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order dame mr. Kosinsa yes you know pronounce your name correctly because I'm so correct okay you got five minutes to rebuttal correct yes yes we're ready when you are good morning your honors my name is Martin because I'm so I represent the appellant

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I seek to please this Court.

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The issues here are that we have a rejection that is from the Patent Office, which we appeal a decision, which we're appealing, that is unique.

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And we ask, we submit that this is sufficiently unique, that it needs Article III review of this action, and hopefully Article III correction.

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My client's application

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the appellant's patent application is to a brace a foot brace and the prior art teaches this primary reference teaches for the purpose of this proceeding all of the elements except what we claim as the lower fastening system which requires which comprises we recite a lower fastening system comprising at least one strap for connecting

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sidewalls forward of the talus of the wearer's foot.

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This system being the only structure connecting the sidewalls underneath it.

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Counsel, doesn't the prior art reference Dittmer also teach a lower fastening system?

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That's a strap that goes underneath the shoe?

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That strap is part of the lower fastening system.

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The reference teach... Dittmer, the prior art, teaches that, doesn't it?

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It teaches in totality a lower fastening system.

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Yes, Your Honor.

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So it seems to me that all of the claims that are present in the claim that we're looking at, all the elements of those claims have been met by the priority.

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Yes, except that the second examiner, there was a first examiner who prepared the rejections.

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And basically, the rejections of the first examiner were as how you've described.

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Applicant argued why you would not put these elements together.

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Doesn't Dittmer teach a strap, a fastening strap underneath a shoe?

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It teaches a strap, but that by itself is not the fastening system that meets the claim.

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And the examiner's different.

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The fastening system, that argument that you bring, is a different argument than the strap.

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There is a strap, a securing mechanism that Dittmer teaches.

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Is that right?

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Yes.

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There is a strap, yes.

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So the only concern that you have

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has to deal with the fastener.

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How do you fasten this strap?

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Well, correct.

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OK.

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The claim recites a lower fastening system comprising at least one strap.

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If we focus on the strap, it lines that and nothing else.

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We basically strip 15 words from the claim.

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So it's the totality.

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And the lower fastening system, according to the first examiner,

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was identified as the strap in the slots.

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The examiner, and in fact, in the second examiner, points to elements in the dipmer, the secondary reference, that only have the slots.

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There is no strap.

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No argument there.

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The argument was why one of skill would not do this.

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And in response to this,

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the second examiner declared, we're not using a component of DIPMER.

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The board found, as a matter of fact, and I quote, we do not see where the examiner stated how the additional strap might be secured to the remainder of the brace.

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So there was no modification on the record brought to the board that met the claim.

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Wouldn't a person's skill of the art say, OK, I got the strap from Dittmer going underneath the shoe, and it just makes practical sense for the facility to say, I need a facet of this strap.

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OK.

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OK.

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Yes, sir.

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OK.

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I will answer that.

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This is going into why one's skill wouldn't do that.

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And if you look at Dittmer, Dittmer is an interesting

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I'd like to say Dittmer is what you would use, what Burt Reynolds would use in deliverance when he had a real bad day.

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He broke his leg.

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Birmingham is what Forrest Gump used, day in and day out.

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Dittmer's strap goes around the leg.

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And by the way, this is 968 on the record.

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Dittmer's strap goes around the leg.

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then the structure is put against the strap.

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And then you snake the end of this, which is shown short, but in reality it's much longer, through the slots.

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It needs to be free for the system of Dittmer to work.

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The slots are integral to this.

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And in fact, if you look at the rationale to modify it.

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It's just a new argument you're making.

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that the strap has to be wrapped around the leg in order to have a secure strap that goes underneath the shoe?

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Sir, this argument was not made because we did not make... You can't raise new arguments before the court.

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But sir, with all due respect, the question was, why wouldn't someone just do this?

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That rejection, if that's the grounds for finding these claims impenetrable, that's nowhere on the record.

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So the question proffered was not at bar.

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The board did not do this.

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The examiners did not do this.

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The issue is,

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How would you fasten this?

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There is no, there's nothing on the record.

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That's really the only issue before us today, right?

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Whether the prior teaches how to fasten the strap that Dittmer teaches.

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Your Honor, I submit the issue is, it's actually, that's the issue.

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Am I wrong or right on my understanding of the issue?

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The only issue is how to secure that strap.

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The issue is, did what the board do, was that sufficient to deny the applicant a patent?

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And in very simple terms, the board found that a posita would have no problem securing the strap.

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Correct, but we do not believe that that's the state of the law.

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Capable love is not the... Well, in the case of KSR, we said that we should look at a placenta, and that just as an autotron, but as a practical person.

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That's skilled in the art.

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Certainly somebody skilled in the art of making these type of devices would know, hey, I've got it strapped down here.

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I've got to secure it.

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Your Honor, first, KSR requires the rejection to be explicit.

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And because of the lack of explicity, the PTO deprived the court, this reviewing body, that analysis.

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Where is the substantial evidence that shows the person of ordinary skill in the art would make this unspecific modification?

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I've been arguing now, what exactly, how are they

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How is the person of skill attaching this?

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There's nothing, even now in this argument, there's nothing that has been proffered.

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So you have the prior art, but the full modification.

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How does the person of ordinary skill modify this?

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KSR, I understand they're not in automaton, but KSR would also require, OK, this is how one of skill would make this modification.

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but the attachment.

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And that is not on the record.

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It has yet to be proffered.

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And we submit that the original argument was that the original rejection was the use of these slots.

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We argued why one would not do that.

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And frankly, it actually goes beyond.

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This is at the board level.

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It goes beyond just simply using those slots.

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Well, as was argued to the board, the strap would pull it up and out.

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And if you look at Birmingham, the sidewalls, the primary reference, which is what we're modifying, are inboard.

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So if you were to attach that with a fastener, and this would pull it outboard when you tighten the strap.

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And in fact, in Birmingham,

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Because the strap is inside, you're now putting something in between this plebis that grips the side of the shoe in Birmingham.

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If there was a concrete modification, so be it.

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That would be the prima facie case of obviousness.

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And then we would rebut.

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And then we would say, OK, this is why a person of skill would not do it.

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Well, here are all the elements in the art, and one could figure it out somehow.

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But that's not the specificity of KSR.

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Sorry.

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Your Honor.

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Counselor, you're into your rebuttal time.

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Do you want to reserve your time, or do you want to continue?

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I will reserve if you do not have any further questions.

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And if not, I can proceed.

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OK.

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Counselor Sauer?

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May it please the court, Peter Sallward on behalf of the USPTO director.

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What is before the court today is a very simple and routine case of obviousness.

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The only issue before this court is whether substantial evidence supports the board's finding that there's a motivation to combine Birmingham and Dittner.

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Notre Dame has already admitted that all of the elements are present in the prior art and merely challenge the motivation to combine.

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The problem is that the fundamental

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basis of Notre Dame's argument misapprehends the test for obviousness.

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The test for obviousness is not whether you can take scissors and cut out a precise puzzle piece from prior art A and insert it into prior art B. That's what the

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PTO's brief notes this at pages 23 and 24, where we cite numerous cases from this court saying that that is not the standard.

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The standard is, what would one of ordinary skill in the art understand from the teachings of Dittmer and Birmingham combined?

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And so the board at APPX 10 quite straightforwardly said, the examiner takes the position that one of ordinary skill in the art would be capable of combining the teachings of Birmingham and Dittmer

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to arrive at an operable brace with heel enclosure and corresponding lower fastening system.

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We understand this to mean that the person of ordinary skill, using ordinary creativity, would, without using extraordinary skill, adopt a secure means that would not be otherwise detrimental to the operation of the Birmingham brace.

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We agree.

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So the board quite straightforwardly set out the prima facie case that became Notre Dame's burden to come forward and rebut that prima facie case.

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It failed to do so.

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I think this case is extremely simple and routine, Your Honor.

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So you have no questions for me.

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I yield the remainder of my time.

[00:12:54] Speaker 00:
No.

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Thank you.

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Thank you.

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Mr. Cosensio, you have about 4 and 1 half minutes.

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Your Honor, counsel stated that the substantial evidence states this, and that all the elements are in the art.

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except that the PTO explicitly dismissed one of the elements that are in the ARF.

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They specifically said, we're not using the element, the slots, in Dittmer, the secondary reference.

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And they specifically said, and as far as we do not see where, the examiner explicitly explains how the additional strap might be secured to the remainder of the brace.

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And by the way, a precedent.

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They state that the examiner states, Birmingham has not been modified in the rejection of claim one to include slots.

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So the examiner has disclaimed the teachings of the primary reference.

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Right there, that should have been it.

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Over.

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It should have been reversed, or they should have designated Newgrounds rejection, which is the second part, which the solicitor just recited.

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We asked them to designate that, and they said, no.

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No, that's not new ground.

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We timely did that, and we presented scholarly and righteous arguments on that point.

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However, they point to a statement, which is a truism, in every Section 103 rejection.

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One of ordinary skill in the art would be capable of combining the teachings of Burmick to arrive at a brace.

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What rejection has the Patent Office ever brought to this court where this, yeah, but

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No, we couldn't do it.

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This person of skill couldn't put these together.

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It's a truism.

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It's a prerequisite to make a Section 103.

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And from that, they extrapolated, we interpret that any way this, that, or the other thing could be done.

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Someone would figure it out.

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That in and of itself is a new grounds of rejection, because alternatively, it lacks the explicit requirement of CASR.

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How can I argue?

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How can you review whether or not this is the case?

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The substantial evidence is based on a finding that is a requirement of every section 103.

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There is no substantial evidence that the person of skill would do this.

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And we argued why the person of skill wouldn't use these slots.

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And frankly, it was interesting.

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prior to the board.

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And it was also not only just the slots.

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It was a total thing.

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But you're traversing the racket rejection in front of you.

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And it's amazing.

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Of all the years of prosecution, everything boils down to these two or three sentences.

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The question is, is this right?

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Is this acceptable for the board to essentially refund

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reform and reform of a rejection that where, OK, here are the arguments that that opponent made.

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And the arguments aren't answered.

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And well, someone would figure it out.

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Again, capable of is not the test.

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And KSR indeed, KSR liberalized how it is.

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But there still has to be something specific on the record.

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And it's not.

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And I can explain for hours why one a skill would not do this.

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But that's not my purpose here, because I'm not trying to reproduce examination here.

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I'm trying to reproduce review.

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We need guidance.

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Is what happened here on this last page acceptable?

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And if it is, well,

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Please tell us.

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This is a fairly straightforward, simple 103 action.

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And the question is one of whether the board decision is based on substantial evidence.

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That's a question that you really haven't addressed.

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And I know hours could be spent on this, but actually you're almost out of time.

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But when I say the dress is, well, where is there a point?

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Where is there anything on the record that states that this is?

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Where is the evidence?

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There is no evidence.

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It's a truism.

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It's a finding of fact based on a truism that has nothing to do with any fact at issue.

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Every rejection ever made meets what the examiner said.

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I ask you to please reverse the decision.

[00:17:54] Speaker 02:
OK.

[00:17:54] Speaker 02:
Thank you, Counselor.

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Thank you.

[00:17:56] Speaker 02:
We thank the parties for their arguments.

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This case is taken under advisory.