[00:00:00] Speaker 01:
Our next case for argument is 21-2324, Hyatt versus PTO.

[00:00:05] Speaker 01:
All right, Mr. Grossman, please proceed.

[00:00:08] Speaker 04:
Good morning, Your Honors, and may it please the court.

[00:00:11] Speaker 04:
Andrew Grossman for the appellant, and I would like to reserve three minutes for rebuttal.

[00:00:16] Speaker 04:
When Congress changed the patent term regime,

[00:00:18] Speaker 04:
to provide a relief to applicants with long pending applications who stood to lose years of patent term if they had to file continuing applications subject to the new regime.

[00:00:27] Speaker 01:
I have a question.

[00:00:28] Speaker 01:
How in the world is this an amendment to a claim?

[00:00:32] Speaker 01:
You've got seven whole new claims that, apart from the word up or comprising, bear no resemblance to the originally filed claims.

[00:00:41] Speaker 04:
Your Honor, that's the PTO's position.

[00:00:42] Speaker 04:
But I think if you actually look at the claim comparison that was prepared by the PTO examiner in this case,

[00:00:48] Speaker 04:
You'll see that the subject matter actually does bear a relation.

[00:00:51] Speaker 01:
What page do you want me to look at?

[00:00:52] Speaker 04:
Sure, Your Honor.

[00:00:53] Speaker 04:
Page 9599 of the appendix.

[00:00:56] Speaker 04:
There's a claim comparison table.

[00:00:59] Speaker 04:
I'd be happy to talk about it.

[00:01:00] Speaker 04:
I think the one that makes this clearest is claim number 146.

[00:01:03] Speaker 04:
If you look at claim 46 in the left-hand box in the table on that page, the claim relates to a three-dimensional display system

[00:01:14] Speaker 04:
that could include the display of genetic information.

[00:01:18] Speaker 04:
And if you look at the amended claim, and that's all the way over in the right-hand box, the claim relates to... I'm sorry.

[00:01:27] Speaker 04:
Did you say 95?

[00:01:28] Speaker 04:
95.

[00:01:28] Speaker 04:
I'm sorry.

[00:01:29] Speaker 04:
59.99.

[00:01:29] Speaker 01:
OK.

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

[00:01:31] Speaker 01:
I have been going off.

[00:01:32] Speaker 01:
I don't think I have that page.

[00:01:34] Speaker 01:
59.99?

[00:01:34] Speaker 01:
99.

[00:01:35] Speaker 01:
I don't have that page.

[00:01:41] Speaker 01:
My appendix goes from...

[00:01:43] Speaker 01:
From 2386 to 6888.

[00:01:51] Speaker 04:
Your Honor, I believe it's in the confidential appendix.

[00:01:53] Speaker 04:
If we did not provide that particular page to the court, I'd be happy to.

[00:01:56] Speaker 01:
Oh, OK.

[00:01:57] Speaker 01:
OK, wait.

[00:01:57] Speaker 01:
I think I found it now.

[00:01:58] Speaker 01:
What did you say?

[00:01:59] Speaker 01:
9599.

[00:01:59] Speaker 01:
9599?

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

[00:02:03] Speaker 01:
OK, I think that's it.

[00:02:08] Speaker 04:
Your Honor, that page may have been dropped out because, frankly, the substance of the claims at issue here is not an issue that was before the court.

[00:02:16] Speaker 04:
And so it's something that the parties did not engage in their briefing.

[00:02:19] Speaker 04:
We do dispute the PTO's claim that the amendment here was anything like a shift.

[00:02:24] Speaker 04:
But it's not an issue that we raised into court, and it's not an issue that's been litigated by the parties.

[00:02:29] Speaker 01:
But as I was saying, the initial claim- You're telling me what's before me isn't whether a restriction requirement would have been proper in this case, but whether there is a bar to restriction requirements like this altogether.

[00:02:40] Speaker 04:
Exactly, Your Honor.

[00:02:42] Speaker 01:
In other words, PCO- And I think it was proper, by the way.

[00:02:45] Speaker 01:
If there was one.

[00:02:46] Speaker 01:
If they're allowed to have one, it sure looks proper to me.

[00:02:48] Speaker 04:
But Your Honor, all I would say is if you look at that particular claim, claim 146, and we're happy to submit a supplemental filing with that portion of the amendment.

[00:02:56] Speaker 01:
I'm not going to reach whether a restriction requirement was proper.

[00:02:59] Speaker 04:
I will say that it narrowed and focused the claims to deal with a three-dimensional display system focusing on genetic information.

[00:03:06] Speaker 04:
It was narrower.

[00:03:07] Speaker 04:
But in any instance, the question that's before the court is PTO's legal authority to enter the restriction requirement.

[00:03:14] Speaker 04:
And I'd like to begin with the statute.

[00:03:16] Speaker 04:
The URAA's text requires PTO to examine more than one invention in a transitional application.

[00:03:23] Speaker 04:
And Congress fleshed out the URAA by giving legal force to a statement of administrative action issued by the executive branch.

[00:03:30] Speaker 04:
The statement provides that the PTO is prohibited from restricting claims out of transitional applications.

[00:03:36] Speaker 04:
And there are only two exceptions.

[00:03:38] Speaker 04:
One is for restriction requirements made more than two months before the patent term changeover, and that obviously doesn't apply to a restriction that was entered in 2016.

[00:03:47] Speaker 04:
The other exception allows restriction when PTO hasn't entered a single office action in the application due to actions by the applicant.

[00:03:56] Speaker 04:
PTO has never contended that the applicant here did anything.

[00:04:00] Speaker 04:
that prevented it from entering an office action in this application.

[00:04:03] Speaker 04:
And in fact, there were many.

[00:04:04] Speaker 00:
So let me ask you.

[00:04:05] Speaker 00:
So when we deal with the regulation, you're not challenging the regulation.

[00:04:08] Speaker 00:
You're just saying that it was misinterpreted and missupplied by the PTO.

[00:04:12] Speaker 04:
Your Honor, we raised two arguments regarding the invalidity of the actions here.

[00:04:16] Speaker 04:
One is invalidity under the statute, the URAA, as fleshed out by the statement of administrative action.

[00:04:23] Speaker 04:
And the second concerns PTO's noncompliance with its own rule.

[00:04:27] Speaker 04:
rule 129.

[00:04:28] Speaker 04:
What I'm addressing now is the statutory argument.

[00:04:35] Speaker 04:
And we pointed out this basis for reversal in our opening brief.

[00:04:42] Speaker 04:
We made clear that the PTO did not satisfy either of the exceptions to the blanket prohibition on restriction requirements in transitional applications.

[00:04:51] Speaker 04:
And the PTO has provided no argument to the contrary whatsoever.

[00:04:55] Speaker 04:
The agency literally does not have an argument that explains how its actions that are under review in this case comply with the statute

[00:05:02] Speaker 04:
And that is a very unusual circumstance.

[00:05:04] Speaker 04:
And I think the reason for that is there simply is no argument for the agency to make.

[00:05:08] Speaker 04:
The first exception doesn't apply in a temporal basis.

[00:05:11] Speaker 00:
So are you saying that the regulation is, I'm just trying to understand the argument in its totality.

[00:05:16] Speaker 00:
Are you saying that the regulation is invalid because it's inconsistent with the statute?

[00:05:21] Speaker 00:
Or are you saying the regulation is appropriate and reflexive?

[00:05:25] Speaker 04:
Your Honor, what we're saying is that the PTO's actions under review, particularly the restriction requirement, as well as its petition decision, violate the statute.

[00:05:34] Speaker 04:
That is this argument.

[00:05:36] Speaker 04:
And they are contrary to law for that reason.

[00:05:38] Speaker 01:
When you say their actions under review, we got to back up.

[00:05:40] Speaker 01:
You're not answering her question directly.

[00:05:41] Speaker 01:
There are facial challenges, and then there are as-applied challenges.

[00:05:44] Speaker 01:
And those are two different things.

[00:05:46] Speaker 01:
And I think what Judge Prost is getting at is, which one of those are you making?

[00:05:50] Speaker 04:
This is not, Your Honor, a challenge

[00:05:53] Speaker 04:
This is not a challenge to the regulation.

[00:05:56] Speaker 04:
For example, if PTO promulgates a regulation, a party can, of course.

[00:05:59] Speaker 02:
But what if we determine that PTO complied with its regulations here?

[00:06:02] Speaker 02:
I'm sorry.

[00:06:03] Speaker 02:
What if we determine that PTO complied with its regulations here, interpreting this statute?

[00:06:09] Speaker 04:
Well, frankly, Your Honor, I don't think that the PTO has.

[00:06:12] Speaker 04:
I don't think the court need reach that issue for two reasons.

[00:06:15] Speaker 02:
I really don't understand what you're arguing at all.

[00:06:17] Speaker 02:
There's a statute.

[00:06:18] Speaker 02:
The PTO has implemented the statute in regulation.

[00:06:21] Speaker 02:
And so we look at whether PTO has complied with its regulations implementing that statute.

[00:06:27] Speaker 02:
If you want to challenge those regulations as inconsistent with the statute, you have to do that.

[00:06:32] Speaker 02:
You can't just say ignore the regulations, only judge us under the statute.

[00:06:36] Speaker 02:
That's not the way administrative law works.

[00:06:38] Speaker 04:
Your Honor, I don't think that's correct.

[00:06:40] Speaker 00:
An agency of court- If you were to conclude, we could write an opinion in your view that says these regulations were complied with A to Z, but their actions were still unlawful under the statute.

[00:06:54] Speaker 00:
And we don't get into whether that suggests, right, that you're challenging the regulation, which you're not doing.

[00:07:01] Speaker 04:
Your Honor, I think the court could simply hold that the actions at issue violate the statute.

[00:07:07] Speaker 04:
PTO has to follow the statutory authority that limits its authorization under law.

[00:07:16] Speaker 04:
And in this instance, the PTO didn't do that.

[00:07:18] Speaker 04:
It took actions that violate the statute.

[00:07:19] Speaker 04:
Every agency is a creature of statute and cannot exercise power inconsistent with the statutory authority that governs its actions.

[00:07:26] Speaker 02:
That sounds an awful lot like an argument that the regulations are inconsistent with the statute.

[00:07:32] Speaker 04:
Well, we do also make an argument, Your Honor, that the regulations have to be interpreted and applied in a way that is consistent with the statute.

[00:07:38] Speaker 04:
In this instance, they were not.

[00:07:40] Speaker 04:
I'm certainly happy to move on to the regulatory argument.

[00:07:43] Speaker 02:
But I would like to make clear that a violation of the statute is- Where in your brief did you say that regulations are inconsistent with the statute?

[00:07:49] Speaker 04:
I believe it's both in a topic heading, and we had an entire, I believe, subsection on that in our opening brief.

[00:07:55] Speaker 04:
Tell me where.

[00:07:56] Speaker 04:
I believe the topic heading says something along the lines that the actions are inconsistent with the URAA, which is the statute.

[00:08:04] Speaker 04:
That argument was pressed in our brief.

[00:08:06] Speaker 02:
Would you like to show me that?

[00:08:07] Speaker 02:
Because I don't see it in the total context.

[00:08:11] Speaker 00:
I mean, you do have a heading that says the rule and the URAA prohibit restrictions requirements.

[00:08:17] Speaker 00:
So you seem to hear those.

[00:08:19] Speaker 04:
Your Honor, I'd be happy to provide the specific reference on the bottle.

[00:08:25] Speaker 04:
But I assure you, it is in our opening brief.

[00:08:27] Speaker 04:
And we actually laid out an entire argument regarding PTO's obligations under the statute.

[00:08:34] Speaker 04:
And the PTO tendered no response to that whatsoever.

[00:08:36] Speaker 04:
And this wasn't the first time.

[00:08:38] Speaker 02:
That doesn't sound like an argument that the regulations are inconsistent with the statute.

[00:08:43] Speaker 02:
It's an action.

[00:08:45] Speaker 04:
There is a difference your honor, but PTO's actions in this case must comply with the statute the agency doesn't have any authority to act contrary to the statute The headings are rule 129 and the ura prohibit the restriction required Yes, your honor and the second one just as the restriction requirement does not satisfy the regulatory exceptions right your honor so that first argument that you highlighted I believe it's subsection B of that argument lays out why the restriction requirement in this case violates the ura a

[00:09:15] Speaker 04:
And indeed, the topic heading says that the restriction requirement violates the URA.

[00:09:19] Speaker 04:
I mean, that was in the topic heading.

[00:09:22] Speaker 04:
I don't think there was any mystery about what we were arguing here.

[00:09:25] Speaker 04:
And the court can certainly look at the arguments that were presented and see that we presented a statutory argument.

[00:09:31] Speaker 04:
As I said, I'm happy to address that on rebuttal.

[00:09:36] Speaker 04:
But I'm also happy to move on to the application of Rule 129.

[00:09:39] Speaker 04:
And just like the statute rule, 129 generally prohibits restriction requirements.

[00:09:44] Speaker 04:
And the exception that was cited by PTO in this case covers circumstances where the examiner did not make a restriction prior to April 8, 1995, due to actions by the applicant.

[00:09:54] Speaker 04:
And PTO claims that that exception applies whenever an applicant adds claims directed to a previously unclaimed invention.

[00:10:01] Speaker 04:
Because that means the applicant withheld or failed to file those claims back in 1995,

[00:10:06] Speaker 04:
and thereby prevented the examiner from making the restriction requirement.

[00:10:10] Speaker 04:
But the phrase actions by the applicant unambiguously refers to affirmative actions made through a written filing with the agency.

[00:10:16] Speaker 04:
And it doesn't reach inaction like failing to present particular claims at a particular time.

[00:10:21] Speaker 04:
PTO rules require that all business with the agency be transacted in writing.

[00:10:26] Speaker 04:
And PTO regulations have always used the phrase action.

[00:10:29] Speaker 01:
Why wouldn't actions by the applicant include

[00:10:34] Speaker 01:
what you filed claims on.

[00:10:36] Speaker 01:
What the BTO is saying is you chose to pursue claims directed to one particular invention.

[00:10:43] Speaker 01:
You chose not to pursue claims directed to the other invention.

[00:10:45] Speaker 01:
So you made an action.

[00:10:46] Speaker 01:
Your action was in choosing which invention to pursue claims on.

[00:10:51] Speaker 01:
That is an action by you.

[00:10:54] Speaker 01:
You chose not to file them on anything else.

[00:10:56] Speaker 01:
You chose to file them on this.

[00:10:58] Speaker 01:
So why can't they then come back and

[00:11:01] Speaker 01:
enter a restriction requirement later, by choosing to file them on only one invention, you definitely prohibited them from filing a restriction requirement.

[00:11:09] Speaker 01:
You didn't include a second invention.

[00:11:11] Speaker 01:
They couldn't have filed it then.

[00:11:13] Speaker 01:
I don't know why that isn't an action by the applicant.

[00:11:15] Speaker 04:
So I think there are two reasons, Your Honor.

[00:11:17] Speaker 04:
The first one is that if you look at PTO's regulations across the board you will see that the term actions by the applicant or action by the applicant is used consistently to mean some type of affirmative action taken by the applicant.

[00:11:31] Speaker 01:
But this wasn't affirmative action.

[00:11:32] Speaker 01:
Affirmative action was your choice to limit your filing to

[00:11:37] Speaker 01:
only claims directed to the first intent.

[00:11:39] Speaker 04:
Well, but when the PTO seeks to address that sort of omission or failure to file something, its regulations consistently use the word omission or failure.

[00:11:48] Speaker 04:
They do not use words like action of the applicant, which refers to some type of express action that has a particular effect.

[00:11:56] Speaker 04:
And in this instance, you would expect the agency to use a word like omit or failure to make clear that it was rescinding a large part of the relief provided in subsection A of the rule

[00:12:06] Speaker 04:
through this sort of cryptic reference in subsection B. I don't think that's how anybody reading the rule would understand it to operate.

[00:12:13] Speaker 00:
So actively withholding claims is inaction rather than action?

[00:12:20] Speaker 00:
I mean, you're saying that we should tease out the difference between action.

[00:12:24] Speaker 04:
I think there is a difference, Your Honor.

[00:12:26] Speaker 04:
But I also think that there is no evidence and there was certainly no finding by the agency that Mr. Hyatt actively withheld the claims at the time, as opposed to simply failed to file them.

[00:12:35] Speaker 04:
by the time of the patent term changeover.

[00:12:38] Speaker 04:
But the second reason, and after that I would like to reserve the remainder of my time, is simply that PTO's interpretation of this instance violates the statute.

[00:12:45] Speaker 01:
So you think his choice not to file claims to this second invention doesn't, that's not an action on his part?

[00:12:53] Speaker 04:
I don't think it's an action within, I don't think it's an action by the applicant within the meaning of the regulation and certainly not within the meaning of the statute.

[00:12:59] Speaker 01:
Okay, well why don't we hear from the government.

[00:13:01] Speaker 04:
Thank you, Your Honor.

[00:13:06] Speaker 01:
Mr. Sauer, please proceed.

[00:13:09] Speaker 03:
Good morning, and may it please the court.

[00:13:11] Speaker 03:
Peter Sauer on behalf of the director of the USPTO.

[00:13:16] Speaker 03:
Congress passed the Uruguay Rounds Agreements Act to implement changes to patent term related to the general agreement on tariffs and trade.

[00:13:25] Speaker 03:
In the URAA, Congress gave the director of rulemaking authority to accomplish the purposes of the rules, did so in broad terms, left the details to the director.

[00:13:35] Speaker 00:
Have you just on the point, I'm sorry to interrupt, but on the point you were making with your friend about whether or not he preserved a particular argument.

[00:13:42] Speaker 00:
I mean, there is a page I'm doing about the URAA and why it's been violated.

[00:13:46] Speaker 00:
Did you address that issue specifically in your brief?

[00:13:50] Speaker 03:
We did not, Your Honor.

[00:13:51] Speaker 03:
We don't see the brief as clearly raising a facial challenge rule, nor one having been raised below.

[00:13:56] Speaker 03:
But in essence, even if it had been raised, the government views it as a non-issue, because contrary to my colleague's assertion,

[00:14:08] Speaker 03:
The statement of administrative action specifically states that one of the exceptions to entering a restriction requirement is if there's not been an action due to actions by the applicant.

[00:14:22] Speaker 03:
And those are the exact same words that are repeated, echoed in Rule 129 that we're here arguing about.

[00:14:29] Speaker 03:
So it's hard to see any possible or reasonable argument that

[00:14:34] Speaker 03:
a regulation that uses the exact same words as a statement of administrative action could somehow be inconsistent with it.

[00:14:42] Speaker 00:
And is it your view that we start with the regulation, and if we think that arguably, hypothetically, the action here by the office was consistent with the regulation, then in order to then reach the second issue, which is, but it's arguably not consistent with the statute, you would have had to challenge the regulation?

[00:15:04] Speaker 03:
Yes.

[00:15:04] Speaker 00:
Or would we necessarily just go to that issue no matter what?

[00:15:10] Speaker 03:
I do think it's incumbent to raise all the arguments before the district court to have the district court to have that opportunity.

[00:15:15] Speaker 03:
And there's not a clear facial challenge to the regulation being consistent with the enabling statute here.

[00:15:24] Speaker 03:
And again, even if there was, I mean.

[00:15:27] Speaker 01:
I mean, I think his argument, in fairness, is that

[00:15:31] Speaker 01:
to the way the PTO is applying the regulation in this case to what he calls omission or inaction is not consistent with the regulation because the regulation has to be consistent with the statute and that would be inconsistent.

[00:15:50] Speaker 01:
He's saying we have to interpret the regulation in a way that renders it consistent with the statute and he's saying there's a way to do that and it's by

[00:15:58] Speaker 01:
requiring affirmative actions and not allowing omissions to qualify.

[00:16:02] Speaker 01:
Do you understand that to be a fair characterization of his argument?

[00:16:06] Speaker 03:
Yes, I do, Your Honor.

[00:16:07] Speaker 03:
But in that case, then I think that those issues collapse into one because of the point that I raised that the regulation and the statute both have used the exact same words about

[00:16:20] Speaker 03:
actions by the applicant.

[00:16:23] Speaker 03:
So the words are precisely the same.

[00:16:25] Speaker 03:
So however they are interpreted, it has to be the same in both places.

[00:16:29] Speaker 03:
And it just becomes one issue to resolve.

[00:16:31] Speaker 02:
That's not really a question of interpretation of whether the regulation complies with the statute.

[00:16:37] Speaker 02:
It's just an interpretation of the term action and what that means.

[00:16:42] Speaker 03:
That's correct, because you would interpret the same in both places.

[00:16:46] Speaker 03:
It's the same word used the same way.

[00:16:48] Speaker 00:
So why the argument he made about active and passive and withholding and so on.

[00:16:53] Speaker 00:
I mean, your brief does say actively withhold.

[00:16:58] Speaker 00:
Where do we get that?

[00:17:00] Speaker 00:
And is that, in fact, inconsistent with other regulations and so forth that differentiate between action and inaction?

[00:17:09] Speaker 03:
I have two responses to your honor's question.

[00:17:11] Speaker 03:
As the chief judge already suggested,

[00:17:16] Speaker 03:
There was an action here.

[00:17:17] Speaker 03:
Mr. Hyatt submitted his application.

[00:17:20] Speaker 03:
He acted to submit an application.

[00:17:22] Speaker 03:
He acted to choose which claims to include in that application.

[00:17:26] Speaker 03:
And if he believed he had written description support for multiple independent and distinct inventions, it was incumbent upon him to submit his application with claims to all of the inventions that he believed he described.

[00:17:40] Speaker 03:
So that was the affirmative action.

[00:17:43] Speaker 03:
He submitted an application with claims of his choosing and chose not to include claims to material that he apparently... So this would cover no amendments.

[00:17:52] Speaker 00:
It would foreclose all amendments.

[00:17:53] Speaker 00:
It would allow restriction requirements in instances of all subsequent amendments.

[00:17:59] Speaker 03:
No, Your Honor, because there are many, many amendments that are possible that don't... Only amendments that are directed to entirely new inventions, right?

[00:18:06] Speaker 01:
Like it wouldn't affect amendments if it's still directed to the same invention.

[00:18:09] Speaker 03:
That's correct.

[00:18:10] Speaker 03:
The terminology that USPTO regulations use is independent and distinct subject matter.

[00:18:15] Speaker 03:
So it is possible to modify limitations, clarify language, write related claims.

[00:18:21] Speaker 03:
Those are the types of things that are contemplated under 129A.

[00:18:26] Speaker 03:
But if you entirely shift the subject matter of the claims or add claims to entirely new and distinct subject matter,

[00:18:34] Speaker 03:
Then it becomes appropriate to look to 129B, which applies to restriction practice, and it tells you when and when a restriction requirement can or cannot be entered.

[00:18:44] Speaker 00:
So I don't want to make this case any more complicated than it already is, but your friend started with pointing us to a portion of the exhibit, I guess making the argument, I think, we didn't develop it, that they weren't distinct.

[00:18:57] Speaker 00:
They weren't substantially distinct.

[00:18:59] Speaker 00:
Was that issue adjudicated below?

[00:19:01] Speaker 00:
It's not before us, I don't think.

[00:19:03] Speaker 03:
It was not adjudicated below.

[00:19:05] Speaker 03:
Mr. Hyde has never challenged in this APA case the appropriateness of the restriction requirement itself, the determination that there were independent and distinct inventions being claimed.

[00:19:19] Speaker 03:
He's only challenging whether it was even possible for the USPTO to enter a restriction requirement here because of the effects of Rule 129.

[00:19:34] Speaker 03:
Again, I think Judge Hilton did an excellent job below writing a clear and simple to understand decision about why this rule is clear.

[00:19:44] Speaker 03:
He described the rule as unambiguous.

[00:19:47] Speaker 03:
USPTO agrees that there is no ambiguity in this rule.

[00:19:51] Speaker 03:
And I think in particular, just beyond the language of subsection B12 that we're arguing about this language due to actions by the applicant, when you look at 129 as a whole, or at least 129B, you see that the balance being struck.

[00:20:09] Speaker 03:
The intent behind it is that was the USPTO in the possession of the information it needed to enter a restriction requirement prior to the cutoff date?

[00:20:19] Speaker 03:
If the USPTO is lagging behind in processing applications, and we didn't look at it in time, and there were distinct inventions there, and we didn't enter the restriction requirements so that a timely divisional could be filed before the change in patent term.

[00:20:33] Speaker 01:
That wouldn't be due to the applicant.

[00:20:34] Speaker 03:
That's not due to the applicant.

[00:20:35] Speaker 03:
That's the PTO's fault.

[00:20:37] Speaker 01:
But if you would- What are the kinds of actions an applicant could take apart from not filing these claims to a separate invention?

[00:20:46] Speaker 01:
What are the kinds of things that could be due to the applicant that would fall under two little i?

[00:20:51] Speaker 01:
Can you give me some examples?

[00:20:54] Speaker 03:
There are other examples that are pointed out in the MPEP section 803.03.

[00:21:03] Speaker 03:
Examples there include applicant abandoned the application and continued to refile the application such that no office action could be issued in the application.

[00:21:11] Speaker 03:
The second example is applicant requested suspension of prosecution under 37 CFR 1.103A such that no office action could be issued in the application.

[00:21:23] Speaker 03:
The third example is exactly the situation that we have here.

[00:21:27] Speaker 03:
Applicant disclosed a plurality of independent and distinct inventions in the present or parent application, but delayed presenting claims to more than one of the disclosed independent and distinct inventions in the present or parent application, such that no restriction requirement could be made prior to April 8, 1995.

[00:21:44] Speaker 01:
Is it your view that we need to give our deference to that PTO manual?

[00:21:50] Speaker 03:
So I don't think it's necessary to reach that question.

[00:21:54] Speaker 03:
As we argued in our brief, we think that the regulation is clear and unambiguous.

[00:21:58] Speaker 03:
So we don't have to reach the question of deference.

[00:22:01] Speaker 03:
But if this court looks at all of the interpretational tools that

[00:22:06] Speaker 03:
the Supreme Court said in Kaiser have to be applied in order to grant our deference and still finds it's ambiguous, then I think that it's hard to find a clearer statement than is reflected in the NPDB.

[00:22:20] Speaker 00:
You didn't argue.

[00:22:21] Speaker 00:
I mean, I think you affirmatively said in your brief, we're not arguing our hair.

[00:22:26] Speaker 00:
And so the other side didn't.

[00:22:29] Speaker 00:
I don't think they responded.

[00:22:30] Speaker 00:
I do think you said this is not.

[00:22:33] Speaker 00:
So I mean, I guess on a little,

[00:22:35] Speaker 00:
apprehensive about going down that rabbit hole.

[00:22:40] Speaker 03:
We did, Your Honor, on page 34 to 35 of the red brief.

[00:22:44] Speaker 03:
So I'm wrong?

[00:22:46] Speaker 03:
The argument is similar there.

[00:22:48] Speaker 03:
It's brief.

[00:22:49] Speaker 03:
But it's similar to what I've just stated here, that we believe the regulation is clear and ambiguous.

[00:22:54] Speaker 03:
So it's not necessary to reach that.

[00:22:56] Speaker 00:
On ambiguous.

[00:22:57] Speaker 00:
OK.

[00:22:57] Speaker 00:
Oh, what you said is your dispute court.

[00:22:58] Speaker 03:
On ambiguous.

[00:22:59] Speaker 03:
Sorry if I misspoke.

[00:23:00] Speaker 00:
The dispute court didn't go down that route.

[00:23:02] Speaker 03:
It did not.

[00:23:03] Speaker 03:
I mean, it did cite Morgan Ross, which says that the PTO should get deference on some of these complicated regulations about abandonment.

[00:23:12] Speaker 03:
But the court twice stated that it found the regulation unambiguous and that the PTO is entitled to enter a restriction requirement here.

[00:23:23] Speaker 01:
OK, anything else?

[00:23:25] Speaker 03:
If the court has no further questions, I have filled my time.

[00:23:28] Speaker 03:
Thank you.

[00:23:29] Speaker 01:
Mr. Grossman, do you have some rebuttal time?

[00:23:32] Speaker 04:
Thank you, Your Honor.

[00:23:33] Speaker 04:
And just a few short points.

[00:23:35] Speaker 04:
First, our statutory argument that the agency's actions violate the statute is in section

[00:23:40] Speaker 04:
2C of our brief at pages 18 to 19, and it says that and argues that expressly.

[00:23:44] Speaker 04:
We also argued in section 3B that the agency's interpretation of the statute violates.

[00:23:51] Speaker 04:
I'm sorry, interpretation of the rule violates the statute.

[00:23:54] Speaker 04:
Second, as to the statement of administrative authority, I believe my friend slightly mischaracterized the exception that is at issue in that provision.

[00:24:04] Speaker 04:
It states that the exception applies if there has not been at least one patent trademark office action due to actions by the applicant.

[00:24:12] Speaker 04:
It does not have the reference to restriction requirements that is contained in the rule.

[00:24:17] Speaker 04:
And that makes a big difference in two respects.

[00:24:20] Speaker 04:
One, it certainly supports our statutory argument given that there have been numerous office actions in this application prior to the entry of the restriction requirement.

[00:24:30] Speaker 04:
And second,

[00:24:32] Speaker 04:
It also affects the interpretation of the regulation, because it's only affirmative actions by an applicant that can prevent the PTO from entering at least one office action.

[00:24:42] Speaker 04:
Those types of actions might include, as they were identified by the PTO in the final rule itself, repetitive refiling of an application and a request for suspension that prevents the PTO from acting.

[00:24:53] Speaker 04:
We think that's what the rule encompasses, and we think that's all the rule could possibly encompass so as to be consistent with the statute.

[00:25:00] Speaker 04:
A third point.

[00:25:02] Speaker 04:
is that the PTO has offered no explanation at all how its interpretation of the rule is consistent with the statement of administrative authority.

[00:25:11] Speaker 04:
We briefed that issue.

[00:25:12] Speaker 04:
There was an entire section of our brief, a subsection of our brief, laying that out.

[00:25:15] Speaker 04:
The PTO has no response.

[00:25:17] Speaker 04:
And I don't think my friend has any response other than to simply

[00:25:20] Speaker 04:
incorrectly describe what it is that the statement of administrative action says, claiming that it refers to restrictions when it does not refer to restrictions.

[00:25:30] Speaker 04:
My friend also stated... You're saying it doesn't refer to restrictions.

[00:25:34] Speaker 04:
It does not, Your Honor.

[00:25:35] Speaker 04:
It bars PTO from entering restriction requirements, but then the exception that my friend referenced does not refer to restrictions.

[00:25:43] Speaker 04:
It refers to the PTO entering at least one office action, not a restriction, any office action at all.

[00:25:50] Speaker 04:
That's in the SAA.

[00:25:52] Speaker 04:
It's in the addendum to our brief.

[00:25:55] Speaker 01:
Where is this?

[00:25:57] Speaker 04:
This is in the statement of administrative action.

[00:25:59] Speaker 04:
It's addendum four.

[00:26:01] Speaker 00:
At page 1005 to 1006, I thought it says it goes through the restriction requirement, and then it says this limitation does not apply, blah, blah, blah, blah, blah.

[00:26:14] Speaker 04:
So this is at the back of our brief, addendum number four, page five.

[00:26:19] Speaker 04:
And I will read verbatim from the SAA.

[00:26:24] Speaker 04:
This limitation, that is the restriction on being able to enter restriction requirements.

[00:26:31] Speaker 04:
Addendum number four, page five.

[00:26:36] Speaker 04:
And it's at the very top of the page.

[00:26:38] Speaker 04:
So in the preceding page, the SAA lays out the blanket prohibition on restrictions.

[00:26:43] Speaker 04:
Then it says as follows.

[00:26:44] Speaker 04:
This limitation does not apply if such a requirement was first made in such application where a predecessor application were then two months prior to such effective date.

[00:26:52] Speaker 04:
Not an issue here.

[00:26:54] Speaker 04:
And then the second exception, or if there has not been at least one patent and trademark office action due to actions by the applicant.

[00:27:02] Speaker 04:
And that's the whole point of our statutory argument.

[00:27:05] Speaker 04:
which is there were numerous patent and trademark office actions in this application prior to entry of the restriction requirement.

[00:27:11] Speaker 04:
The PTO conceded that below.

[00:27:13] Speaker 04:
And so that's why the agency has no argument at all that its actions in this case, the making and maintaining of a restriction requirement and abandoning an application based on that, have any basis in the statute whatsoever.

[00:27:26] Speaker 04:
The statute does not give the agency the authority to do that.

[00:27:30] Speaker 04:
If the court has no further questions, we would ask the decision below be reversed.

[00:27:34] Speaker 04:
Thank you.