[00:00:00] Speaker 03:
Anyone that's 1599 in Ray Miller.

[00:00:48] Speaker 02:
Pardon?

[00:00:51] Speaker 02:
Yes.

[00:00:53] Speaker 02:
That's correct.

[00:00:54] Speaker 03:
Mr. Ataya, please proceed.

[00:01:23] Speaker 00:
Good morning, Your Honors, and may it please the Court.

[00:01:28] Speaker 00:
We're here today regarding a patent application, which now, a decade after that application was filed, remains before the PTO in original examination.

[00:01:44] Speaker 00:
And this is now its second trip on appeal, first trip to this Court, but second trip through the PTAB.

[00:01:54] Speaker 00:
It is a simple mechanical invention by any measure.

[00:02:01] Speaker 00:
An idea of integrating an emergency water store

[00:02:06] Speaker 00:
into pieces of furniture, tables, chairs, pieces of furniture like that, but integrating it in a way that it's unobtrusive.

[00:02:18] Speaker 00:
It does not detract from a person's chosen decor.

[00:02:23] Speaker 00:
It allows the furniture that's there to continue to function in the way that you would expect a piece of furniture to function, while providing you with this additional capability

[00:02:39] Speaker 00:
As is evident from the published application, which appears in the appendix at 814 through 844, both the specification and the drawings of this application are very much focused on this idea.

[00:02:58] Speaker 00:
The idea of an emergency water store integrated with various pieces of furniture is not some tangential thing.

[00:03:09] Speaker 00:
a central thing in the application that we're talking about.

[00:03:13] Speaker 00:
That brings us to the first issue, which is the broadest reasonable interpretation of this limitation that appears in Claim 1, quote, emergency water store, close quote.

[00:03:31] Speaker 00:
Under prevailing law, under this court's jurisprudence, we know that the broadest reasonable interpretation must be consistent with the specification as it would be understood by those skilled in the art.

[00:03:47] Speaker 00:
And what we believe has happened here before the board, before the examiner, is that an unreasonably broad interpretation has been adopted such that

[00:03:59] Speaker 00:
The word emergency, in particular, has effectively been read out of the claim limitation.

[00:04:06] Speaker 00:
And in so doing, it has rendered an interpretation of that claim limitation, which is unreasonably broad and clearly inconsistent with the appellant specification.

[00:04:27] Speaker 00:
Now,

[00:04:31] Speaker 00:
When the application was filed, and again, this appears in the published application in the appendix 814 through 844, the claims there included claims that were written in broader form.

[00:04:52] Speaker 00:
Certain of those claims did not recite the limitation emergency water store, but several other claims did.

[00:04:59] Speaker 00:
I believe in particular those were claims 2, 5, 7, 9, 12, and 15.

[00:05:06] Speaker 00:
So that limitation was there in the claim set from the time that this application was filed.

[00:05:15] Speaker 00:
And now it is, of course, one of the central issues on this appeal.

[00:05:21] Speaker 00:
And what is the correct, broadest, reasonable interpretation of that limitation?

[00:05:31] Speaker 00:
In the PTAB's, what is referred to in our briefs as its second decision, since this was the decision in the second appeal, this application, that decision, of course, is at appendix one through five.

[00:05:49] Speaker 00:
The PTAB does not come out and just take a position, does not come out and say, OK, here's the limitation.

[00:05:59] Speaker 00:
emergency water store and we hold that it means X under the broadest reasonable interpretation.

[00:06:10] Speaker 00:
They don't give us that kind of finding or conclusion of law to work at here.

[00:06:18] Speaker 00:
They do say in that decision that parsing the word emergency from the limitation is appropriate because according to the board,

[00:06:30] Speaker 00:
That is merely an intended use of the structure and as a merely an intended use, it's not limiting of the claim.

[00:06:45] Speaker 00:
We think the board is wrong on that given what the entirety of the specification has to say about emergency water store.

[00:06:56] Speaker 00:
and the various embodiments that are described in the specification and disclosed in the drawings.

[00:07:04] Speaker 00:
We would offer that that limitation to be effectively read out of the claim as merely an intended use results in a much broader and unreasonably broad

[00:07:21] Speaker 00:
Interpretation being applied by the examiner by the board which interpretation again is not consistent with the specification as it would be understood by those skilled in the art Between an emergency water store and a water store oh

[00:07:48] Speaker 00:
The notion of the emergency water store is not described as a unique structural aspect to it.

[00:08:02] Speaker 00:
The further limitation in claim one about it is that it requires a plurality of containers that are substantially identical, et cetera.

[00:08:18] Speaker 00:
You might think of it hierarchically at the higher level when we are talking about the phrase delimitation, emergency water store.

[00:08:29] Speaker 00:
There is nothing described in the specification that tells us that it must be this way or it must be that way in terms of the physical structure.

[00:08:43] Speaker 00:
And that is the specification.

[00:08:55] Speaker 00:
Now turning for a moment to the prior art of record here, the primary reference is Shaw.

[00:09:11] Speaker 00:
Shaw appears in the appendix at 13 through 18.

[00:09:16] Speaker 00:
And fundamentally Shaw

[00:09:18] Speaker 00:
is a knockdown table, a portable table, which he described as applicable for dining outdoors and which has a certain geometry to it.

[00:09:35] Speaker 00:
It allows you to protect your

[00:09:37] Speaker 00:
your food, your picnic items, etc.

[00:09:41] Speaker 00:
sort of keep them contained so that the pests don't get to it and you've got a nice outdoor dining experience.

[00:09:53] Speaker 00:
Shaw has nothing to do with emergency preparedness.

[00:10:00] Speaker 00:
That is not a problem that Shaw identifies or attempts to address in any way.

[00:10:06] Speaker 00:
And this is why

[00:10:08] Speaker 00:
Shaw does not mention the word emergency.

[00:10:12] Speaker 00:
He doesn't talk about an emergency situation.

[00:10:15] Speaker 00:
He doesn't talk specifically about an emergency situation where a normally available water supply becomes, to some event, becomes unusable, unavailable, which is... But isn't Shaw's disclosed

[00:10:37] Speaker 03:
structure capable of being used when somebody loses their water?

[00:10:44] Speaker 00:
Is it capable of it?

[00:10:47] Speaker 00:
I would have to say no, Your Honor.

[00:10:50] Speaker 03:
It's not?

[00:10:50] Speaker 03:
You can't use the water disclosed in Shaw when your water goes out?

[00:10:59] Speaker 00:
In that sense, you could, Your Honor, but here's the difficulty with it.

[00:11:02] Speaker 00:
Here's the difficulty.

[00:11:04] Speaker 00:
Without any recognition,

[00:11:06] Speaker 00:
of the problem here, and the problem here we could discuss under a label like emergency preparedness, without any recognition of that problem.

[00:11:24] Speaker 00:
And Shaw has not.

[00:11:26] Speaker 00:
I don't think that's in this view.

[00:11:29] Speaker 03:
If you got this patent, you would want to assert this patent against people selling structures

[00:11:35] Speaker 03:
capable of storing water if they are capable of then using that water for emergency water use when they run out of water, right?

[00:11:47] Speaker 03:
Even if somebody advertised it without the word emergency in their advertisement, if they're selling a structure that looks exactly like what your figure looks like and fits meets your claim description, you're going to want to sue them for infringement, aren't you?

[00:12:01] Speaker 00:
Well, Your Honor, if we got a claim issued and it retained this limitation, an emergency water store, then we would have to live with that limitation for purposes of asserting the patent, right, for purposes of enforcement.

[00:12:17] Speaker 03:
And so... So if people sold a product capable of being used as an emergency water store but didn't mention the word emergency,

[00:12:26] Speaker 03:
It would be your view if you got the patent under these circumstances, you could not assert it against those people.

[00:12:31] Speaker 00:
It would not be my view at this moment as we're discussing this sort of one way or the other.

[00:12:38] Speaker 03:
I'm simply saying that... Well, see, but that's a problem because you would like the Shaw structure, which is in fact capable of being used as an emergency water storage, not to be able to prevent you from getting a patent because it doesn't actually discuss emergency uses, but it is capable of being used that way.

[00:12:58] Speaker 03:
But we all know that if you were to get this patent, you would want to assert it against products capable of being used as emergency water storage tanks, even if it wasn't expressly mentioned in the advertising.

[00:13:10] Speaker 03:
So it seems like an all or nothing proposition.

[00:13:12] Speaker 03:
You can't have it both ways.

[00:13:15] Speaker 03:
Your Honor, it may well be... That which infringes if later anticipates if earlier, right?

[00:13:20] Speaker 00:
That is correct.

[00:13:21] Speaker 00:
That is correct.

[00:13:24] Speaker 00:
All I can say is that the limitation counts the same, right?

[00:13:33] Speaker 00:
The limitation is there.

[00:13:36] Speaker 00:
If it's there now, if it's there later in an issued claim, then that's the limitation.

[00:13:44] Speaker 00:
But right now, it's all about dealing with the PTO.

[00:13:50] Speaker 00:
I see that I'm into my rebuttal time.

[00:13:52] Speaker 03:
Would you like to save it?

[00:13:54] Speaker 00:
Yes, I would.

[00:14:14] Speaker 01:
Good morning, Your Honors.

[00:14:14] Speaker 01:
May it please the Court?

[00:14:16] Speaker 01:
This is, as my friend across the aisle opened with, a very simple case.

[00:14:22] Speaker 01:
Miller claims a table with an internal volume for holding an emergency water store.

[00:14:28] Speaker 01:
Where in the emergency water store is a plurality of reusable containers with a spout.

[00:14:36] Speaker 01:
Shaw discloses a table with an internal storage area 14 for holding contents 26, which can include any articles such as foodstuffs, picnic supplies, and ice.

[00:14:51] Speaker 01:
Both the board and the examiner found that contents 26 embraced a water store by virtue of the fact that they include any articles as so already named.

[00:15:04] Speaker 01:
The board and the seminar also found that a person of ordinary skill in the art would have been motivated to use Herkner's water storage bottles with spouts in Shaw's table based on Herkner's disclosure that his bottles are economically and easily cleaned.

[00:15:25] Speaker 01:
So the only way that Miller can overcome this very strong prima facie case of obviousness is if, and I think the judges have recognized, he can show that an emergency water store is somehow structurally or functionally different from an ordinary water store.

[00:15:48] Speaker 01:
In other words, it's something more than an intended use.

[00:15:51] Speaker 01:
Miller cannot do that.

[00:15:53] Speaker 01:
As far as structure is concerned,

[00:15:56] Speaker 01:
Herkner's water bottles are identical to the water bottles shown in most of the figures in Shaw and those same water bottles are described in Miller's specification as an emergency water store.

[00:16:13] Speaker 01:
Indeed as far as being so there can be no doubt that those same water bottles can function as a water store and

[00:16:23] Speaker 01:
Miller's own specification teaches that an emergency water store can be used as a non-emergency water store and one would presume vice versa.

[00:16:37] Speaker 01:
So there is nothing that has been presented in our briefs or here at Oral Argument that alters those facts that emergency water store, the emergency portion of it is an intended use.

[00:16:52] Speaker 01:
Do Your Honors have any questions?

[00:16:55] Speaker 03:
I would like to just ask you about the mapping issue.

[00:16:59] Speaker 03:
And in particular, it seems like the board diverged from the examiner's findings on the question of mapping.

[00:17:09] Speaker 03:
The examiner mapped Shull's internal storage area 14 to the volume limitation, but the board mapped it to the emergency water store limitation.

[00:17:19] Speaker 03:
it seems like the board may have deviated from the examiner's findings.

[00:17:25] Speaker 01:
I don't believe that's a correct assertion.

[00:17:30] Speaker 01:
I know that Miller made that assertion.

[00:17:34] Speaker 01:
But if you actually look to what the examiner said, and so I'm going to direct your attention to page 609.

[00:17:53] Speaker 01:
So if you look to what the examiner said at that page, he refers to the load-bearing frame 20, defining the volume 14, and that Shaw discloses that the storage containers can include

[00:18:22] Speaker 01:
what would be contents 26 which include food stuffs, picnic supplies and ice which encompasses an emergency water store.

[00:18:30] Speaker 01:
So what the examiner says here is that it's contents 26 that encompasses the emergency water store and not the volume.

[00:18:45] Speaker 01:
And the board similarly

[00:18:48] Speaker 01:
In the board's decision at page A3, the board similarly says and recognizes that the examiner cites Shaw's internal storage area 14, not the picnic supplies, et cetera,

[00:19:05] Speaker 01:
as teaching an emergency water store and then they more articulately state in the paragraph on page four of the appendix that this internal storage area contains contents 26 which can include any articles etc.

[00:19:25] Speaker 01:
and they state that this is in fact a water store.

[00:19:33] Speaker 01:
I don't think there is a true mapping problem.

[00:19:37] Speaker 01:
The only distinction between the board's findings and the examiner's findings are that the examiner said that foodstuffs and picnic supplies and ice inherently include water, and the board said in footnote three, we're not relying on that, but we're just relying on the fact that any article is very broad, and this list of examples here

[00:20:01] Speaker 01:
generally, and that's the word they use on page four, include water.

[00:20:07] Speaker 01:
So we do have a water store in contents 26 and that's consistent between the examiner and the board.

[00:20:15] Speaker 03:
Where is the board's volume limitation?

[00:20:18] Speaker 03:
Where does the board say what in Shaw corresponds to the volume limitation?

[00:20:28] Speaker 03:
Because the examiner, I thought,

[00:20:30] Speaker 03:
was saying it's the internal storage area 14.

[00:20:34] Speaker 03:
It is the volume, yes.

[00:20:36] Speaker 03:
Well how can it be both the volume area and the water emergency water store?

[00:20:41] Speaker 03:
Those are two different limitations.

[00:20:44] Speaker 01:
Well the volume includes the storage so Shaw happens to define this internal storage area 14

[00:20:57] Speaker 01:
which includes contents 26.

[00:20:59] Speaker 01:
So in that way, it's the two things combined.

[00:21:03] Speaker 01:
We're telling, Shaw's telling you, here's what's in my volume.

[00:21:09] Speaker 03:
I'm sorry.

[00:21:10] Speaker 03:
Where did the board make a finding of where in the prior art references the volume limitation is met?

[00:21:20] Speaker 03:
Would that be on page three or four?

[00:21:22] Speaker 01:
Where would I find that?

[00:21:26] Speaker 01:
Doesn't parse the internal storage area 14 and contents 26 in that way But I would assert that neither does the claim language the claim language simply says the volume in which an emergency water store is disposed so that internal storage area that volume is where you're going to put your emergency water store and

[00:21:55] Speaker 01:
and that the emergency water store is, according to the claim language, a plurality of reusable storage containers, which, as far as Shaw is concerned... Okay, so there's a volume, and then inside the volume are these emergency storage containers, correct?

[00:22:15] Speaker 03:
Correct.

[00:22:16] Speaker 03:
Okay, well the board mapped 14 to the emergency storage containers.

[00:22:22] Speaker 03:
So where's the volume?

[00:22:24] Speaker 01:
I think the board, if you look at the paragraph beginning with second, did exactly what the examiner did, and that this paragraph beginning with first can be read in context of the preceding paragraph, which is where they're talking about

[00:22:46] Speaker 03:
I mean, because you see the paragraph that begins with first, it seems to say pretty darn clearly Shaw's internal storage area 14 is the claimed emergency water store, doesn't it?

[00:22:57] Speaker 03:
I mean, am I missing something?

[00:23:02] Speaker 01:
I think the board was being in artful there because this response is to what's going on in the first paragraph and the arguments that Herkner's making that foodstuffs are the, and this is an argument that was made throughout prosecution, that foodstuffs, the examiner was finding that foodstuffs were the emergency water store.

[00:23:25] Speaker 01:
And the board is saying no,

[00:23:27] Speaker 01:
You've got this volume here for holding your emergency water store, and that's internal storage area number 14, not foodstuffs.

[00:23:37] Speaker 01:
And the board should have, as also said, in combination with contents 26 in that first sentence,

[00:23:49] Speaker 01:
But they didn't.

[00:23:50] Speaker 01:
First paragraph.

[00:23:51] Speaker 01:
But they did go on to say that in the second paragraph.

[00:23:55] Speaker 03:
And when read in light of the examiner's statement... Where in the second paragraph did they say something that you think adds clarity to that first paragraph sentence?

[00:24:04] Speaker 01:
Because they talk about both Shaw's... A water store is taught or obvious in light of the internal storage area 14.

[00:24:12] Speaker 01:
and that Shaw teaches that the contents of 26 of the Internal Storage Area 14 can include any articles such as picnic supplies, foodstuffs, and ice.

[00:24:23] Speaker 01:
Shaw's disclosure of any articles includes water, especially since picnic supplies, foodstuffs, generally include water.

[00:24:35] Speaker 03:
So you think that the volume is

[00:24:39] Speaker 03:
So you think storage area 14 satisfies both the volume limitation and the emergency water store limitation, and it's not two separate structures?

[00:24:51] Speaker 01:
I think that internal storage area 14 is a separate structure from contents 26.

[00:25:00] Speaker 01:
And I think that the claims also indicate that they are two separate things.

[00:25:05] Speaker 01:
Because if you look at claim one,

[00:25:09] Speaker 01:
If you look at representative claim here, you'll see that the load-bearing frame defines a volume in which a water store is disposed and that the water store includes a plurality of reusable storage containers.

[00:25:27] Speaker 01:
So the claims themselves

[00:25:32] Speaker 01:
have described these items as two separate things.

[00:25:36] Speaker 01:
You have a volume into which the emergency water store goes, and the emergency water store includes not just the water, but these plurality of containers.

[00:25:46] Speaker 01:
So those are two different items according to the claim, and those are two different items according to Shaw.

[00:25:56] Speaker 03:
I don't disagree with you.

[00:25:57] Speaker 03:
There are two different items according to Shaw.

[00:25:58] Speaker 03:
I'm just struggling to reconcile the examiner's fact finding about what corresponds to which of those items with the board's fact finding about what corresponds to which of those items.

[00:26:07] Speaker 03:
And I'm wondering, quite frankly, if there's an APA problem in light of that.

[00:26:12] Speaker 03:
You might want to tell me that it's waived because they didn't even mention the words APA or notice and comment anywhere in their thing.

[00:26:17] Speaker 03:
But I am a little bit troubled that the board seemed to deviate from the mapping that I understood the examiner to make.

[00:26:25] Speaker 01:
Well, the examiner didn't make a table mapping.

[00:26:33] Speaker 01:
The examiner just articulated in words and probably with less specificity than your honor would like at pages 609 and

[00:26:47] Speaker 01:
pages 764 of the record about which items referred to which.

[00:26:54] Speaker 01:
I do think that the examiner was referring, I think if you look at those pages you'll see the examiner was referring to both internal storage area 14 and articles 26 and definitely the board was referring to both of those things.

[00:27:11] Speaker 01:
Again, probably with less clarity than your honors would like, but your honor is correct.

[00:27:16] Speaker 01:
that this sort of issue about sufficiency under the APA was not raised by opposing counsel.

[00:27:26] Speaker 01:
Are there any further questions?

[00:27:29] Speaker 02:
I have one question for you.

[00:27:31] Speaker 02:
Do you have any import that you would attribute to bottom of page, appendix page two to three of the phrase about the adopting the examiner's findings and conclusions?

[00:27:42] Speaker 02:
I'm sorry.

[00:27:43] Speaker 02:
I'm sorry.

[00:27:44] Speaker 02:
Let me speak up.

[00:27:45] Speaker 02:
Do you attribute or import anything to what you can see on appendix pages two to three?

[00:27:50] Speaker 02:
Mm-hmm.

[00:27:51] Speaker 02:
Where it talks about adopting the examiner's findings and conclusions.

[00:27:57] Speaker 01:
Yes.

[00:27:57] Speaker 01:
The board, under the board's rules, the examiner is, when the board affirms the examiner,

[00:28:06] Speaker 01:
They are, even if they don't expressly adopt the findings, adopting those findings except where they expressly depart from the examiner's findings.

[00:28:16] Speaker 01:
So here the board makes an express statement that we adopt their findings.

[00:28:20] Speaker 01:
But if you look at footnote three on the bottom of page four, what they're doing is they are disavowing

[00:28:32] Speaker 01:
the examiner's reliance on inherency.

[00:28:36] Speaker 01:
Now truth be told, I don't think the examiner was using the word inherency as a term of art, but just in case, the board disavowed that portion of the examiner's findings and then said here that foodstuffs and picnic supplies generally include water, which is different in a legal sense from inherently.

[00:29:00] Speaker 02:
Can you identify for me the sentences in the board's decision where it addressed Miller's new evidence?

[00:29:09] Speaker 01:
Yes, if you look at page four that they say that the new evidence is not on point and Not directed to the invention as claimed now the reason if you look at that evidence first of all is

[00:29:23] Speaker 01:
It falls into two categories.

[00:29:25] Speaker 01:
The first category is a series of dictionary definitions defining what foodstuffs are.

[00:29:31] Speaker 01:
Well, since neither the board of the examiner is relying on foodstuffs, but rather any articles with contents 26, that's irrelevant.

[00:29:41] Speaker 01:
And then they have a picture to show what an emergency water story is, and then two patents to show what a water story is.

[00:29:51] Speaker 01:
None of those three items show what an emergency water store or a water store is, teach or even suggest that there's an art recognized definition of the term emergency water store.

[00:30:07] Speaker 01:
And certainly not one that would override the description of an emergency water store and the specification of just some water.

[00:30:16] Speaker 01:
presumably in these water bottles that are identical to Herkner that serve this function.

[00:30:23] Speaker 01:
The first of those references is the building that houses over 100,000 gallons of water.

[00:30:31] Speaker 01:
If that's an emergency water store, certainly the claimed table does not meet that definition by any stretch of imagination.

[00:30:43] Speaker 01:
In the volume of water held or

[00:30:45] Speaker 01:
The fact that one's a building and one is a table, you couldn't put a building into the volume of the claim table.

[00:30:52] Speaker 02:
So you're just pointing to the one sentence on appendix page four, is that right, as the board addressing the new evidence?

[00:31:01] Speaker 01:
That's the board's, that's the only place where the board addresses that.

[00:31:04] Speaker 01:
Yes, it is a short board decision, we recognize that.

[00:31:11] Speaker 03:
Okay, thank you, counsel.

[00:31:12] Speaker 01:
If there are no further questions,

[00:31:16] Speaker 01:
I thank the court.

[00:31:17] Speaker 01:
We ask that you affirm.

[00:31:18] Speaker 03:
Mr. Ataya, you have some rebuttal time.

[00:31:41] Speaker 00:
A couple of quick points, Your Honor.

[00:31:44] Speaker 00:
Regarding Herkner, the secondary reference, a considerable amount of the PTO's brief that's devoted to comparing Herkner's water bottle to the drawings, various embodiments of the appellants application.

[00:32:02] Speaker 00:
And it's completely immaterial because number one... Council, I have to cut you off.

[00:32:07] Speaker 03:
You didn't raise this in your opening argument.

[00:32:10] Speaker 03:
which means you didn't give the PTO a chance to offer any response to it.

[00:32:14] Speaker 03:
So I can't allow you to address it.

[00:32:15] Speaker 03:
You're going to have to rely on your briefs.

[00:32:20] Speaker 00:
Let me address then the subject about the evidence that the appellant submitted.

[00:32:26] Speaker 00:
in response to the non-final office action, which reopened prosecution after her successful first appeal.

[00:32:36] Speaker 00:
This includes the photo and web page of a structure, a building, turned an emergency water store that existed at an airfield in the UK during World War II.

[00:32:49] Speaker 00:
We submitted this evidence

[00:32:52] Speaker 00:
in an effort to refute the 103 rejection of the non-final action to show that here is an example of a structure that is named exactly this, an emergency water store.

[00:33:09] Speaker 00:
Now yes, it's a building and an airfield, but the notion of this, what is the significance of this evidence was to show

[00:33:19] Speaker 00:
there was at least one instance of this.

[00:33:22] Speaker 00:
This was in the notion, again, of emergency preparedness, preparing for an emergency, and that that should bear on the broadest reasonable interpretation that the examiner was adopting at that point.

[00:33:44] Speaker 00:
We have no record.

[00:33:46] Speaker 00:
The examiner made no record.

[00:33:48] Speaker 00:
The board made no record of why that evidence or any of the other evidence that was submitted at that time were essentially not enough insufficient.

[00:34:03] Speaker 00:
I see that my time is almost up unless there are further questions from the panel.

[00:34:08] Speaker 00:
I thank you for your consideration.

[00:34:10] Speaker 03:
I thank both counsel.

[00:34:11] Speaker 03:
This case is taken under submission.