[00:00:00] Speaker 00:
in Ray Golden Rule Fasteners.

[00:00:02] Speaker 00:
Mr. Donahue, please proceed.

[00:00:04] Speaker 04:
Thank you, Your Honors.

[00:00:05] Speaker 04:
May it please the Court.

[00:00:07] Speaker 04:
Petition of Golden Rule is here before Your Honors to argue that the board erred in finding claims 1 through 4, 6 through 8, 10 to 18, and 20 to 25 of the 002 patent, invalid as obvious, under 103A.

[00:00:21] Speaker 04:
As a brief overview, the inventions at issue here are directed to a roof flashing that is designed to fit around, for instance, an electrical mast,

[00:00:28] Speaker 04:
a pre-existing structure that comes out of a roof that is immovable, such that the flashing cannot fit over the top but must be put around, yet still have a watertight seal, or the best that can be done in terms of a watertight seal.

[00:00:44] Speaker 04:
This particular flashing is an innovation and is designed to lay on a pitched roof, specifically, such that it lays naturally with other roofing tiles while providing the watertight seal without the use of caulking or the like.

[00:00:58] Speaker 04:
Golden Rule respectfully submits that the board made at least three discrete errors in concluding that the 002 patent was invalid as obvious.

[00:01:07] Speaker 04:
First, it wrongly agreed that Chu disclosed a first and second clip groove formed at a right angle to a first and second flap.

[00:01:15] Speaker 04:
Second, it wrongly agreed with the examiner that it would have been obvious to form the trenches of Chu at right angles as a matter of design choice, or that the results would have otherwise been predictable.

[00:01:29] Speaker 04:
And the issue with that particular finding is that the burden to show criticality never should have shifted to golden rule under this court's precedent.

[00:01:42] Speaker 04:
And then third, it wrongly concludes that the 002 patent does not disclose the use of right angles in the clip groove to address the inadequacies of caulking, both figure 2 and the related description and the specific disclosure of it being a rectangular cross-section clearly disclose the right angles that are claimed in the particular claim limitation.

[00:02:04] Speaker 02:
Mr. President, can I ask you a threshold question?

[00:02:11] Speaker 02:
The board, and it may or may not be a jurisdictional question, which is why I want to get to it first.

[00:02:17] Speaker 02:
It has to do with the timing of your notice of appeal.

[00:02:23] Speaker 02:
That was within 63 days of the April revised

[00:02:29] Speaker 02:
board opinion, right, but not within 63 days of the March board opinion.

[00:02:36] Speaker 02:
And there's precious little difference, maybe only what one might call clerical changes, maybe more than that.

[00:02:48] Speaker 02:
I'm not sure.

[00:02:51] Speaker 02:
Would it be out of time if those April changes were

[00:02:58] Speaker 02:
wholly non-substantive?

[00:03:03] Speaker 04:
My opinion and honor is that no, it would not be.

[00:03:05] Speaker 04:
And that is because the official document issued and that is here before the court now and that is up on appeal is the final document that was issued.

[00:03:17] Speaker 04:
Whether the changes were substantive or not seems to me, doing that analysis for every document

[00:03:25] Speaker 04:
that was later amended would sort of create a rabbit hole to go down to determine what was and wasn't material, for instance, with changes in a particular appeal.

[00:03:37] Speaker 04:
I think that the safer rule and the one that is most beneficial for clarity's sake and for the court and petitioners, quite frankly, is that the date on the final document should be the one that governs and should be the one that the period of time for filing the notice of appeal should flow from.

[00:04:00] Speaker 04:
So in the end, what

[00:04:03] Speaker 04:
Golden Rule is asking Your Honors to do is to vacate and reverse the finding that the subject claims are not patentable under 103A.

[00:04:14] Speaker 04:
And that is because 2 does not disclose the right angle limitation.

[00:04:17] Speaker 04:
There are no factual findings supporting the use of the right angle limitation as a matter of design choice or predictability.

[00:04:24] Speaker 04:
And therefore, there was no prima facie showing of obviousness.

[00:04:29] Speaker 04:
And I think that's the crux of this.

[00:04:33] Speaker 04:
look at the figures in two that are relied on for the right angle limitation, especially in light of this court's precedent, including, for instance, Hockerson and the like, which say that in order to use a reference or a figure as a invalidating reference, it must be either specifically drawn to scale, or the specification must have a disclosure that is

[00:05:03] Speaker 04:
that discloses the actual range or the number or the dimension that's being used and being claimed to be in the figure.

[00:05:12] Speaker 03:
When it comes to Chu and its trench 181, at least the bottom portion of that trench, when you just look at the figure, maybe a blown up version of the figure, it seems pretty clear to me that

[00:05:29] Speaker 03:
The clip groove is forming a right angle with the flap there.

[00:05:36] Speaker 03:
Pretty much the same way as in your figure 2, how your clip groove is forming a right angle with the flap.

[00:05:46] Speaker 03:
So, I mean, why isn't that just substantial evidence support for the board's finding that choose

[00:05:53] Speaker 03:
trench 181 is in fact illustrating a right angle, just like your figure two is illustrating a right angle.

[00:06:01] Speaker 04:
Because again, I don't think that this court's precedent, like under Hockerson for instance, there has to be something specific, something more than just the drawing, if it's not specifically outlined in the specification.

[00:06:17] Speaker 03:
Let me ask you this.

[00:06:19] Speaker 03:
You amended these claims to include the right angle limitation, right?

[00:06:23] Speaker 04:
Among others, yes.

[00:06:25] Speaker 03:
And you didn't have anything in the written description that specifically called out a right angle being formed between the clip groove and the flap, right?

[00:06:35] Speaker 03:
What you had was figure two.

[00:06:38] Speaker 03:
You pointed to

[00:06:40] Speaker 03:
illustration in figure two to say look at this it looks like a right angle so that's my written description support for a right angle.

[00:06:50] Speaker 03:
I guess what I'm wondering is if

[00:06:53] Speaker 03:
If a figure is good enough to provide written description support for a claim limitation, why wouldn't it likewise be true that a figure in a prior art reference also is sufficient disclosure and evidence to support that, yeah, the prior art reference is also contemplating a right angle?

[00:07:14] Speaker 04:
Yeah, I think the answer to that, Your Honor, is in the specification of the 002 patent.

[00:07:20] Speaker 04:
if you look at the disclosures at column 3, 24 to 39, which was cited as support for the right angle, in addition to figure 2, of course, to the examiner, later to the board, and with your honors.

[00:07:36] Speaker 04:
And if you look at that, it specifically says that the first edge member, 201, has a rectangular cross-section.

[00:07:44] Speaker 04:
So when you're talking about a rectangle, you're necessarily

[00:07:47] Speaker 04:
talking about right angles, full right angles in a rectangle, it has to be.

[00:07:52] Speaker 04:
And the way it describes the edge members, those edge members 201, for instance, has a rectangular cross section and a clip groove 205 formed in part by a portion of the top surface of the foot.

[00:08:05] Speaker 04:
Now we know the top surface of the foot is flat because it's laying on the roof and it fits along with the other tiles.

[00:08:11] Speaker 04:
So those angles have to be coming up, the edge member coming up, has to be at a 90 degree angle to the foot.

[00:08:20] Speaker 04:
It has to be, otherwise it could not be integral to the foot and form a rectangle at the same time.

[00:08:25] Speaker 04:
It would be impossible for that to happen.

[00:08:28] Speaker 04:
And if you look further at, for instance, figure two, there is a dimensional indicator, directional indicator, I'm sorry.

[00:08:39] Speaker 04:
Y and X. And that is actually, those Y and X coordinates are used to describe parts of the invention.

[00:08:49] Speaker 04:
And one of the things that it's used to describe is, for instance, this is also in column three, but it starts at column two at the very bottom.

[00:09:00] Speaker 04:
It says, when the first edge 108 and the second edge 107 are pulled away from each other in the X direction, which is this way and that way,

[00:09:09] Speaker 04:
the width of the opening increases.

[00:09:10] Speaker 04:
Now that's fairly obvious, but that also shows that if you have a flat foot and you're pulling it outward, and we know that the edge members are rectangular necessarily, because it's disclosed in the specification, those all have to be right angles.

[00:09:26] Speaker 04:
And that's different than Chu, which is a figure blown up and used to sort of glean the idea of a right angle.

[00:09:35] Speaker 04:
And I think the problem with

[00:09:38] Speaker 04:
What the examiner did is the examiner didn't make any finding that, for instance, right angles used in weatherproofing ceiling is something that is known in the art.

[00:09:49] Speaker 04:
This would be a little bit of a different argument, I think, if that sort of finding was made, or if they were able to point into one of the references in the record that was using right angles in that way.

[00:10:01] Speaker 04:
And once you had a disclosure like that, I think you might be able to reasonably

[00:10:07] Speaker 04:
conclude that this was known in the art and therefore was predictable or known.

[00:10:15] Speaker 04:
And that's what a lot of these, I think, cases like that that are used by the government to support the idea that sort of limitations known in the art can be used as essentially a filler when there's not specific enough disclosure in the reference, like in Ray Cool, for instance.

[00:10:35] Speaker 04:
I think I'm saying that right.

[00:10:37] Speaker 04:
In that case, there was a spring-loaded contact that was being used in the limitation, and the examiner or the board found that that was the only thing that wasn't present in the specific reference being used.

[00:10:54] Speaker 04:
But what the examiner did in that case was say that spring-loaded contacts are known in the arc.

[00:11:01] Speaker 04:
And this is in the use of batteries, for instance, just the spring-loads to keep a contact to the top.

[00:11:07] Speaker 04:
and to create a circuit.

[00:11:11] Speaker 04:
There, the statement was made that this was known in the art.

[00:11:15] Speaker 04:
And therefore, once it's known in the art or taught by a reference, or for instance, if there's overlapping ranges, which is a lot of the context in which it comes up, I think at that point, then you can conclude that this particular reference was obvious or known.

[00:11:33] Speaker 04:
But I don't think that finding or anything like it was made by the examiner in this case, such that you can reasonably conclude that Chu discloses the right angle.

[00:11:45] Speaker 04:
And I think, again, the difference here is that Chu has a blown up figure.

[00:11:53] Speaker 04:
And it's being used as a right angle.

[00:11:55] Speaker 04:
Certainly, if you look at the other angles, it's clearly not drawn or meant to be

[00:12:00] Speaker 00:
even if we agree with you that shoe doesn't disclose it, didn't the board alternatively find it would have been an obvious design choice?

[00:12:08] Speaker 04:
So it said it would have been an obvious design choice.

[00:12:11] Speaker 04:
But there was no finding that these types of angles were used in the prior.

[00:12:20] Speaker 04:
It's essentially what I view as hand-waving.

[00:12:23] Speaker 04:
They didn't have any reference that specifically used right angles.

[00:12:26] Speaker 03:
Well, assuming for the moment that Chu does not disclose right angles or definitively disclose right angles, it certainly discloses something that's quite close to and akin to a 90 degree right angle.

[00:12:39] Speaker 03:
So why wouldn't it therefore, in light of Chu itself, be just a simple, obvious design choice to make something that's not quite 90 degrees, 90 degrees?

[00:12:51] Speaker 03:
That would be an obvious option to undertake.

[00:12:56] Speaker 04:
Again, I think if we had a finding from the examiner saying something along those lines, that may be true.

[00:13:06] Speaker 04:
But the issue here is that we don't have that sort of a finding.

[00:13:11] Speaker 04:
And I think if you look at... Really, the question here is how far can we go in looking at a reference and then sort of waving our hands and saying, well, it's close enough, right?

[00:13:23] Speaker 04:
So we have, for instance, on the infringement side of things, we have things like doctrine of equivalence.

[00:13:31] Speaker 04:
And that's limited by, for instance, claim disavowal.

[00:13:36] Speaker 04:
And so if the concern here is sort of creating issues of infringement and things that were potentially known in the art, I think that the disclosure and specific claiming of the right angle, and certainly my argument here today, makes it clear that the...

[00:13:53] Speaker 03:
The position you're in is that we're now at appellate level.

[00:13:59] Speaker 03:
And a lot of these arguments are arguments needed to win below the fact-finding tribunal.

[00:14:05] Speaker 03:
And so we can't reweigh everything.

[00:14:08] Speaker 03:
We can't independently take a second look at the figures of Chu and arrive at our own personal judgment of what it shows or does not show.

[00:14:17] Speaker 03:
All we can do is say, was it a reasonable call for the examiner board to find that in fact Chu's trench 181 does show a right angle?

[00:14:27] Speaker 03:
between the clip groove and the flap.

[00:14:30] Speaker 03:
And if we agree with that, because we don't think there's any legal principle that's been violated against relying on figures for attempting to show specific dimensions or sizes relative to other things in the figure, and instead this is merely just relying on the figure for what it shows, which is a configuration

[00:14:56] Speaker 03:
you know, then I think you're in a hard place on trench 181.

[00:15:06] Speaker 03:
And my last question is, if trench 181, if we find that the board was reasonable in concluding that trench 181 shows a right angle,

[00:15:16] Speaker 03:
then do you really have any argument about the board's finding on trench 173 that it would just be a mere obvious design choice to make trench 173 also a right angle?

[00:15:32] Speaker 04:
Again, the threshold question, the legal principle that you're talking about that I believe is violated here, is set forth in Hockerson and in Ray Wright, Nightstrom and... Right.

[00:15:43] Speaker 03:
My question is, assume that doesn't apply.

[00:15:45] Speaker 03:
Okay.

[00:15:45] Speaker 03:
Assume we agree with the finding that trench 181 discloses the right angle, or at least that was a reasonable finding.

[00:15:52] Speaker 03:
Then the board went on and said, well, for trench 173, even if it doesn't disclose it, it would be an obvious design choice to make that a right angle, too, in light of trench 181.

[00:16:02] Speaker 03:
Would you really have any dispute over that under those circumstances?

[00:16:10] Speaker 04:
what would have had to happen would have been the burden would have needed to be, at that point, be shifted.

[00:16:16] Speaker 04:
And then we'd have to show criticality, I think, at that point, to your point.

[00:16:21] Speaker 04:
Because again, you're sort of taking a figure and extracting and saying, well, it would have been an obvious design choice, or it would have been predictable.

[00:16:32] Speaker 00:
OK, Council, we're beyond all of your time, including your rebuttal time.

[00:16:35] Speaker 00:
I'll restore two minutes, but let's hear from the government, please.

[00:16:38] Speaker 01:
Thank you, Your Honor.

[00:16:40] Speaker 01:
Good morning, and may it please the court.

[00:16:42] Speaker 01:
Regardless of whether Chiu expressly discloses the right angle limitation, there could be no dispute about two things.

[00:16:50] Speaker 01:
First, as compared to the claim dimension, Chiu includes the exact same longitudinal.

[00:16:55] Speaker 03:
Norman, could you get to Judge Torano's question on jurisdiction?

[00:16:58] Speaker 03:
Sure.

[00:16:59] Speaker 03:
And the two competing board opinions, and which one should we key off of?

[00:17:04] Speaker 03:
Are there times of filing an appeal?

[00:17:07] Speaker 02:
To be honest, just to pile on, there's a question whether the time limit is even jurisdictional.

[00:17:13] Speaker 02:
Do you happen to know whether the PTO views missing the 63 day deadline, which was adopted only by the director, not by Congress?

[00:17:25] Speaker 02:
Um, is treated as a, what's now called a near claim processing rule so that I don't think we're in the business of issuing Suez-Monte orders to show cause.

[00:17:38] Speaker 02:
Um, do you know anything about this?

[00:17:41] Speaker 01:
To be honest, I don't, I hadn't known about this issue until you raised it.

[00:17:45] Speaker 01:
Um, I just, I guess assume that, uh, it was timely filed and.

[00:17:51] Speaker 01:
went on to the merits.

[00:17:53] Speaker 02:
It's jurisdictional.

[00:17:55] Speaker 02:
We are obliged.

[00:17:57] Speaker 01:
I understand.

[00:17:58] Speaker 01:
I'm sorry.

[00:18:02] Speaker 01:
I'm just not prepared to know what the PTO's position is on that.

[00:18:08] Speaker 01:
I guess getting back to the merits.

[00:18:12] Speaker 01:
First, as compared to the claimed invention, Chu includes the exact same longitudinal opening for the same purpose.

[00:18:19] Speaker 01:
And Chu's opening is made watertight in the same way.

[00:18:22] Speaker 01:
Second, there's nothing in the OO2 patent that explains the criticality of the right angle.

[00:18:28] Speaker 01:
Given this, the board correctly found that the claimed invention would have been obvious to one of ordinary scale.

[00:18:35] Speaker 01:
I'd just like to respond to one issue that was raised by Appellant about the written description support for the right angle and this idea that the first edge member has a rectangular cross-section.

[00:18:49] Speaker 01:
I've never really understood how the

[00:18:52] Speaker 01:
rectangular cross-section necessarily requires the claimed right angle.

[00:18:59] Speaker 01:
For example, on page 22 of the opening brief where the appellant labels everything, to me it seems like you can still have a rectangular cross-section and have an angle that's different than a right angle.

[00:19:14] Speaker 01:
And the angle we care about is where the

[00:19:17] Speaker 01:
the clip groove meets the flap and so the flap is the part kind of extending away from the opening and I mean whatever that angle is doesn't affect the cross section, the cross sectional shape of the first edge member.

[00:19:30] Speaker 00:
So is it fair to say that your argument is even if the clip groove and flap don't form a right angle it's possible to maintain the rectangular cross section of the edge?

[00:19:38] Speaker 01:
Correct.

[00:19:39] Speaker 01:
So that's why I'm

[00:19:42] Speaker 00:
So you don't think that the language in the specification dictates mandatory right angle?

[00:19:46] Speaker 01:
Correct.

[00:19:47] Speaker 01:
I think the only thing in the specification that can be relied on is the unlabeled figure that's similar to the unlabeled figure in Chu.

[00:19:58] Speaker 01:
There are no other questions?

[00:19:59] Speaker 00:
I want to ask one question related to what Judge Toronto asked.

[00:20:05] Speaker 00:
There's a first board opinion and a second board opinion.

[00:20:07] Speaker 00:
The second board opinion

[00:20:09] Speaker 00:
While it could be sort of deemed almost an errata, there are three additional footnotes added to it.

[00:20:14] Speaker 00:
Would it be fair in order for us to resolve this case without needing to ask for additional briefing and concern ourselves with a really complicated jurisdictional issue?

[00:20:24] Speaker 00:
Would the PTO's position fairly be understood that the final board decision is the one in this case which contains all the substantive material that's on appeal?

[00:20:33] Speaker 01:
Oh, yeah.

[00:20:34] Speaker 01:
I think that's fair to say.

[00:20:37] Speaker 01:
You can't waive a jurisdictional issue.

[00:20:39] Speaker 01:
But we are OK with that.

[00:20:42] Speaker 00:
But if there's a substantive difference between the first order and the second order, and it's not truly just an errata, then the second order dictates the timeline for the appeal.

[00:20:51] Speaker 00:
Is it the PTO's position that that's a reasonable approach in this case?

[00:20:55] Speaker 02:
Yes.

[00:20:56] Speaker 02:
Notwithstanding footnote.

[00:20:58] Speaker 02:
I'm sorry, not well.

[00:20:59] Speaker 02:
The footnote three is the one thing that actually has something that's

[00:21:04] Speaker 02:
a little bit substantive, but neither party relies on anything there.

[00:21:09] Speaker 03:
Perhaps footnote three clarified a legal ambiguity as to the scope and nature of the original board opinion that got replaced with this board opinion.

[00:21:19] Speaker 01:
Yes, I think that's true.

[00:21:21] Speaker 00:
Thank you very much.

[00:21:26] Speaker 00:
We'll restore two minutes of rebuttal time.

[00:21:28] Speaker 04:
May it please the court?

[00:21:30] Speaker 04:
I think the only point I'd like to address is the idea that the disclosure of a rectangular cross section doesn't necessarily require the disclosed right angles.

[00:21:43] Speaker 04:
And I think with respect to the foot and the cross section of the first and second members, I think I've addressed that.

[00:21:50] Speaker 04:
And that if that cross member, if the member is integral with the foot, which the specification does in fact say,

[00:21:59] Speaker 04:
then if that is also a rectangle, there has to be a right angle on the left between the foot and the member.

[00:22:08] Speaker 04:
And I think to address the flap argument, if you look at, again, the figure two and the X and Y dimension, those angles are going directly away from and are exactly parallel to the foot.

[00:22:25] Speaker 04:
And so I think that it is disclosed, in fact, that they are all right angles with that arrest.

[00:22:33] Speaker 00:
I thank both counsel for their argument.

[00:22:35] Speaker 00:
This case is taken for submission.