[00:00:00] Speaker 01: for argument is 21-1025 O'Keefe's, Inc. [00:00:05] Speaker 01: versus Hirschfeld. [00:00:06] Speaker 01: Mr. Belin. [00:00:09] Speaker 04: Yes, thank you. [00:00:13] Speaker 04: Not to waste a lot of time, I'd like to rely on the brief of the account and the reply brief with a few comments on certain aspects of the argument. [00:00:29] Speaker 04: Word unit has been interpreted to mean something that may be separated into two parts. [00:00:40] Speaker 04: And I think it's perfectly clear from the pattern language of the 709 pattern that unit means a whole entity. [00:00:50] Speaker 04: It has two parts. [00:00:52] Speaker 04: One part is a structural glass on the top, [00:00:56] Speaker 04: And the other part is a fire reading device at the bottom, and they're connected to form a whole entity. [00:01:03] Speaker 04: The adjusting mechanism described in the patent and the claims of the patent are shown to or are described to move the unit as a whole up and down. [00:01:19] Speaker 04: This would not be possible if they were separated. [00:01:22] Speaker 04: They have to be [00:01:24] Speaker 04: one piece, a whole entity. [00:01:28] Speaker 04: I refer specifically to column three, lines 23 through 30, and column four, lines 5 through 9 of the 709 pact to support that. [00:01:41] Speaker 04: Secondly, I'd like to talk about the Ray Pact. [00:01:48] Speaker 04: That has been interpreted by or to [00:01:53] Speaker 04: being a unit rather than two separate pieces, which it actually is. [00:02:03] Speaker 04: Ray includes an upper layer of structural glass. [00:02:11] Speaker 01: Can I ask you for just some clarification? [00:02:14] Speaker 01: If this is the argument that I'm recalling from the briefs was made, the PTO had a bunch of responses to that argument about meet the two layers not moving as a unit. [00:02:26] Speaker 01: And at least one of those was the point pointing out that Ray does disclose, at least there's an embodiment in Ray, in which a two-layer glass covering has no gap between the layers. [00:02:42] Speaker 01: Are you understanding what I'm asking about? [00:02:45] Speaker 01: Do you recall their argument about that? [00:02:47] Speaker 04: Yes, I do. [00:02:48] Speaker 04: And I think they're referring to Fig 5 of the rape act. [00:02:52] Speaker 01: OK. [00:02:54] Speaker 01: Even if you're right, which they're not agreeing that you're right, that's necessarily required. [00:03:02] Speaker 01: But why doesn't that satisfy your concern? [00:03:05] Speaker 04: Well, Fig 5 of rape. [00:03:09] Speaker 04: It is another embodiment of their second embodiment as it's described. [00:03:16] Speaker 04: And if you look at Fig 5, you'll see that there is a space apart from the two layers, the structural glass layer and the fire-rated glass layer. [00:03:32] Speaker 04: And it's also described in the text of the Ray Patent Column, seven lines, 18 through [00:03:40] Speaker 04: as being spaced apart. [00:03:44] Speaker 01: They're not touching. [00:03:49] Speaker 01: They don't move apart. [00:03:52] Speaker 01: What is it in the language of the planes that forecloses separated layers? [00:03:59] Speaker 01: What is their glass floor unit? [00:04:01] Speaker 01: Why are separated layers foreclosed by that language? [00:04:06] Speaker 01: Anything in the spec you can point me to? [00:04:10] Speaker 04: Are you talking about the civil right path, Your Honor? [00:04:13] Speaker 01: Yeah. [00:04:15] Speaker 01: I think, yes, yes. [00:04:17] Speaker 04: Well, if you look at the description, as I said before, let me go back. [00:04:33] Speaker 04: Column three, lines 23 through 30, describes how the unit moves. [00:04:40] Speaker 04: by turning the adjustment. [00:04:44] Speaker 04: And it goes up and down. [00:04:45] Speaker 04: If they weren't a single unit, it wouldn't raise the unit as a unit. [00:04:55] Speaker 04: Only one layer would go. [00:04:59] Speaker 04: Also, that's described on column four, lines five through nine. [00:05:04] Speaker 00: Why can't a layer be treated as a unit? [00:05:09] Speaker 04: Well, it could be. [00:05:11] Speaker 04: What's described in the patent is the unit, but it's not. [00:05:13] Speaker 04: The unit is described in the patent as having two layers, two components. [00:05:20] Speaker 02: Doesn't it refer to glass board units 14 and 16? [00:05:23] Speaker 02: 14 and 16, correct, yes. [00:05:26] Speaker 02: They're referred to as units. [00:05:30] Speaker 02: Two different units. [00:05:31] Speaker 02: It's not line 25. [00:05:33] Speaker 02: Column 3, line 25 refers to them as units, not a single unit. [00:05:39] Speaker 04: I didn't catch that. [00:05:41] Speaker 04: Can you please repeat that? [00:05:42] Speaker 02: I was just trying to understand your argument. [00:05:45] Speaker 02: I was just noting that column 3, line 25 refers to these elements that you're referring to as layers. [00:05:54] Speaker 02: It, in fact, refers to them as units, which would seem to undermine your unit argument in respect to the claims. [00:06:03] Speaker 04: Column 3 refers to the glass floor units 14 and 16. [00:06:07] Speaker 04: Yes. [00:06:09] Speaker 04: And if you go back to the description of what the unit consists of, it has two components. [00:06:15] Speaker 04: Each unit, 14 and 16, has two components. [00:06:20] Speaker 04: The glass floor unit has the upper portion of a durable construction and the bottom portion is made of a fire-rated glass. [00:06:29] Speaker 04: That forms A. The reason for that is because you walk on the [00:06:38] Speaker 04: top part where the glass floor is installed, and the bottom part, the fire-rated component, protects against fires from below, going up to the upper portion. [00:06:54] Speaker 04: That's why that is the case. [00:06:58] Speaker 04: What is described as a unit. [00:07:00] Speaker 04: Unit means one. [00:07:02] Speaker 04: It's one unit. [00:07:03] Speaker 04: It's a whole. [00:07:04] Speaker 04: That's what it says in the dictionary. [00:07:05] Speaker 04: Unit is a whole. [00:07:14] Speaker 04: On the other hand, the ray pattern describes layers that are separated by a load transfer means. [00:07:23] Speaker 04: That's the whole gist of the ray pattern is to have, excuse me. [00:07:32] Speaker 01: Please proceed. [00:07:34] Speaker 04: OK. [00:07:35] Speaker 04: Is to have a load transfer means that takes the weight of the structural glass on the top [00:07:42] Speaker 04: and transfers it down to the support below, being the building below, bypassing the fire-rated glass. [00:07:50] Speaker 04: They don't want any weight on that fire-rated glass. [00:07:54] Speaker 04: And Fig 5 has a one, supposedly, which shows a unitary structure, but it's not a unitary structure. [00:08:03] Speaker 04: It's separate, as described in the specification of the rain pattern. [00:08:09] Speaker 04: And it's supported by a box, steel box, which is the load transfer means as part of the second embodiment of ray, which is described in the specification as having a load transfer means and the separation of the two layers. [00:08:42] Speaker 01: Do you want to address the hat channel limitation in this case? [00:08:49] Speaker 04: The hat channel is really important. [00:08:53] Speaker 04: The use of the claimed device or mechanism in the 709 patent, is that [00:09:07] Speaker 04: is installed, the adjustment mechanism is installed after installation of the floor units. [00:09:14] Speaker 04: And you have to get down into that void to position and adjust the adjustment mechanism. [00:09:29] Speaker 04: You have to have a hatch in something that's removable so you can get down there. [00:09:35] Speaker 04: That's what allows it to be used in that manner. [00:09:40] Speaker 04: I don't believe that that is shown by any of our references. [00:09:45] Speaker 04: It's certainly not in the rate, and I don't believe it's from the German patents either, because the German patents, to get to the screw mechanism on the two German patents, you have to remove the flooring, as well as a bunch of other things. [00:10:00] Speaker 04: There are profiles that have to be removed. [00:10:02] Speaker 00: Well, the limitation in the proposed substitute claim 13 that deals with hat channel does not say anything, as I read it, about what you need to remove. [00:10:13] Speaker 00: It simply says that the hat channel is removably positioned over the adjuster. [00:10:21] Speaker 00: Why does the difficulty or elaborate nature of the removal process matter for purposes of that limitation? [00:10:29] Speaker 04: Well, if you can't get to the adjustment mechanism below, you can't adjust the floor. [00:10:35] Speaker 00: Well, but the board says, well, you can. [00:10:37] Speaker 00: And Mr. McFarland says, you can. [00:10:39] Speaker 00: It just might be a little bit more laborious a process than in your concept of what the claim ought to be directed to, right? [00:10:51] Speaker 04: Well, if you remove the flooring, you took the floor. [00:10:54] Speaker 04: I agree. [00:10:55] Speaker 04: But we don't have to remove the floor with the salmon on our iPad. [00:10:58] Speaker 00: Right. [00:10:59] Speaker 00: Why is it that the 709 patent is directed only to a situation in which you don't need to remove the flooring? [00:11:07] Speaker 00: What about that limitation says that? [00:11:10] Speaker 04: Well, you don't want to remove the floor. [00:11:13] Speaker 04: Removing the floor is a big job. [00:11:15] Speaker 04: OK. [00:11:16] Speaker 04: You want to get to that adjustment mechanism without removing the floor so that if you want to adjust the walking surface, [00:11:26] Speaker 04: Many times when the floor is installed, it's not the level. [00:11:31] Speaker 04: So you have to go back and say, OK, there's a depression here. [00:11:34] Speaker 04: There's a hump there. [00:11:35] Speaker 04: But you can just remove the half channel, get down to the adjustment mechanism, and adjust the height of the walking surface. [00:11:45] Speaker 00: OK, let me ask you. [00:11:47] Speaker 00: Our time is running short, so I want to make sure that I get a chance to ask you about the support [00:11:52] Speaker 00: limitation of that claim 13. [00:11:55] Speaker 00: And in particular, why isn't the board's conclusion that the support in the DE 759 and 230 being the support sheet being rotatable relative to the adjuster? [00:12:10] Speaker 00: Why isn't that established by the German patents? [00:12:14] Speaker 00: Or at least suggested by the German patents? [00:12:19] Speaker 04: I don't think it's suggested or shown [00:12:22] Speaker 04: It's simply a jack. [00:12:24] Speaker 04: And there's nothing in the journal back that says that it is independently rotatable versus the screw portion. [00:12:34] Speaker 00: Well, I don't want to get too far afield from the technology here, but I have a car jack which has a top that is rotatable, independent of the screw. [00:12:48] Speaker 00: So why is that not consistent with, or at least [00:12:51] Speaker 00: not inconsistent with the construction of the device shown in the two German patents. [00:13:01] Speaker 04: Well, that's wonderful, but it wasn't cited by the board as being part of the prior article. [00:13:07] Speaker 04: Maybe that would have been a better argument had they signed your prior patent. [00:13:10] Speaker 00: No, no, but the German patents, you said they have a jack, and it doesn't seem to me that it's inherent in a jack. [00:13:17] Speaker 00: that the top of the jack cannot rotate independently of the screw. [00:13:25] Speaker 04: From your own experience, obviously, there is a car jack that does do that. [00:13:30] Speaker 04: But it's not described in the German patent as such. [00:13:35] Speaker 04: That's all I can say. [00:13:37] Speaker 01: OK. [00:13:37] Speaker 01: Thank you. [00:13:38] Speaker 01: You're into your rebuttal time. [00:13:39] Speaker 01: So if you want to save the remainder, we'll hear from the other side. [00:13:44] Speaker 04: I'd like to hear the argument of my opponent. [00:13:46] Speaker 01: Great. [00:13:47] Speaker 04: And then two minutes for rebuttal. [00:13:49] Speaker 04: Is that your order? [00:13:50] Speaker 01: Yeah. [00:13:50] Speaker 01: You've got almost that left. [00:13:52] Speaker 01: Well, I'll wait. [00:13:53] Speaker 01: Thank you. [00:13:54] Speaker 04: Thank you, sir. [00:13:57] Speaker 01: OK. [00:13:57] Speaker 01: We're assuming you can hear Mr. Bielin and Mr. Forman. [00:14:04] Speaker 03: Please proceed. [00:14:05] Speaker 03: May it please the court. [00:14:06] Speaker 03: I'd like to address the three issues that you talked with appellant about. [00:14:13] Speaker 03: The first is this notion that Ray's separated layers in figure three somehow is fatal to the obviousness case. [00:14:23] Speaker 03: I think there are a couple of responses that we had in our brief. [00:14:27] Speaker 03: And I think the easiest one is to just look at the other combination that the board pointed to, which is the DE 230 plus Ray, where the real difference was that which reference [00:14:43] Speaker 03: was the primary reference. [00:14:45] Speaker 03: So if you look at the two German references, they show two layers of floor together. [00:14:52] Speaker 03: They show two layers of floor separated with a cavity in between. [00:14:56] Speaker 03: So it's not that we are limited to looking at raised separated layers in figure three. [00:15:04] Speaker 03: We have another reference that shows two layers right up against each other with no gap between. [00:15:11] Speaker 03: As well as [00:15:13] Speaker 03: Raise Figure 5 shows exactly that. [00:15:19] Speaker 03: No gap between the layers. [00:15:21] Speaker 03: There's silicone pads between the top layer of glass and the bottom layer of glass. [00:15:26] Speaker 03: And there's even a cavity in there because Raise Figure 5 shows a hollow box in the center, which was item 64. [00:15:36] Speaker 03: And so that Raise Figure 5 looks a lot like what [00:15:42] Speaker 03: the figures in the pattern, the 709 pattern, because you have the layers not separated at all, but then with a kind of a cavity in the middle. [00:15:54] Speaker 03: So beyond that, even if we had to look at Ray's figure three, and that was all we had, [00:16:02] Speaker 03: The argument that, well, a skilled artisan can only put the height adjustment mechanism between the two layers presupposes that there could be no other modifications made and that's just not the law of obviousness. [00:16:18] Speaker 03: A skilled artisan would be able to modify Ray in such a way to reach the claimed invention. [00:16:25] Speaker 03: This is not, I don't think, you know, deciding whether you have [00:16:29] Speaker 03: two layers separated or two layers, a budding is something that's beyond one's skill in the art. [00:16:37] Speaker 03: And I think that the argument by appellant is looking for more of a bodily incorporation, which is not the law of obviousness. [00:16:47] Speaker 00: Could I turn your attention to the support limitation of the claim 13? [00:16:55] Speaker 00: And here, the board did something [00:16:58] Speaker 00: that I really have trouble understanding. [00:17:03] Speaker 00: The board did this actually about three or four times. [00:17:07] Speaker 00: And the one that I'm focusing on is page 119 of the board's opinion, just as an example. [00:17:13] Speaker 00: They say at the top of 119, previously in connection with claim eight, we indicated that given the support plate is held by a screw, [00:17:28] Speaker 00: which rotates, this is talking about the German references, the support plate necessarily rotates with the screw irrespective of how the support plate is attached to the screw. [00:17:43] Speaker 00: We reach the same determination here. [00:17:46] Speaker 00: Then no more than three lines after that, they seem to pivot and they say, [00:17:53] Speaker 00: DE 759 discloses that the screw holds the support plate, and based on that disclosure, as Mr. McFarland explained, support 22 will necessarily either rotate with the screw or rotate independently of the screw. [00:18:08] Speaker 00: Those two seem to me to be at war with one another. [00:18:12] Speaker 00: Can you help me understand what the board is doing, or did they just drop the ball? [00:18:18] Speaker 03: I think, I mean, I can't get that. [00:18:20] Speaker 00: Do you understand my problem? [00:18:21] Speaker 00: Yes. [00:18:22] Speaker 03: Yes, I fully understand that. [00:18:23] Speaker 00: You probably had to think about this problem as you were preparing for the argument. [00:18:27] Speaker 03: Yeah. [00:18:28] Speaker 03: And I think the most reliable statement here is the one of Mr. McFarland, because that's the one that the board points to and says, Mr. McFarland. [00:18:38] Speaker 00: But what were they doing saying two? [00:18:41] Speaker 00: Well, first of all, in your view, is there a way to reconcile the two statements? [00:18:50] Speaker 03: It's tough, I think, because the issue is really you have a support plate on the screw. [00:18:56] Speaker 03: And if they're welded together, they're going to rotate together. [00:18:59] Speaker 03: And if the support plate is threaded through the screw, they can rotate independently. [00:19:04] Speaker 00: Or if it's just positioned like my car jack is. [00:19:09] Speaker 00: Exactly. [00:19:09] Speaker 00: Exactly. [00:19:10] Speaker 00: And the top of the jack moves. [00:19:11] Speaker 03: And so I'm not sure what the board was doing when it said that the support plate necessarily rotates with the screw. [00:19:18] Speaker 00: Should we send it back to Ashman to explain? [00:19:21] Speaker 03: I don't think so, because I think that we have [00:19:24] Speaker 03: the expert testimony, and we have the board saying specifically that they credit the expert testimony and that they're relying on the expert testimony. [00:19:33] Speaker 03: And the expert testimony is clear that you're either going to have it one way or the other, and that either of them, from the German references, either of them would be obvious in this view. [00:19:44] Speaker 03: I mean, this idea that it has to be exactly [00:19:51] Speaker 03: You know, it has to show it exactly. [00:19:56] Speaker 03: is not correct. [00:19:58] Speaker 03: I think that as long as the German references suggest either one, either way, and that's enough for obviousness. [00:20:06] Speaker 00: One point about the German references, and they both have this, is that, and I believe this is on page three of the 759, in addition to using the verb held, [00:20:22] Speaker 00: I think it's held. [00:20:25] Speaker 00: Page four, appendix 486, this is DE 759, says in the first carryover paragraph from three that the screw head is configured to form a support plate. [00:20:41] Speaker 00: Now that suggests to me that if screw head is being used in the sense that we would use it in English, [00:20:50] Speaker 00: I don't know if it means something different in German. [00:20:52] Speaker 00: But in English, that would suggest that the screw head is an integral part of the screw, as would be the case in, let's say, a screw or bolt that has a head on it, in which case it would not rotate independently. [00:21:07] Speaker 00: What do you make of that language in the DE 759 and 230? [00:21:11] Speaker 03: Well, I think first of all, and this is probably not going to satisfy you, that no one really points to this language one way or the other. [00:21:20] Speaker 03: I don't believe Appellant is relying on this language and certainly I don't think the board addresses it. [00:21:27] Speaker 03: I think that if, I mean just looking at the language itself, I don't think it's specific enough to really firmly conclude that these two pieces are integral or that there's a weld between them. [00:21:44] Speaker 03: I think as you gave the example of your [00:21:47] Speaker 03: your car jack, the support plate could be sitting on top and still be held. [00:21:53] Speaker 00: It could be held, I guess. [00:21:55] Speaker 03: Yeah, it could be held and still be rotatable in relation to the screw. [00:22:01] Speaker 00: Do you think that if we were to conclude that the German references show, at least specifically show, only a non-rotatable support, that there would nonetheless be [00:22:17] Speaker 00: reasonable to infer that they suggest that the support could rotate? [00:22:24] Speaker 03: Yes, I think that the expert's testimony certainly supports that. [00:22:29] Speaker 03: And the fact that we're having to kind of look past this language and think about it implies that it's not clearly shown one way or the other. [00:22:39] Speaker 03: And I think that even if you found that it's more likely than not that [00:22:44] Speaker 03: these two are immovably attached, I think it's still a matter of design choice here. [00:22:52] Speaker 03: And it's not enough of a difference to have these claims patentable over the German references. [00:23:00] Speaker 00: Now, if the plate in the German reference were rotatable only with the screw and not independently of the screw, [00:23:14] Speaker 00: I'm wondering about how this may be sort of outside of the realm of what was specifically addressed. [00:23:20] Speaker 00: But it's hard for me to see exactly how that would function. [00:23:27] Speaker 00: Because what would happen is you have this plate, which is pressing up against a very heavy floor. [00:23:34] Speaker 00: And the only way it could move is to move like this. [00:23:37] Speaker 00: which, in other words, you see what I'm saying, it would be moving like that, which would seem to me to create an enormous amount of friction if all it has to do is push up by maintaining its [00:23:49] Speaker 00: position vis-a-vis the screw as the screw is turning and pushing up. [00:23:53] Speaker 00: No friction. [00:23:54] Speaker 00: But this creates friction. [00:23:56] Speaker 00: Is that a reasonable way to think about what the German patent is teaching? [00:24:03] Speaker 03: I think so. [00:24:03] Speaker 03: And I think I would just go back to this idea that even if you found that the support is immovably held, [00:24:13] Speaker 03: It's still not enough of a difference here to render the claims patentable. [00:24:17] Speaker 03: Because you're just looking at how you connect a plate to a screw. [00:24:23] Speaker 03: And more broadly, this height adjustment mechanism is [00:24:29] Speaker 03: substantially identical to what the patent shows. [00:24:33] Speaker 03: I mean, you have a threaded receiver with a screw with a support plate that can be raised up and down by twisting the screw. [00:24:43] Speaker 03: And the details of exactly how this one piece is connected to the other piece or how that mechanism works, I think, is just simply not enough [00:24:55] Speaker 03: to overturn the obviousness. [00:24:57] Speaker 00: What about the hat channel limitation that Judge Brost asked about? [00:25:01] Speaker 03: I think that, like you talked about before, that it's just a matter of imprecise or over-broad claim language. [00:25:09] Speaker 03: I think that the language of the claim 13 could have been written in such a way to say that only the hat channel is removed [00:25:19] Speaker 03: to do the adjustment and that's not what the claim language says and so I think the board is right to say that the claim is not limited to only removing the hat channel. [00:25:31] Speaker 03: If other components need to be removed then that's still within the claim language. [00:25:36] Speaker 03: this idea that it may be too complicated. [00:25:38] Speaker 03: There's just nothing to support that. [00:25:41] Speaker 03: And it doesn't really matter, honestly. [00:25:44] Speaker 03: It's that the hatch handle is removed to make the adjustment. [00:25:48] Speaker 03: And if other components need to be removed, then that's still within the claim. [00:25:56] Speaker 01: There's nothing further. [00:25:58] Speaker 01: Thank you. [00:25:59] Speaker 01: Thank you. [00:26:02] Speaker 01: Mr. Buin, can you hear me? [00:26:04] Speaker 04: Yes, I can. [00:26:05] Speaker 01: OK. [00:26:06] Speaker 01: Will we start two minutes of rebuttal if you need it? [00:26:09] Speaker 04: Yeah, I will help you very briefly, Your Honor. [00:26:12] Speaker 04: I just want to make sure I note the exact place in the gray pack where it says the two sheets of glass are spaced apart. [00:26:25] Speaker 04: And that is on column seven, lines 18 through 20. [00:26:37] Speaker 04: Okay, and also, I think the board was not quite precise in putting the substitution of the German jack in place of the steel strip in red. [00:27:00] Speaker 04: I mean, if they just replaced the jack for the steel strip, [00:27:07] Speaker 04: All you would have is a device that pushes up a silicone spacer between the two floors and a seal on top. [00:27:18] Speaker 04: I think they omitted things there, but if you read that specifically, you still don't end up with anything that would move the structural glass layer on top. [00:27:32] Speaker 04: It would only move the silicone layer between [00:27:37] Speaker 04: the two structural glass letters shown in Fig. [00:27:44] Speaker 04: I think it's Fig 3 of the Asian Ray package. [00:27:49] Speaker 04: Other than that, I think I'll rest. [00:27:51] Speaker 01: Appreciate that. [00:27:52] Speaker 01: Thank you. [00:27:53] Speaker 01: We thank both sides. [00:27:54] Speaker 01: And the case is submitted. [00:27:55] Speaker 01: That concludes our proceeding for this morning. [00:27:58] Speaker 04: Thank you. [00:27:58] Speaker 04: Thank you.