[00:00:00] Speaker 04:
Next case for argument, I guess everybody stays where they are.

[00:00:03] Speaker 04:
22-1652, Schwendeman versus Stahl.

[00:00:09] Speaker 01:
May I please the court?

[00:00:11] Speaker 01:
Your honor, the board's decision is another example of impermissible hindsight reasoning.

[00:00:17] Speaker 01:
The board combined two references in this case to invalidate, Akada and Takao.

[00:00:24] Speaker 01:
But neither reference teaches that white canvas on which the image can sit.

[00:00:29] Speaker 01:
Akata teaches a transparent layer that sits on top of the image to protect it from being nicked or scratched.

[00:00:36] Speaker 01:
Takau teaches the use of a brightening agent for a whiteness improving layer to create, but not to create, an opaque white canvas for image transfer.

[00:00:47] Speaker 01:
The board put these references together only because Jody taught them to.

[00:00:51] Speaker 01:
Separately, Takao is not even analogous art.

[00:00:54] Speaker 01:
Takao is for printing on a piece of paper.

[00:00:59] Speaker 01:
It does not transfer an image from one surface to another.

[00:01:02] Speaker 01:
So how can it be analogous art for a patent about image transfer, let alone the special case of image transfer onto dark fabric?

[00:01:10] Speaker 01:
And lastly, the board erred in its motivation to combine.

[00:01:14] Speaker 01:
The board used two specific prior art combinations to find obviousness.

[00:01:19] Speaker 01:
the board used a third totally different combination to find motivation.

[00:01:24] Speaker 01:
And that's not permissible.

[00:01:26] Speaker 01:
To establish obviousness, the board relied on combinations that add a pigment to what has been the transparent layer in Akada.

[00:01:33] Speaker 01:
And to establish motivation, the board relied on a different combination that added an entirely new layer to hold the white pigment.

[00:01:42] Speaker 01:
This, too, is a reversible error.

[00:01:43] Speaker 01:
The same combination must be used to establish both obviousness and motivation.

[00:01:48] Speaker 01:
If you have no other questions, that's all I have.

[00:01:59] Speaker ?:
Thank you.

[00:02:01] Speaker 00:
Your Honor, the first issue on appeal is whether or not Takawa's analogous are.

[00:02:06] Speaker 00:
And I submit that the board properly found that there was substantial evidence that it was.

[00:02:10] Speaker 00:
The test for analogous art is to evaluate the embodiments, the function, the structure of the claimed invention, and that's what the board did here.

[00:02:20] Speaker 00:
The board found the 475 patent, the Schwendemann's patent, this particular one, was directed to a thermal image transfer system.

[00:02:30] Speaker 00:
And what's important here is that the board properly found that the claims at issue here are directed to an article of manufacture, not methods.

[00:02:40] Speaker 00:
Nothing about the claims talk about dark fabric or how you do it, but instead are directed to a particular sheet and a sheet configured to receive an image.

[00:02:52] Speaker 00:
And so the board properly found that Takawa's analogous art.

[00:02:55] Speaker 00:
And it looked at substantial evidence to do that, right?

[00:02:57] Speaker 00:
So the first thing it looked at to define or to figure out what the 475 patent was directed to, it looked at the specification.

[00:03:05] Speaker 00:
And it found that the specification of Ms.

[00:03:08] Speaker 00:
Schwendeman's patent broadly defines what her invention is.

[00:03:11] Speaker 00:
It's unrestricted to what you print on.

[00:03:14] Speaker 00:
It's not just dark fabric.

[00:03:16] Speaker 00:
She says you can use this with paper or other types of flexible materials that would receive the image.

[00:03:25] Speaker 00:
You can use it with any type of ink or any type of substrate.

[00:03:28] Speaker 00:
They looked at the claimed invention.

[00:03:30] Speaker 00:
The board looked at the claimed invention and said these claims are directed to an article manufacturer.

[00:03:34] Speaker 00:
Again, a sheet that's configured to receive an image, not necessarily restricted to something that transfers an image once it's been received.

[00:03:43] Speaker 00:
And so the board went on and looked at Takao's teaching and said, this is definitely within that field of endeavor.

[00:03:51] Speaker 00:
It looked at the background, it looked at the field of invention portion of the specification of Takao.

[00:04:01] Speaker 00:
And there it found that, in fact, Takao says that it's directed to thermal transfer imaging systems.

[00:04:07] Speaker 00:
They looked at the background art that's described in Takau.

[00:04:11] Speaker 00:
Again, found that it was directed to thermal transfer imaging systems.

[00:04:16] Speaker 00:
It looked at the body of Takao.

[00:04:20] Speaker 00:
And if you look at appendix 1687, at column seven, line 63, through column eight, line four, that portion of Takao talks about the actual transfer of an entire image from an image transfer sheet to an object.

[00:04:36] Speaker 00:
So it's definitely within the same field of endeavor.

[00:04:41] Speaker 00:
Lastly, the board found, based upon Dr. Scott's testimony,

[00:04:45] Speaker 00:
that these were very, very similar structures.

[00:04:47] Speaker 00:
And as we laid out in the brief, they line up next to each other.

[00:04:51] Speaker 00:
Ms.

[00:04:52] Speaker 00:
Schwendeman's structure is identical to Decau's structure when you look at them side by side.

[00:04:57] Speaker 00:
So the board had plenty of evidence, substantial evidence to find that they are in the same field of endeavor.

[00:05:04] Speaker 00:
If that wasn't enough, the board also found the second part of analogous art, which is that they were both directed to, they're both reasonably pertinent to the same problem.

[00:05:18] Speaker 04:
I'm sure you did.

[00:05:20] Speaker 04:
Okay, thank you.

[00:05:23] Speaker 00:
I will move past that because it really wasn't addressed.

[00:05:26] Speaker 00:
Let me talk about the motivation combined for a moment.

[00:05:33] Speaker 00:
The board

[00:05:35] Speaker 00:
clearly found that there was a motivation to combine the teachings of Takau with Akata.

[00:05:41] Speaker 00:
So if you remember, Akata teaches everything that's in these claims, with one exception.

[00:05:49] Speaker 00:
Akata has the white pigment in the outermost ink receptive layer, which is one of the embodiments of Schroendemann, but just not the claim embodiment.

[00:05:59] Speaker 00:
And Takau teaches that you can improve upon the

[00:06:04] Speaker 00:
the whiteness of the background of the image, if you move the white pigment from the outer layer, from the pink receptive layer, down to one of the middle layers, a separate layer below that.

[00:06:16] Speaker 00:
And the board properly found that Takao taught that.

[00:06:20] Speaker 00:
What we're relying upon Takao for is the motivation for a person of ordinary skill in the arts to move the white pigment in Akata's outer layer

[00:06:32] Speaker 00:
to a lower layer, to a separate layer.

[00:06:34] Speaker 00:
And the board properly found that Takau's teaching did that, right?

[00:06:39] Speaker 00:
Takau first talked about the Japanese patent application as the prior art, and said, look, this prior art reference has the white pigment in the outer layer, and it causes a problem because the image isn't as clear when you print on it.

[00:06:53] Speaker 00:
And so its solution was to move the TiO2, or the titanium oxide, from that outer interceptive layer to a lower layer, to a separate layer by itself.

[00:07:03] Speaker 00:
And that's laid out very explicitly in there.

[00:07:07] Speaker 00:
Dr. Scott's testimony supports the board's decision.

[00:07:11] Speaker 00:
Dr. Scott, this whole argument about water soluble polymers,

[00:07:15] Speaker 00:
That's an argument that came up late in the proceeding on a reply brief, but Dr. Scott addressed that too.

[00:07:21] Speaker 00:
Dr. Scott said, the teaching of Takao is to move the titanium oxide from the outer layer, the interceptive layer, to a separate lower layer.

[00:07:30] Speaker 00:
It has nothing to do with water-soluble polymers.

[00:07:38] Speaker 00:
And I will...

[00:07:40] Speaker 00:
Lastly, stand on the briefs with respect to the opaque layer because that wasn't addressed on opening argument.

[00:07:46] Speaker 00:
Thank you.

[00:07:59] Speaker 01:
Your honor, I'll be very, very brief.

[00:08:01] Speaker 01:
But just to be clear, and you're not going to find anything different in the record, Takao absolutely has nothing to do with transfer of images to any other surface.

[00:08:09] Speaker 01:
It's basically printing on a piece of paper.

[00:08:12] Speaker 01:
In terms of Akata and the white pigment, there is no teaching in Akata whatsoever of a white pigment acting as a surface to the extent that it is limited to printing on paper.

[00:08:22] Speaker 01:
I'm sorry?

[00:08:23] Speaker 03:
Is it limited to printing on paper?

[00:08:27] Speaker 02:
So when I say if one took Takata and printed it on a t-shirt, paper, would it be infringing?

[00:08:36] Speaker 01:
So Takata doesn't have, if you print it directly on a t-shirt, Takata only teaches... I just was testing your point that you said it's only printed on paper.

[00:08:45] Speaker 01:
Yeah, it's mainly paper or substrate-like paper, but it's not for transferring anywhere.

[00:08:49] Speaker 01:
Takata has, if you practice Takata as is, there'd be no way to infringe Jody's patents with it.

[00:08:56] Speaker 01:
because it's just printing on, it's just, when they say thermal transfer system or whatever, it's just the ink.

[00:09:03] Speaker 01:
It's a type of ink that's being transferred onto the piece of paper.

[00:09:05] Speaker 01:
There's no transfer of an image from there to any other surface.

[00:09:10] Speaker 01:
It's just literally printing.

[00:09:11] Speaker 01:
When I say paper, it's a broad category of a bunch of different papers, but it's basically printing on paper.

[00:09:16] Speaker 01:
is all Takau is.

[00:09:20] Speaker 01:
In terms of the white pigment in Akata, it's just for, the reason it's in that image receiving layer is to make, it's not as a, it doesn't disclose it as a background for the image, it's just to help make the, it's a decorative part of making the image.

[00:09:38] Speaker 01:
So and this is true like you can see in degrees you can see it a bunch of other patents so in the sometimes they just use pigment to They have a design and they want some additional pigment on there to make it sparkle but it's not to provide a base sheet no one teaches it as a

[00:09:57] Speaker 01:
Hey, here's a, I use the word canvas, but here's a canvas for your image to sit on.

[00:10:02] Speaker 01:
That is nothing like what any of them teach.

[00:10:04] Speaker 01:
When they say use some white pigment here or there, it's really to accentuate some image that they have on there and they want a little bit more white.

[00:10:14] Speaker 01:
And so a lot of times they're using pigment.

[00:10:17] Speaker 01:
It's just it's to provide a little bit of additional color But it's not ever in the context of kind of what you said back They did you know to have a white piece of canvas that you print on and none of these whether it's degrees It doesn't really matter when they're all talking about it, and it's true about Akata.

[00:10:34] Speaker 01:
It's true about a lot of these is all they're saying when they're saying pigment is hey I've got a I've got roses, or I've got lilies, and I need a little bit extra white and

[00:10:43] Speaker 01:
So throw some pigment on that.

[00:10:45] Speaker 01:
And so they just don't teach that background.

[00:10:49] Speaker 01:
And Takao, when they talk about a very specific solution, which is a water-soluble polymer with some brightening thing, it's not a background.

[00:10:57] Speaker 01:
It's not a layer.

[00:10:58] Speaker 01:
And in fact, you couldn't use it with t-shirts, because if it's water-soluble, it's going to wash out in the wash.

[00:11:04] Speaker 01:
And so for those reasons, there is just absolutely no substantial evidence for this combination.

[00:11:09] Speaker 04:
Thank you.