[00:00:00] Speaker 03:
The final case for argument is 22-1244 in Ray Boto.

[00:00:03] Speaker 03:
Good morning, Dr. Schreiber.

[00:00:06] Speaker 03:
Whenever you're ready.

[00:00:10] Speaker 01:
I'm Donald Schreiber and I'm here on behalf of your opponent, Martin Boto.

[00:00:17] Speaker 01:
In this patent application, independent claim one has been rejected under 35 USC 103 on the basis of a combination of two

[00:00:31] Speaker 01:
The essence of CLAIM-1 is that there's a microwave beam that impinges upon the magnetic conductive antenna.

[00:00:42] Speaker 01:
And that antenna is resonant at a particular frequency included among the microwave beam's frequencies.

[00:00:55] Speaker 01:
Impingement of the beam upon the antenna

[00:01:00] Speaker 01:
creates a reflected signal that comes back, can be received, and established that the beam struck with this retroreflector.

[00:01:14] Speaker 01:
The two references that have been combined apply to what are called radio frequency identification tags, RFID tags, and they

[00:01:30] Speaker 01:
have very similar structures in that the references disclose an antenna that is connected to some sort of circuit.

[00:01:41] Speaker 01:
In the case of FINK, the circuit is a surface acoustic wave device.

[00:01:47] Speaker 01:
It's a passive device, has no transistors in it, but it requires an electrical signal in order to operate and produce some code

[00:01:59] Speaker 01:
that goes back to the antenna and from the antenna back to a receiver to say that the RFID tag has been hit by a radio wave.

[00:02:12] Speaker 03:
Just before the time runs out, what is your main argument with respect to where the board dropped the ball here?

[00:02:18] Speaker 03:
Is it because you say there was no indication that these two references would have been combined?

[00:02:25] Speaker 01:
Okay, there's two arguments.

[00:02:29] Speaker 01:
One is there is no suggestion to combine the references.

[00:02:35] Speaker 01:
Both references standing by themselves work perfectly fine.

[00:02:39] Speaker 03:
But hasn't that train kind of left the station with at least the Supreme Court's opinion?

[00:02:45] Speaker 03:
I'm sorry.

[00:02:45] Speaker 03:
I'm sorry.

[00:02:46] Speaker 03:
Hasn't that train kind of left the station with the Supreme Court's opinion in KSR, which rejected the need for an explicit suggestion or teaching?

[00:02:58] Speaker 01:
I am no expert on KSR, but the Manual of Patent Examining Procedure still has a section specifically devoted to the need in making a rejection under 103 based on a combination of references that there be some suggestion to combine the references.

[00:03:25] Speaker 00:
Does it have to be expressly stated in one of the references being relied upon for a proposed confirmation?

[00:03:31] Speaker 01:
That's not entirely clear, but in the facts of this particular case, there is actually an expressed contradiction between the suggestion identified in the patent trial on appeal board decision and the

[00:03:52] Speaker 01:
which incorporates by reference argument for suggestion in the final rejection.

[00:04:02] Speaker 01:
And the argument in the final rejection is inconsistent with the combination that is being used to reject the claim.

[00:04:23] Speaker 00:
I believe in the final rejection, the examiner found one would be motivated to combine the references.

[00:04:31] Speaker 00:
One would it be obvious to use a meandering conductor in order to gain the benefit of reducing the number of components.

[00:04:38] Speaker 00:
That's correct.

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And the board said that was an adequate rationale at the very end of its opinion at A-12.

[00:04:46] Speaker 01:
It does adopt that rationale, but the number of components

[00:04:53] Speaker 01:
in the combination is greater than the number of the components in the claimed invention.

[00:04:59] Speaker 01:
The claimed invention has only the meandering conductor.

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It has no circuit, either passive or active.

[00:05:07] Speaker 01:
And so the rationale, which says it's obvious because it reduces the number of components, is dynamically opposed

[00:05:17] Speaker 01:
to the combination of what is being used to reject the claim.

[00:05:21] Speaker 02:
Wait.

[00:05:21] Speaker 02:
Can I understand?

[00:05:22] Speaker 02:
You just said that the number of components in the combined prior art is more than the number of components in the claim.

[00:05:31] Speaker 02:
Is that what you said?

[00:05:32] Speaker 02:
Well, first of all, it's a comprising claim.

[00:05:35] Speaker 02:
And second of all, it's a comprising claim.

[00:05:37] Speaker 02:
So that means that the claim allows for additional elements.

[00:05:43] Speaker 02:
And then my second response to what you've said is, what does that matter?

[00:05:48] Speaker 02:
The question is whether it would have been obvious to one in the ordinary scale in New York to modify FINK to have meandering antennas, right?

[00:05:58] Speaker 02:
Isn't that the question?

[00:06:00] Speaker 02:
And so the board says, yes, it was, because Taki, the secondary reference, gives advantages for meandering antennas, right?

[00:06:09] Speaker 01:
The problem with that is the fundamental problem solved

[00:06:17] Speaker 01:
in the Takai reference, is that when you make these things very small, the antenna impedance is difficult to match with the circuit impedance.

[00:06:30] Speaker 01:
And if you go through Takai, you'll find he's constantly emphasizing, as he has perhaps close to a dozen different antenna structures in the reference.

[00:06:41] Speaker 01:
And in every instance, he emphasizes

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that with this structure you match the impedance of the antenna to the IC which is creating the identification tag.

[00:06:56] Speaker 01:
The reason why you want this impedance matching is that if the impedances are the same, the maximum amount of electrical energy goes from the antenna into the circuit and comes back out of the circuit into the antenna.

[00:07:11] Speaker 01:
If the impedances are mismatched,

[00:07:14] Speaker 01:
You transfer less energy.

[00:07:16] Speaker 01:
It's less efficient.

[00:07:17] Speaker 00:
Did you make this argument below to the board?

[00:07:21] Speaker 00:
Did you make this objection to the rejection on the theory that this requirement in TACHI, as you say, about impedance matching would be very difficult to do once you substituted a meandering conductor into FINK?

[00:07:39] Speaker 00:
Well, the problem with the impedance match... I'm sorry, my question is whether you made this argument to the board in your appeal to the board of the examiner's rejection combining Fink and Taki.

[00:07:55] Speaker 01:
I don't, cannot honestly say whether it's in the

[00:07:58] Speaker 01:
appeal briefs or not.

[00:08:00] Speaker 00:
Okay, your appeal brief is in the JA and I didn't see that argument in the brief and so the trouble, the challenge I have now as an appellate court in reviewing the fact-finding tribunal is am I really permitted to conclude that the board here made a reversible error on an issue that was never raised to them?

[00:08:25] Speaker 00:
I mean, it's hard for me to blame the board for doing something, for not doing something, when nobody asked the board to address the question.

[00:08:40] Speaker 01:
It may have been an oversight on my part, but my impression is that the time briefing before the board, the impedance matching,

[00:08:54] Speaker 01:
combination, the significance of the impeding matching was not apparent.

[00:09:01] Speaker 01:
Because FINK does not mention impedance anywhere.

[00:09:09] Speaker 01:
It's not in FINK at all.

[00:09:12] Speaker 01:
So why would one guess that this impedance matching is going to be so significant until one sees the decision

[00:09:24] Speaker 01:
of the Board of Appeals, which says, we're adopting the rationale that the examiner put in the final rejection, and his rationale is fewer components.

[00:09:38] Speaker 01:
But there aren't fewer components.

[00:09:39] Speaker 01:
There's more components.

[00:09:41] Speaker 01:
So the justification in the examiner's final rejection

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is diametrically opposed to the combination being made.

[00:10:02] Speaker 01:
There's two components required in the examiners, in the Board of Appeals structure, and there's only one component required in the claimed invention, the resident antenna.

[00:10:19] Speaker 01:
If I stick something else in there, some other component,

[00:10:24] Speaker 01:
it's going to screw up the resonance of that antenna.

[00:10:29] Speaker 01:
In fact, if you look at Fink, he matches the resonance of the antenna to the integrated circuit by putting additional structures alongside the antenna to influence its characteristics.

[00:10:44] Speaker 01:
So anytime you start mixing these things together, you're going to affect the electrical characteristics

[00:10:53] Speaker 01:
of the antenna and it has to be done deliberately and carefully.

[00:11:00] Speaker 01:
You just can't plug these things together randomly.

[00:11:05] Speaker 01:
And the invention claim, you can claim one is significantly simpler as an RFID tag is significantly simpler structure

[00:11:23] Speaker 01:
and components than the claimed combination.

[00:11:28] Speaker 01:
So it's an improvement over the claimed combination.

[00:11:31] Speaker 01:
It's cheaper to make, and it's easier to make.

[00:11:35] Speaker 03:
OK.

[00:11:35] Speaker 03:
You're into your rebuttals, so why don't we hear from the government and we'll reserve your time.

[00:11:40] Speaker 04:
Good morning.

[00:11:41] Speaker 04:
May I please report?

[00:11:43] Speaker 04:
This appeal is all about forfeiture.

[00:11:45] Speaker 04:
At the board, Aponte made essentially three arguments that all focused on the recited limitations.

[00:11:52] Speaker 04:
On appeal, the appellant has dropped all of those arguments and now focuses on the motivation to combine the reference.

[00:11:58] Speaker 04:
And in the reply brief on appeal, appellant added another new argument asserting that the combination would result in more components.

[00:12:09] Speaker 04:
Every argument the appellant raises on appeal is forfeited.

[00:12:13] Speaker 04:
Appellant had multiple opportunities to challenge the examiner's finding that there would have been a motivation to combine and did not.

[00:12:22] Speaker 04:
The examiner in the board made the prima facie case, found a motivation to combine the references and the board did not change the rationale in its decision.

[00:12:34] Speaker 04:
It, it, it affirmed the examiner.

[00:12:37] Speaker 04:
And appellant has not rebutted those findings.

[00:12:39] Speaker 03:
That's what I was going to ask was, I can't remember exactly now, but was there any difference or was there anything added with the board beyond what the examiner said?

[00:12:50] Speaker 04:
No, Your Honor.

[00:12:51] Speaker 04:
There are two places in the board decision where the board mentions the motivation to combine ones at Appendix 6 and ones at, I think it's Appendix 11, and just affirming exactly what the examiner said.

[00:13:06] Speaker 04:
So we respectfully ask that you affirm the board's decision.

[00:13:11] Speaker 04:
If there are no further questions, I will yield the rest of my time.

[00:13:15] Speaker 03:
Thank you.

[00:13:16] Speaker 03:
You've got some rebuttal time.

[00:13:20] Speaker 03:
Well, thank you.

[00:13:21] Speaker 03:
Both sides and the case is submitted.