker 04:
Thanks to counsel for both sides.

[00:20:55] Speaker 04:
The case is taken under submission.

[00:20:57] Speaker 04:
And that concludes this panel's arguments for this morning.

[00:21:04] Speaker 01:
Thank you.

[00:21:04] Speaker 01:
The honorable court is adjourned until tomorrow morning at 10.