[00:00:00] Speaker 03:
The fourth and final case for argument this morning is 22-1580NRA.gov.

[00:00:09] Speaker 04:
Good morning, Your Honors.

[00:00:11] Speaker 04:
Iman Gathabi, appellant of this case, may please the court.

[00:00:15] Speaker 04:
I'd like to begin with the obviousness, rejections, and first, the cardiac pacemaker case in which the court held that recognition of a need does not provide a reason to find motivation to combine.

[00:00:32] Speaker 04:
My opponent rejects 21 claims and the rationale she mentions for finding motivation to combine is basically arguing there is a need for the combined references.

[00:00:47] Speaker 04:
And none of the needs that my opponent addresses is in my patent claims.

[00:00:57] Speaker 04:
So I respectfully refer the court to footnotes of page 18 of the reply brief for each of these claims.

[00:01:08] Speaker 04:
So for claim 3 to 5, the examiner mentioned the need to make the device useful for a memory application and to be able to retain its data.

[00:01:18] Speaker 04:
For claim 6 to 8, the need to having a good storage density

[00:01:23] Speaker 04:
and permanent data storage without thermal diffusion problems.

[00:01:28] Speaker 04:
For 10, 13, 15 to 17, and 24 to 13, examiner mentioned the need to increase the density of 3D memory cells, and so on and so forth.

[00:01:42] Speaker 04:
So the patent addresses implementing a shortcut gate edge to improve the read and write speed, and also to

[00:01:52] Speaker 04:
having a smaller change in the gate to turn on the transistor, it doesn't address the needs that examiner just mentioned, the need, for example, for thermal diffusion problems, for increasing the density, and for other needs that the examiner... Let me just ask you.

[00:02:13] Speaker 03:
Firstly, I thought your first argument on motivation was not so much on the substance, but just on the fact that

[00:02:22] Speaker 03:
Well, I didn't see any arguments about why the findings of motivation were incorrect except for this need mentioned.

[00:02:30] Speaker 03:
Instead, you seem to argue that the number of references used in combination was a mitigating factor for the motivation to combine.

[00:02:40] Speaker 03:
I don't think I cited any cases that we have that would support that sort of theory.

[00:02:48] Speaker 03:
Do you have any?

[00:02:50] Speaker 04:
Your Honour, this argument is the number four argument, the last argument in the Motivation to Combine section on page 18 of the Library.

[00:03:00] Speaker 04:
But for the number of references, as you mentioned, there is a

[00:03:06] Speaker 04:
In the Gorman case that the court held that basically rejected the claims based on 13 prior arts.

[00:03:17] Speaker 04:
But I asked the court to, in light of Supreme Court's decision in KSR, which, you know,

[00:03:27] Speaker 04:
Before KSR, there was a more explicit requirement to find motivation.

[00:03:33] Speaker 04:
But after KSR, that requirement has been removed.

[00:03:38] Speaker 04:
So currently, as I put in that section, I put an excerpt from an article that describes that currently there is a disconnect between district courts or rulings and also

[00:03:53] Speaker 03:
Well, let me move on.

[00:03:55] Speaker 03:
You do make an argument, and I think you started referencing it here, that the recognition of a need and application for the proposed combinations is not a proper basis to find motivation.

[00:04:09] Speaker 03:
That's right.

[00:04:11] Speaker 03:
If the art itself recognized a need, and that's what the examiner found, then why wouldn't a posa be motivated to meet that need?

[00:04:21] Speaker 04:
In cardiac pacemaker, the court held that it's not a reason if there is only a need.

[00:04:30] Speaker 04:
And in KSR, the court held that if the need addressed by the patent claim, if that need addressed by the patent claim, then it could be a basis for finding motivation to combine.

[00:04:45] Speaker 04:
So the question is if these needs that the examiner mentions addressed by the patent claim at issue, which is this patent claim, and they are not addressed by the patent claims.

[00:04:59] Speaker 03:
So we don't look at the prior art references that we're combining?

[00:05:04] Speaker 03:
We just look at the patent claim to determine motivation?

[00:05:08] Speaker 03:
I'm not clear what you're saying.

[00:05:10] Speaker 04:
Yeah, we do.

[00:05:11] Speaker 04:
So examiner mentions a need for motivation to combine, basically arguing that there is a need in the art to combine the references.

[00:05:20] Speaker 04:
So that need only can be a basis for finding motivation to combine.

[00:05:27] Speaker 04:
If that need is addressed by my patent claim, that's basically based on KSR.

[00:05:34] Speaker 04:
So if that need is just a need in the art based on the cardiac pacemaker case, it's the same as cardiac pacemaker case, that shouldn't be a motivator for combined.

[00:05:49] Speaker 02:
Can I just clarify something?

[00:05:52] Speaker 02:
If the grounds the PTO relies on for motivation to combine two references, perhaps because the PTO sees that a skilled artisan would understand there's some advantage in a feature in the secondary reference that would

[00:06:08] Speaker 02:
somehow improve the device disclosed in the first reference.

[00:06:14] Speaker 02:
In your view, that's not a legitimate motivation to combine if that purpose of adding that feature from the secondary reference is a different purpose than the purpose underlying your claimed invention.

[00:06:30] Speaker 02:
Is that your argument?

[00:06:31] Speaker 04:
That's correct, Your Honor.

[00:06:33] Speaker 04:
If it's not addressed in my patent claim.

[00:06:35] Speaker 03:
So the KSR... You say KSR says that?

[00:06:38] Speaker 04:
KSR says that.

[00:06:39] Speaker 02:
So the purpose of your patent claim to create these edged gate electrodes is because you can increase the electric field at the edge and then through that you can lower the biasing voltage needed for the gate electrode, right?

[00:06:54] Speaker 04:
That's right, Your Honor.

[00:06:55] Speaker 02:
But the prior combination, at least the primary reference, isn't concerned at all about

[00:07:03] Speaker 02:
needing a lower bicing voltage, it's all about lengthening out the fins.

[00:07:12] Speaker 02:
They want the fins to be as long as possible because there's some other advantage to having extra long fins.

[00:07:20] Speaker 02:
Even though the combination might look just like the claim convention, the purposes behind the design of the prior art are different than the purposes you're gunning for.

[00:07:32] Speaker 02:
And so therefore, this is an illegitimate 103 combination.

[00:07:36] Speaker 04:
That's correct.

[00:07:38] Speaker 04:
So if I'm not mistaken, the case was that the need should be addressed by the patent claim application at issue or something like that.

[00:07:52] Speaker 02:
Don't we have case law?

[00:07:53] Speaker 02:
Perhaps it was in the PTO brief that says whatever the motivation might have been for a skilled artisan to combine two references, it doesn't have to be the same motivation that the inventor had in inventing his claim invention.

[00:08:11] Speaker 02:
Don't we have case law that says that?

[00:08:14] Speaker 04:
So could you rephrase your answer?

[00:08:17] Speaker 02:
Oh, OK.

[00:08:18] Speaker 02:
I guess don't we, the Federal Circuit, have case law that rejects the premise of your argument that the motivation to combine two references has to be the same motivation and purpose behind what the inventor of you, your invention, what your purpose was?

[00:08:37] Speaker 02:
If it just turns out that there's a legitimate motivation to combine these references,

[00:08:42] Speaker 02:
and it happens to arrive at the exact same device as your claim device, that's still an OK, Section 103, obvious misrejection under our case law.

[00:08:54] Speaker 02:
Am I not remembering our case law correctly?

[00:08:58] Speaker 04:
I'm not sure about that.

[00:09:01] Speaker 04:
You are not aware of the case.

[00:09:03] Speaker 04:
But if that purpose is a need in the market, the need,

[00:09:07] Speaker 04:
That need should be addressed by the patent claim.

[00:09:11] Speaker 04:
That's what CARESR refers to.

[00:09:14] Speaker 04:
But if the purpose is not based on a need, then it's just not based on some need in the art, then maybe what you have just said might be the case.

[00:09:28] Speaker 01:
Can I ask you about another one of your arguments?

[00:09:29] Speaker 01:
You fought the board and, I guess, the examiner for not identifying clearly enough who the person of ordinary skill in the art is.

[00:09:38] Speaker 01:
Did you raise any dispute about who the person of ordinary skill in the art is during the prosecution or proceedings?

[00:09:45] Speaker 04:
No, I withdraw that argument.

[00:09:46] Speaker 04:
Oh, you do.

[00:09:46] Speaker 04:
OK.

[00:09:50] Speaker 04:
So I'd like to

[00:09:56] Speaker 04:
discuss about the anticipation rejection.

[00:09:59] Speaker 04:
So in the anticipation rejection of claim bond, the issue basically comes down to we have a drawing that is not to escape.

[00:10:06] Speaker 04:
So question is, can we look at that drawing and figure out if two surfaces are parallel, two surfaces are perpendicular, and two surfaces are, one surface is a flat surface.

[00:10:22] Speaker 04:
So that's what the issue comes down to.

[00:10:24] Speaker 04:
And the test that we have is whether each of them requires a measurement based on Hawker's case.

[00:10:32] Speaker 04:
So if any of them requires a measurement because the drawings are not to escape, then it's not allowed.

[00:10:39] Speaker 04:
So examiner

[00:10:43] Speaker 04:
proposes that we can make this determination by, quote unquote, visual inspection of the drawings.

[00:10:50] Speaker 04:
We can basically define whether two surfaces are parallel, two surfaces are perpendicular, and one surface is a flat.

[00:10:59] Speaker 03:
The figures reasonably disclose the angle and the flat surface limitation, right?

[00:11:05] Speaker 04:
Yes, Your Honor.

[00:11:07] Speaker 04:
If we assume that figures are to a scale, that's correct.

[00:11:11] Speaker 04:
But here, the figures are not to a scale.

[00:11:15] Speaker 03:
Well, we don't just have reliance on the figures here.

[00:11:17] Speaker 03:
There's text that's relied on the specification, right?

[00:11:21] Speaker 04:
Yes, Your Honor.

[00:11:23] Speaker 03:
And doesn't that help the other side in support of the argument?

[00:11:27] Speaker 04:
It helps, but if we want to define the exact angle, my argument is, if we want to define the exact angle, we got to make that sixth assumption that I addressed in there.

[00:11:44] Speaker 04:
So if the two sides are not parallel, if they are not perpendicular, so how do we know they are parallel or perpendicular?

[00:11:56] Speaker 04:
By measurement.

[00:11:59] Speaker 04:
if we assume that they are parallel, by looking at the figure.

[00:12:04] Speaker 04:
So the question is, do we want to allow a viewer just make a determination just by looking at the drawing, which is not to a state?

[00:12:16] Speaker 04:
Do we want to allow that viewer to define, to determine that angle is there?

[00:12:24] Speaker 02:
The fin in Anderson is cutting through the gate

[00:12:28] Speaker 02:
of Anderson at an angle, right?

[00:12:30] Speaker 02:
I mean, that's what the Anderson reference actually says.

[00:12:34] Speaker 02:
So once it's cutting through an angle like that, why wouldn't that create something less than 90 degrees?

[00:12:44] Speaker 04:
It would create something less than 90 degrees, but the question is how much.

[00:12:49] Speaker 04:
So that number, in order to come to the exact number.

[00:12:54] Speaker 02:
Wouldn't it be reasonable to conclude that it discloses something that's 88 degrees or less?

[00:13:01] Speaker 02:
I guess you're saying maybe it's 89 degrees.

[00:13:05] Speaker 02:
And so it's perhaps the most subtle of angles.

[00:13:10] Speaker 04:
Yes.

[00:13:10] Speaker 04:
So some claims could be.

[00:13:13] Speaker 04:
But some claims also addresses lower numbers, much lower numbers than 88 degrees.

[00:13:20] Speaker 03:
So why don't we hear from the government and we certainly may do the time for rebuttal.

[00:13:25] Speaker 03:
Let's hear from the government.

[00:13:26] Speaker 03:
You're in your rebuttal.

[00:13:31] Speaker 00:
Court, William Lamarca, for the PTO.

[00:13:34] Speaker 00:
You know, in response to the first argument, Your Honor.

[00:13:36] Speaker 03:
Can you just, while it's still in my mind, the debate we were having, the discussion we were having about need and what KSR says, because I think this actually, I think this is a quote from your briefing, KSR, and it does say, any need or problem known in the field of endeavor at the time of the invention and addressed by the patent

[00:13:57] Speaker 03:
can provide a reason.

[00:13:59] Speaker 03:
So isn't that what your friend's argument is?

[00:14:02] Speaker 03:
That it also has to be, the need has to be addressed in the patent.

[00:14:05] Speaker 00:
I understand that's his argument, but.

[00:14:07] Speaker 03:
And that is not what KSR says?

[00:14:08] Speaker 00:
What we have quoted on page 33 of our brief from KSR, quote, the question is not whether the combination was obvious to the patentee, but whether the combination was obvious to a person of ordinary skill in the art.

[00:14:20] Speaker 00:
And we further say,

[00:14:22] Speaker 00:
any problem or need known in the field of endeavor at the time of the invention addressed by the patent can provide a reason.

[00:14:29] Speaker 00:
But then the next sentence, the law does not require that the references be combined for the reasons contemplated by the inventor.

[00:14:36] Speaker 00:
In other words, the reasoning can come from the prior art.

[00:14:39] Speaker 00:
The inventor sitting in his room with the prior art in front of the ordinary artisan, and he discovers problems and needs to solve those problems, that can be the reason driving or motivating

[00:14:51] Speaker 00:
that inventor, that ordinary artisan, to combine those teachings.

[00:14:55] Speaker 00:
And even if those reasons aren't the same as the applicant or the patent.

[00:14:59] Speaker 03:
So you don't think the need addressed or the problem addressed by the patent in this one sentence in the KSR means what your friend says it means?

[00:15:07] Speaker 00:
Or what does it mean?

[00:15:08] Speaker 00:
I don't think that it's irrelevant, but I don't think it's required.

[00:15:11] Speaker 00:
I think the further reading of this whole paragraph that we put in our brief is that the driving motivators can come from the ordinary artisan, can come from the prior

[00:15:21] Speaker 00:
other than the applicants applied for application or the applicants.

[00:15:26] Speaker 00:
In this case, it's a reissue application.

[00:15:29] Speaker 00:
The bottom line, it doesn't have to be the same problem that they're solving.

[00:15:33] Speaker 00:
It can be a different purpose or a different reason.

[00:15:35] Speaker 00:
And that's enough as a reason for an ordinary person to make a combination to render it obvious.

[00:15:42] Speaker 00:
I mean, that's our position on the law, Your Honor.

[00:15:44] Speaker 00:
Okay, thank you So that was what I was going to do is I was just going to address the first part of his argument Which is the 103 and that's basically a legal argument He doesn't really get into the specifics of the teachings of what the examiner determined We've kind of laid that out on a roadmap in our brief if you're interested with respect to anticipation The key the critical claim feature that we're debating here is is there a

[00:16:10] Speaker 00:
a gate, an internal gate angle of less than 88 degrees.

[00:16:14] Speaker 00:
That's what is in the claim.

[00:16:16] Speaker 00:
And what we, as Judge Chen pointed out, if you look at Figure 16 on page Appendix 243 of the Anderson Reference, for example, that's the figure that the examiner and the board looked to, along with the written description to help supplement that.

[00:16:32] Speaker 00:
And the FIN is FIN 54.

[00:16:35] Speaker 00:
And it's underneath the gate conductor the gate which is 102 that goes over it

[00:16:41] Speaker 00:
And it's on an angle.

[00:16:43] Speaker 00:
And it's true.

[00:16:44] Speaker 00:
We can't sit here with a protractor or with a ruler and determine the specific angle that's in this picture.

[00:16:50] Speaker 00:
But when you look at the written description, the written description of the Anderson reference, and we pointed this out in a brief, it makes it pretty clear.

[00:17:00] Speaker 00:
For example, the angle between the FIN 54, I'm at page 246, column 2 at the very top of the page of the Anderson publication,

[00:17:11] Speaker 00:
The angle between fin 54 and gate conductor 102 could be between five.

[00:17:16] Speaker 00:
and 85 degrees, and more specifically between 30 and 60 degrees, and even more specifically, 45 degrees.

[00:17:22] Speaker 00:
So what Anderson is all about, if you just step back away from this thing for a second, it's a semiconductor, and it's a method of manufacturing, a method of making the semiconductor.

[00:17:31] Speaker 00:
And the way these are made, I'm not a semiconductor expert, but what I've learned from reading this patent about five or six times and reading the other patents here is the semiconductors, it's assembled in pieces.

[00:17:43] Speaker 00:
It's not all made all at once.

[00:17:44] Speaker 00:
First they make the lower substrate level.

[00:17:46] Speaker 00:
Then they make the fin.

[00:17:48] Speaker 00:
And then the fin is placed on top of the substrate.

[00:17:50] Speaker 00:
Then the gate conductor is formed over the fin.

[00:17:53] Speaker 00:
These are all done in pieces.

[00:17:54] Speaker 00:
And if you read throughout this Anderson reference, you'll see multiple references to lamination, layers.

[00:18:00] Speaker 00:
You'll see statements about linearity and linear sidewalls and parallel and non-parallel and perpendicular.

[00:18:07] Speaker 00:
In fact, they're talking in terms of

[00:18:10] Speaker 00:
Relevant relevant angles and relevant relationships of the components now.

[00:18:15] Speaker 00:
It's true What appellant argues with mr. Katabi argues is accurate those drawings are not to scale in other words We don't know how large or how small this is But that's not necessary because what we're really talking about is the relevant relative relative relationship between the fin and the gate conductor which tells us about the angles that the written description talks about and we know for sure that

[00:18:37] Speaker 00:
that the internal gate angle is the same angle as the angle between the gate conductor and the fin, because the gate conductor is formed over the fin, which means there are surfaces in that gate conductor that make an edge, and that edge has an angle, and that angle is less than 88 degrees, precisely what is required by the claim.

[00:18:57] Speaker 00:
And that was the evidence that we believe is substantial evidence that supports the examiner's finding and the board's affirmance of the examiner.

[00:19:05] Speaker 02:
I guess that reasoning about the angle created between the fin and the gate being the same angle as some interior angle between two surfaces of the gate electrode is necessarily premised on the belief that

[00:19:20] Speaker 02:
all the lines that look parallel here are in fact parallel, and all the lines that look perpendicular to each other are in fact perpendicular.

[00:19:27] Speaker 02:
Is that right?

[00:19:28] Speaker 00:
I think that's correct, and Mr. Gattabi's argument is that, well, we don't know that these lines are parallel, that these surfaces are flat.

[00:19:36] Speaker 00:
He says if you look at that picture, it's not to scale, and you can't really tell.

[00:19:39] Speaker 00:
That might be a curve.

[00:19:40] Speaker 03:
Isn't there also an observation that says that the curved line can sometimes appear straight?

[00:19:47] Speaker 00:
Yeah and I think I think Mr. Katabi points that out in his brief and his brief before the board as well but the examiner responded to that the examiner pointed out when you have multiple views of a drawing which by the way you do with figure 16 because figure 16 if you look at an earlier figure in the drawings you'll go back to page 8 appendix 237 if you look at figure 3 figure 3 shows a top view looking down

[00:20:13] Speaker 00:
Above what figure 16 is showing from the side and that shows you that those fins are straight They're parallel and they're on an angle with respect to the gate conductors and I think that's the examiner's response is that when you have multiple views of a particular picture like a

[00:20:30] Speaker 00:
If you had a curved wire, which I think Mr. Kattab uses as an example, if you look at it from one angle, it may look like a straight line, but if you have a picture from another view, you'll know that it's not straight, that it's curved.

[00:20:43] Speaker 00:
And we've got those multiple views here in Anderson to confirm that indeed the fins are straight, the gates are straight, and they're on an angle with respect to each other.

[00:20:53] Speaker 00:
In fact, if you read through the reference, there's multiple references that

[00:20:58] Speaker 00:
Anderson speaks in terms of these things being parallel to each other these things being spaced from each other or being perpendicular from each other are not being perpendicular they talk in language of angling and language of parallel and Spacing so we know that the ordinary artisan reading this reference is going to understand that this picture

[00:21:20] Speaker 00:
Although it's not an actual embodiment of the real device in the real world, it is a figurative drawing, a schematic drawing of what the semiconductor device has looked like, the way it's assembled.

[00:21:32] Speaker 00:
So that's kind of where the examiner is.

[00:21:34] Speaker 00:
What's our standard of review on that finding?

[00:21:37] Speaker 00:
These are fact findings that we're talking about, and that's the substantial evidence standard, which means if

[00:21:43] Speaker 00:
the court agrees that this evidence that I pointed to in the record is substantial and it supports the examiner's finding, then the court would defer to that finding, Your Honor.

[00:21:52] Speaker 01:
Can I ask you about Claim 9?

[00:21:55] Speaker 01:
I think Mr. Katabi specifically calls out at page 42 of his brief that in Claim 9, there's not really a sufficient explanation as to the examiner's rationale or the board, indeed, for why they approved it with the examiner.

[00:22:12] Speaker 01:
Can you help me on that?

[00:22:13] Speaker 00:
Well, if I took you to the examiner's answer, and I put it in our brief at page 16 of the government's brief, you'll see for dependent claim nine, further requiring a method of making a device in claim one using lithography masking.

[00:22:27] Speaker 00:
So it's basically the masking technique and how they manufacture this.

[00:22:31] Speaker 00:
And if you go to page, I'm in the examiner's answer right now, find the precise page.

[00:22:38] Speaker 02:
The board cited the 84-85.

[00:22:40] Speaker 00:
Yeah, that might have been the final rejection, which was later just referenced in the answer, but let's go to 84-85.

[00:22:46] Speaker 00:
There we go.

[00:22:47] Speaker 00:
Page 84 and 85 of the appendix is the examiner's final rejection, which is later referenced in the answer, but there's more detail here.

[00:22:57] Speaker 00:
He goes through why claim nine is obvious.

[00:23:02] Speaker 00:
He explains that Anderson teaches the method of making a FIN-FET, that's Field Effect Transistor Device, recited in claim one, and the method includes the step of

[00:23:11] Speaker 00:
lithography mask to pattern the fins, but what it doesn't show is it doesn't show the step of using a lithography gate mask for making it a gate, the gate conductor.

[00:23:22] Speaker 00:
And then he goes on and he says,

[00:23:24] Speaker 00:
But the admitted prior art figure six of the applicant's device shows that feature.

[00:23:31] Speaker 00:
And he says, therefore, here's the reasoning on why you would take Anderson's teachings, combine it with the admitted prior art, and arrive at an obvious result, which means that would be an obvious feature as well.

[00:23:44] Speaker 00:
And there's about a page and a half of the reasoning and explanation by the examiner here on pages 84 and 85.

[00:23:50] Speaker 00:
So it's not as if the examiner ignored this topic

[00:23:54] Speaker 00:
the examiner did give enough reason.

[00:23:56] Speaker 00:
What he argues now really is more, we applied kind of the wrong standard of obviousness, that we're not acknowledging the problems or the needs in his patent, and that should be the same exact need or problem here, and we already discussed that with Judge Prost earlier.

[00:24:11] Speaker 00:
I didn't have anything further unless there were further questions from you, Your Honors.

[00:24:15] Speaker 00:
Thank you.

[00:24:15] Speaker 00:
Okay, thank you very much.

[00:24:18] Speaker 04:
Your Honors, with respect to the

[00:24:25] Speaker 04:
the determination whether the surfaces are parallel, perpendicular, or flat.

[00:24:32] Speaker 04:
The court has set a test in Hockerson-Halbert's that case.

[00:24:37] Speaker 04:
So the question is whether each of those requires a measurement.

[00:24:41] Speaker 04:
So for finding out whether two surfaces are parallel, it needs a measurement, measurement of the space between those surfaces.

[00:24:50] Speaker 04:
Whether a surface is perpendicular, it needs a measurement, a measurement of that angle.

[00:24:55] Speaker 04:
And based on the Halbert case, it shouldn't be allowed.

[00:25:03] Speaker 04:
And my opponent also addressed different views of the drawing, the top view and side views.

[00:25:10] Speaker 04:
So if we rely on the judgment of the viewer in this case, it would cause inconsistent consistency in future litigation.

[00:25:21] Speaker 04:
rely on a viewer to define whether two surfaces are parallel in a drawing which is not to escape.

[00:25:30] Speaker 04:
So I don't have for that.