[00:00:00] Speaker 04: Our third and final case for this morning is number 22, 1969, Inouye Wycheck. [00:00:08] Speaker 04: Okay, Ms. [00:00:09] Speaker 04: Fleetham. [00:00:11] Speaker 00: Good morning, Your Honors. [00:00:12] Speaker 00: Jessica Fleetham for the appellate and patent applicant, Joseph Wycheck. [00:00:17] Speaker 00: May it please the court? [00:00:19] Speaker 00: The patent application at issue today relates to a way of making foam components using a mold, supplying pellets to the mold, [00:00:27] Speaker 00: and using water that's already in the pellets to act as a binder to bind the pellets to one another and form the component. [00:00:35] Speaker 00: This differs from the prior art way in which a binder, an additional binder, is supplied to the mold to bind the pellets to one another and form the components. [00:00:43] Speaker 00: In the briefing we've referred to the water that's already in the pellets as starting water and we've explained why the starting water is binding the pellets to one another to form a component. [00:00:55] Speaker 00: The specific question I issue today is, do Calasca and Glenn, the two prior art references I issue, inherently disclose the claimed feature of forming a component where the starting water acts as a binder? [00:01:08] Speaker 00: Our answer is no. [00:01:10] Speaker 00: Calasca and Glenn explicitly disclose that something else acts as a binder. [00:01:15] Speaker 00: In particular, in Calasca, steam or hot air is delivered to the mold [00:01:21] Speaker 00: and quote, the residual moisture of the steam or hot air begins to slightly dissolve the surface of the granulate beads and thus makes them sticky. [00:01:30] Speaker 02: Council, one of the problems I think that you have with your argument is that the claim says we're in the water acts as a binding agent, right? [00:01:40] Speaker 02: It doesn't say we're in only the water acts as a binding agent, the water referring to the water used initially, right? [00:01:47] Speaker 02: Here, I think it's your contention that [00:01:49] Speaker 02: Uh, there's other things like the hot steam or the hot air that causes the, uh, binding to occur. [00:01:57] Speaker 02: Um, but doesn't, isn't it reasonable? [00:02:00] Speaker 02: It's not unreasonable to me that a fact finder could say, you know, um, it's not just the hot air. [00:02:07] Speaker 02: There's actual, some moisture that comes off those pellets and therefore it shifted the burden to the patentee to try to show that that prima facie case hadn't been established. [00:02:18] Speaker 00: Your honor, I don't disagree with the first part of your statement that it may be reasonable to assume in the prior art, there is some water, residual water in the pellets that maybe contributes to or participates in binding, but that is not what the claims recite. [00:02:33] Speaker 00: The claims recite forming a component where the starting water acts as a binder. [00:02:38] Speaker 00: Calasca and Glenn? [00:02:39] Speaker 02: The binding agent, not the only binding agent, right? [00:02:43] Speaker 00: Correct. [00:02:44] Speaker 00: The claims in this case do not exclude the addition of binding agents, but they do make clear that the starting water has to provide enough binding to actually form a component. [00:02:57] Speaker 00: That's different from the prior art, which explicitly teaches that added water forms the component. [00:03:04] Speaker 00: And that's at the quote I just read was from Colaska at column three lines nine through 12 at appendix 77. [00:03:11] Speaker 00: And that's not where Colaska stops. [00:03:14] Speaker 00: Colaska further teaches actually that the beads or pellets should not have enough water present before molding to provide any kind of binding. [00:03:23] Speaker 00: Quote, controlling the moisture and manufacture is important, since if the moisture is too great, not only does the surface become sticky, but the granulate beads will decompose. [00:03:33] Speaker 00: That's same page 77, column three, lines 18 through 21. [00:03:38] Speaker 00: So again, Colaska teaches us the beads should not have enough moisture in them that the pellets will become sticky or essentially be bound to one another prior to the molding step where steam or hot air is delivered to the mold and it is that added steam or hot air that acts as a binder. [00:03:59] Speaker 00: The other reference at issue, Glenn, teaches the same thing. [00:04:02] Speaker 00: There, beads are placed into a mold and hot air, steam, or a volatile agent are provided to the mold [00:04:09] Speaker 00: quote, to cause at least the outer surface of each bead to become softened and pliable so that when the beads expand in volume and come into contact with one another, the beads are capable of sticking together. [00:04:21] Speaker 00: That is paragraph 65 of Glenn on page 87 of the appendix. [00:04:26] Speaker 00: Again, Glenn is teaching not that starting water is acting as a binder, although [00:04:31] Speaker 00: As you mentioned, Your Honor, it may be present during the molding step. [00:04:35] Speaker 00: It is the added steam, hot air, or volatile agent that is causing the binding to occur and causing the pellets to form the component. [00:04:44] Speaker 04: Are you contending that the board erred in concluding that these two prior art references had starting water? [00:04:54] Speaker 00: No, Your Honor. [00:04:54] Speaker 00: I believe that our contention is a little bit different. [00:04:58] Speaker 00: We don't necessarily disagree. [00:05:00] Speaker 00: that starting water is present during the molding step in the prior art, we do disagree that the starting water is causing the binding of the pellets to form a component, which is what claims 1 and 12, the two independent claims that issue recite. [00:05:15] Speaker 03: I suppose you could file a continuation application that includes a declaration from an expert interpreting these prior art references. [00:05:25] Speaker 03: Or amending the claims that you have here, where it's clear from the claim language that it's only the starting water that is acting as the binding agent. [00:05:36] Speaker 00: Yes, Your Honor, I agree. [00:05:38] Speaker 03: Do you have any other claims? [00:05:40] Speaker 03: I don't know, in this application or a different one, that really express that the starting water is the binding agent and not the only binding agent. [00:05:50] Speaker 00: There are no other claims. [00:05:52] Speaker 00: that are pending in this application to that effect. [00:05:55] Speaker 00: However, as you mentioned, of course, that could be the subject of a continuation application. [00:06:02] Speaker 00: Your Honor, you mentioned also that the burden has shifted from the patent office to the applicant to show that the case of inherency has not been met. [00:06:12] Speaker 00: And we believe that is not the case. [00:06:15] Speaker 00: The patent office has not met its burden to establish a case of inherency which comes with it [00:06:20] Speaker 00: a high bar to show it must necessarily be the case that the prior art has the teaching. [00:06:26] Speaker 00: That's from the Par Pharma case that's been cited by both sides in the briefing. [00:06:30] Speaker 00: So in asking the appellant, Mr. Wycheck, to sort of prove the negative that the starting water in the prior art is not acting as a binder, the patent office has erred. [00:06:41] Speaker 00: The burden has not shifted. [00:06:43] Speaker 00: As the director notes on page 19 of the brief, [00:06:50] Speaker 00: That burden shifting, the reason for it is that the patent office doesn't have laboratories to perform scientific experiments and confirm that the prior art necessarily does or does not teach the feature at issue. [00:07:04] Speaker 00: In this case, we do not need a laboratory because again, the prior art tells us specifically that it is the added water, not the starting water that's acting as the binder to form a component. [00:07:17] Speaker 00: So we would submit that the burden did not shift to Mr. Wojciech, but even if it did, based on the cited references, there is no inherent teaching of starting water acting as a binder. [00:07:38] Speaker 00: Now, the director focuses much on the alleged identity of processes taught by the prior art, Kalaska and Glenn, [00:07:46] Speaker 00: as compared to the process taught by the present application. [00:07:50] Speaker 00: But there is no such identity because Colaska and Glenn teach an affirmative step of adding water to its mold and that that added water is providing the binding that is forming the component. [00:08:03] Speaker 00: The current claims do not have that added step. [00:08:08] Speaker 00: Instead, starting water is acting as a binder. [00:08:11] Speaker 03: What is your view of what happened to the water, the starting water in both Glen and Kalaska? [00:08:19] Speaker 03: By the time you get to the molding step in those references, did that starting water just evaporate, go poof? [00:08:28] Speaker 00: Your Honor, the water that's in the prior art would behave as water does and in the same way as it does in the present application, which is that it evaporates in the mold because the mold is heated. [00:08:40] Speaker 00: and it may at that point contribute to or participate in the binding that's happening in the pellets. [00:08:46] Speaker 00: But again, that contribution or participation is not what the claims recite. [00:08:51] Speaker 00: The claims recite something more, which is that it is that starting water that's forming the component. [00:08:57] Speaker 00: The claims don't simply recite that [00:09:00] Speaker 00: one molecule or a dozen molecules of starting water are acting as a binder, but rather that there's enough starting water there that a component can be formed. [00:09:10] Speaker 00: And that's different from the prior art. [00:09:11] Speaker 03: So as I understand it, you're recognizing that the prior art references the starting water there. [00:09:19] Speaker 03: It offers some contribution, but it's not enough to complete the process. [00:09:30] Speaker 00: Yes, Your Honor. [00:09:30] Speaker 00: To the extent there is starting water present, it would behave. [00:09:33] Speaker 03: And so it's your view that the claim requires a certain quantum of water that is enough to complete the binding process. [00:09:42] Speaker 00: Yes. [00:09:43] Speaker 03: And so if the starting water is only 10% of the water needed to do the binding, then it's not the claimed binding nature. [00:09:54] Speaker 00: So the claims don't recite a specific amount, as the director has pointed out. [00:09:59] Speaker 00: The claims recite, in claim one, forming the plurality of biodegradable pellets into a component wherein the water acts as a binding agent. [00:10:08] Speaker 00: And claim 12 has similar language, except that it reads whereby the water acts as a binding agent. [00:10:13] Speaker 00: And again, we're referring to starting water. [00:10:16] Speaker 00: So we know from the claims the starting water is forming the component, even though it doesn't specify an amount of water present at the time. [00:10:24] Speaker 04: I'm sort of confused as to why we're here, which builds on the question that Judge Chen asked you. [00:10:32] Speaker 04: I mean, your client facing a rejection could have just amended the claims to make clear the claim construction you say the board should have adopted. [00:10:42] Speaker 04: Well, why didn't that happen? [00:10:44] Speaker 04: Why are we having to deal with an appeal? [00:10:47] Speaker 00: Well, truthfully, Your Honor, I think [00:10:50] Speaker 00: applicant in this case and the examiner were sort of talking past one another and a potential amendment or continuation didn't really become clear until the issue was flushed out by the PTAB and later in the briefing in this case. [00:11:08] Speaker 00: If there are no other questions, I'll reserve the rest of my time for rebuttal. [00:11:23] Speaker 01: Your Honors, it may please the Court. [00:11:25] Speaker 01: Substantial evidence supports the Board's determination that the starting water of the prior art inherently acts as a binding agent. [00:11:32] Speaker 01: The prior art discloses the same starting materials, the same process steps as claimed, and the same processing conditions as described in the 309 application. [00:11:42] Speaker 01: This gave the Board a sound basis to conclude that the starting water that is in the prior art inherently acts as a binding agent. [00:11:53] Speaker 01: and under this court's precedent, that shifted the burden to Wychef to prove that it was not inherent, a burden that Wychef did not meet. [00:12:02] Speaker 03: Is there something in either the glen or Coloska reference that you can point to that would give us some comfort that there is, in fact, still some water that exists that can at least contribute to acting as a binding agent, and that it hasn't all evaporated somehow during an earlier step in the process? [00:12:25] Speaker 01: Yes, Your Honor. [00:12:26] Speaker 01: As the board noted, because the evaporation argument was made before the board and then has been dropped on appeal by Weichach, but as the board noted, in Calasca at Appendix 182, it specifically says that after the extrusion process, which is right before the molding, which is where the water would act as a binding agent, that the granulate beads comprise starch, polyvinyl alcohol, and water. [00:12:49] Speaker 01: The board noted that there was never any argument by Weichach that the land did not also have [00:12:55] Speaker 01: an amount of water present in these pre-molded step that would not act as a binding agent. [00:13:01] Speaker 01: But you can also look at the exact similarity of processing steps. [00:13:05] Speaker 01: So you have the same amount of water. [00:13:07] Speaker 01: If you look at the water in the Y-check application, it's 15% to 60% that matches the amount in Calasca that's 17% to 18%. [00:13:17] Speaker 01: You extrude it at the exact same temperatures. [00:13:19] Speaker 01: So I would propose that if it evaporates in the prior art, it would also evaporate in Y-checks. [00:13:25] Speaker 01: process, but because they say the starting water is still there and it acts as a binding agent, the identity of process steps means it's still there in the prior art and it inherently acts as a binding agent. [00:13:37] Speaker 01: They have not met their burden to show that it was a different process. [00:13:42] Speaker 01: The identity of process is what sets up the conclusion that the starting water inherently acts as a binding agent. [00:13:50] Speaker 01: They could have amended their claims to show that there was a different processing steps, [00:13:54] Speaker 01: different conditions, different starting materials. [00:13:57] Speaker 01: As Your Honor Judge Soule noted, that they could have excluded the addition of steam or hot air. [00:14:02] Speaker 01: In fact, they did not do any of that. [00:14:04] Speaker 01: And if you look at the identity of processing steps, including the fact that Y-Check's application says that they use steam and hot air in the molding step. [00:14:14] Speaker 01: So if it's good for the goose, it's good for the gander. [00:14:17] Speaker 01: It's in their application. [00:14:18] Speaker 01: There's no reason that as [00:14:21] Speaker 01: the opposing council says, water acts as water. [00:14:23] Speaker 01: There's no reason that the water that's present in the prior art would not act as a binding agent under the same conditions that Witech's applications water acts as a binding agent. [00:14:37] Speaker 01: I'd like to just make one clarification in response to the comment about Calaska's paragraph about the [00:14:45] Speaker 01: water, they're not being too much water, so that granulate beads don't stick together, and that's in Appendix 183. [00:14:52] Speaker 01: I think it's important to note that what that paragraph is talking about is the beads in the final shaped body, so that is after the molding step. [00:15:05] Speaker 01: So what we're talking about here in the process steps is the beads going into molding, there you want them to be sticky, they stick together, the water makes them sticky, after that, [00:15:14] Speaker 01: Naturally, you don't want your shaped, you know, body that's protecting your TV or your microwave to be sticky. [00:15:20] Speaker 01: You want the final shaped body to be not sticky. [00:15:24] Speaker 01: And that's what the paragraph, or excuse me, the lines 18 to 21 that Wide Checks Council has pointed out. [00:15:31] Speaker 01: That is the shaped body. [00:15:32] Speaker 01: And that's also shown in claim six, which is in column four of appendix 183. [00:15:36] Speaker 01: That line there that they pointed out is specifically talking about the shaped body. [00:15:41] Speaker 01: and not the saying that there's any low amount of moisture in the pre-molded granular beads. [00:15:48] Speaker 01: So unless your honors have any other questions, because the only issue here is the inherency, we ask the court to affirm the board's rejection of the claims as anticipated and obvious. [00:16:00] Speaker 04: OK. [00:16:00] Speaker 01: Thank you. [00:16:04] Speaker 04: Ms. [00:16:08] Speaker 00: Sleen. [00:16:08] Speaker 00: Thank you, your honors. [00:16:09] Speaker 00: To address a few points, [00:16:11] Speaker 00: First, appellant disagrees that the prior art teaches the same process as the present application, because the prior art teaches adding water to the mold. [00:16:23] Speaker 00: The present application does not do that, and the claims recite that starting water is acting as a binder. [00:16:30] Speaker 00: That begs the question, if the starting water in the prior art were acting as a binder to form a component, why would those references need to add additional water into their molds? [00:16:42] Speaker 00: Another thing I'd like to address that the question is not in this case whether water is present or whether it contributes to binding as we've already discussed some. [00:16:52] Speaker 00: Rather, the question is, is the starting water in the prior art acting as a binder to form a component? [00:16:58] Speaker 00: The answer is no, again, because there are explicit teachings in the prior art that it's the added water acting as a binder. [00:17:05] Speaker 00: Lastly, with respect to opposing counsel's statement that the present application teaches providing steam or hot air to the mold during the molding step, that steam or hot air is provided outside of the mold to heat it, not inside the mold to act as a binder. [00:17:23] Speaker 00: Paragraph 39 of the present application, which is at Appendix 26, mimics the language of the claims, states that no additional binder is added [00:17:32] Speaker 00: the starting water in the pallets is acting as a binder. [00:17:36] Speaker 00: And unless there are any additional questions, we would ask that this court reverse the PTAB and allow Mr. Wojcik's patent to grant. [00:17:44] Speaker 04: Okay. [00:17:44] Speaker 00: Thank you. [00:17:45] Speaker 00: Thank you. [00:17:45] Speaker 04: Thank you both counsel. [00:17:46] Speaker 04: The case is submitted. [00:17:46] Speaker 04: That concludes our session for this morning.