[00:00:00] Speaker 04:
The first case for today is Enrae Fisher versus Payco Healthcare Limited, appeal number 231558.

[00:00:11] Speaker 04:
Mr. Everton, please proceed when you're ready.

[00:00:15] Speaker 00:
Good morning.

[00:00:16] Speaker 00:
May it please the court?

[00:00:17] Speaker 00:
My name is Ben Everton, and I represent Fisher and Payco Healthcare.

[00:00:22] Speaker 00:
I'd like to reserve three minutes for rebuttal.

[00:00:26] Speaker 00:
This appeal involves a pioneering patent family from Fisher and Peichel with many embodiments for breathing circuits and these breathing circuits include breathable material that's implemented into the breathing tubes.

[00:00:47] Speaker 00:
Before these patents companies were not making breathing circuits formed of breathable materials.

[00:00:52] Speaker 00:
So here the examiner

[00:00:53] Speaker 00:
made rejections that are dealing with non-statutory double patenting rejections based on Fisher and Paykel's own patent claims.

[00:01:02] Speaker 04:
Can you speak up a little, please?

[00:01:04] Speaker 04:
Thank you.

[00:01:06] Speaker 00:
The claims at issue relate to an expiratory tube of a breathing circuit.

[00:01:13] Speaker 00:
So this is the tube that goes up.

[00:01:15] Speaker 04:
We are familiar with the claims.

[00:01:16] Speaker 04:
You can assume that we're familiar with the technology in the claims if you want to jump right into the merits of the case.

[00:01:23] Speaker 00:
Great.

[00:01:24] Speaker 00:
Thank you, Your Honor.

[00:01:26] Speaker 00:
And the board committed error for multiple reasons in these.

[00:01:31] Speaker 01:
What's the primary?

[00:01:32] Speaker 01:
What's your main argument on appeal, sir?

[00:01:37] Speaker 00:
So the board committed error by rejecting independent claim one based on double patenting when that claim

[00:01:48] Speaker 00:
when the prior claim, based only on the prior claim, which says at least a region.

[00:01:53] Speaker 01:
In the book, you talk about domination as a major argument.

[00:01:57] Speaker 01:
You talk about the need to modify claim form, reasonable expectation success, various points.

[00:02:03] Speaker 01:
Which point do you want to focus on?

[00:02:04] Speaker 00:
The point that I want to focus on is that the examiner provided no evidence or support for saying that it was obvious to modify at least a region to be

[00:02:16] Speaker 00:
forming the whole entire wall of the breathable material.

[00:02:19] Speaker 04:
It may view that instead, not necessarily as an obvious misargument, but when you say at least a region, that that means it could be as much as the entirety of the length, which then reads on the claim directly, and that which anticipates makes something obvious.

[00:02:38] Speaker 04:
Isn't that

[00:02:40] Speaker 04:
what the argument was or what the reasoning of the board was and what the reasoning of the examiner was?

[00:02:47] Speaker 00:
Yes, the board did reason that it was within the range, right?

[00:02:51] Speaker 00:
That there was a range from at least a region all the way up.

[00:02:55] Speaker 04:
Well, at least a region, yeah.

[00:02:57] Speaker 04:
I guess it could be a small portion all the way up to the entire amount if it's at least a region.

[00:03:03] Speaker 00:
Right.

[00:03:03] Speaker 00:
But the board acknowledges that that claim limitation must be modified

[00:03:09] Speaker 00:
It's not an anticipation.

[00:03:12] Speaker 01:
As explained on the board, and as explained by the patent office, the modification was to exclude any embodiment that wasn't entirely, leaving me entirely.

[00:03:22] Speaker 01:
So what's the harm in that?

[00:03:24] Speaker 01:
Well, that's the same.

[00:03:25] Speaker 01:
If I was looking at the reference and saying, when you have this, at least a region where there is entirely the region, and then almost entirely, and then they go all the way down.

[00:03:36] Speaker 01:
And so it wasn't amending it.

[00:03:39] Speaker 01:
throwing out the embodiments that were resonant, are we?

[00:03:43] Speaker 00:
That is correct.

[00:03:44] Speaker 00:
But that is still an obviousness argument.

[00:03:47] Speaker 01:
Why is that a prohibitive amendment in a non-statutory double patent in case?

[00:03:57] Speaker 00:
Well, the point is that that is still an obviousness modification.

[00:04:02] Speaker 00:
And our argument is that there was no support for even that modification of narrowing the claim.

[00:04:08] Speaker 00:
down to just being made entirely of the breathable material.

[00:04:13] Speaker 03:
I don't think you dealt with Judge Stowell's point that she made in terms of talking about the at least a lesion and then also the in relationship between what anticipates and what can be rendered obvious.

[00:04:27] Speaker 03:
Can you deal with that directly?

[00:04:30] Speaker 00:
Yes, and so that goes to the domination law and the cases that we've cited.

[00:04:34] Speaker 00:
So even if

[00:04:35] Speaker 00:
the prior claim dominates and includes within its range, or it's kind of like a genus in a species, right?

[00:04:44] Speaker 00:
If the previous claim is a genus, that includes the species.

[00:04:48] Speaker 00:
The case law is clear and the board doesn't dispute, but that's not anticipation.

[00:04:53] Speaker 03:
Didn't FPH forfeit its arguments regarding domination?

[00:04:58] Speaker 00:
No.

[00:04:58] Speaker 00:
Fisher and Paykel did not forfeit any of those arguments.

[00:05:03] Speaker 00:
Those arguments were made in response to

[00:05:05] Speaker 00:
arguments in the examiner's answer.

[00:05:08] Speaker 00:
When the examiner brought up this argument that it's a range and overlapping ranges, in response to that Fisher and Peichel then introduced the domination arguments.

[00:05:22] Speaker 01:
Isn't the fact that it's a range inherent in at least a region plain language?

[00:05:32] Speaker 01:
Why was the answer in the

[00:05:36] Speaker 01:
What the examiner said, why wasn't that simply just an explication of what everybody knew from the get-go?

[00:05:48] Speaker 01:
I mean, the minute you say at least a region, you're talking about a range.

[00:05:55] Speaker 00:
Right.

[00:05:56] Speaker 01:
But the examiner... Why wouldn't you have known from the get-go, from the examiner's first iteration that you had a

[00:06:05] Speaker 01:
a domination argument amount, if you wanted to.

[00:06:08] Speaker 00:
Right.

[00:06:09] Speaker 00:
Why not?

[00:06:13] Speaker 00:
From the get-go, Fisher and Peichel did make arguments, not using the word domination, but did make arguments that this was a range and that the examiner was incorrect.

[00:06:24] Speaker 01:
Right, but you didn't really complain to the examiner's first office action, hey, you can't do this, that's domination.

[00:06:32] Speaker 00:
Correct, did not use the words domination, but did.

[00:06:36] Speaker 01:
But that's the whole question as long as you felt that the argument might not have erased it in time.

[00:06:45] Speaker 00:
And so this is a, the domination argument is a continuation of arguments in the applicant's appeal brief.

[00:06:51] Speaker 00:
And we've cited to those, those are in the appendix at pages 773 through 778.

[00:06:59] Speaker 00:
and 776 specifically.

[00:07:01] Speaker 01:
I'll take a few time to decide.

[00:07:03] Speaker 01:
For me, one of the things you need to address is the extent to which the board discounted the testimony of the expert Mr. Eaton.

[00:07:10] Speaker 01:
It looked to me like the board pretty much discounted it entirely for a number of reasons.

[00:07:16] Speaker 01:
And if it's true that the board discounted Mr. Eaton's testimony, then your whole secondary consideration case drops, I think, because you don't have any evidence.

[00:07:27] Speaker 01:
I think you should address why Mr. Baird was incorrect in just carrying the testimony of your expert.

[00:07:36] Speaker 00:
Correct.

[00:07:36] Speaker 00:
And I can address that.

[00:07:38] Speaker 00:
So the board did disregard the testimony of Mr. Eaton.

[00:07:44] Speaker 00:
First, the board dismissed his evidence about high costs.

[00:07:47] Speaker 04:
Can I be clear?

[00:07:48] Speaker 04:
I just want to make sure.

[00:07:50] Speaker 04:
The board says we're not inclined to accord it much weight, right?

[00:07:54] Speaker 04:
Correct.

[00:07:55] Speaker 04:
It's a little different than disregard, right?

[00:07:57] Speaker 00:
So, yes, you're correct, Your Honor.

[00:07:59] Speaker 04:
Okay, I just want to make sure that I'm not missing something.

[00:08:02] Speaker 04:
Okay.

[00:08:03] Speaker 01:
How do you treat it?

[00:08:04] Speaker 01:
You just said disregarded.

[00:08:05] Speaker 01:
Do you treat it as having what has been disregarded?

[00:08:09] Speaker 00:
Yes, and our position has been disregarded because there was no evidence on the other side to support the obviousness modification.

[00:08:18] Speaker 04:
Why can't the Board look at it and say, we don't agree that a person of ordinary skill and the art under

[00:08:26] Speaker 04:
you know, the appropriate case law would have no experience whatsoever with materials.

[00:08:32] Speaker 04:
And then discount the expert's testimony for that reason.

[00:08:37] Speaker 04:
The board did do just that.

[00:08:39] Speaker 04:
I understand.

[00:08:40] Speaker 04:
I think it doesn't seem unreasonable at all to me.

[00:08:43] Speaker 04:
So I'm just trying to get your response.

[00:08:45] Speaker 04:
Because under our case law, a person of ordinary skill in the art should understand the technology that is within the scope of the claims and hear

[00:08:55] Speaker 04:
you know, experience with material seems pretty significant.

[00:09:00] Speaker 00:
Right.

[00:09:00] Speaker 00:
And here, the only evidence of what a person of ordinary skill in the art would know or not know coming from a person who has experience as a breathing circuit designer is from Mr. Eaton.

[00:09:13] Speaker 00:
Is from what?

[00:09:14] Speaker 00:
From Mr. Eaton, his decoration.

[00:09:16] Speaker 04:
Yeah, but Mr. Eaton narrowly defined the knowledge of a person of ordinary skill in the art

[00:09:22] Speaker 04:
to not include information about any materials.

[00:09:26] Speaker 04:
And now, for the secondary considerations, he's taken the position that a person from an area he's held near wouldn't know how to corrugate a particular material.

[00:09:35] Speaker 04:
Well, maybe that's so if a person doesn't have any experience with materials.

[00:09:39] Speaker 04:
But it's a difficult position to take and for the board to give credit to when the board says, we don't agree with this interpretation of who a POSA is.

[00:09:49] Speaker 00:
Now, Mr. Eden.

[00:09:51] Speaker 04:
I just want to hear your response to that.

[00:09:53] Speaker 04:
I'm just letting you know the difficulty I'm having with the position you're taking on appeal.

[00:10:01] Speaker 04:
And so I want to make sure I understand your answer to my question is, how could the board not give it a little weight, given the very narrow and incorrect statement of who a person of ordinary scale in the art is?

[00:10:15] Speaker 00:
Yes, and our position is that the only support and the only evidence for that level of ordinary skill in the art does come from Mr. Eaton.

[00:10:24] Speaker 03:
Are you making an argument that if there's only one side that provides evidence on a given point, that the board has to accept that evidence?

[00:10:38] Speaker 00:
No.

[00:10:39] Speaker 00:
The board does not have to accept that evidence.

[00:10:42] Speaker 00:
That is correct.

[00:10:43] Speaker 00:
But that is our argument, that there was no evidence provided by the examiner.

[00:10:48] Speaker 00:
There was no support for this modification, the agreed upon modification of the original claim to be entirely of the breathable material.

[00:10:57] Speaker 00:
And that the only evidence here is the expert report or the expert declaration of Mr. Eaton.

[00:11:04] Speaker 00:
And that he was the only one who provided evidence as to the level of ordinary skill in the art.

[00:11:10] Speaker 00:
And that such... What was his evidence?

[00:11:13] Speaker 00:
Him as a person, his experience as a person of ordinary skill in the art, as an expert in the field of developing... So his declaration as to who he thinks a person of ordinary skill in the art is, is his evidence.

[00:11:25] Speaker 00:
Yes.

[00:11:26] Speaker 04:
He doesn't cite to any additional testimony or evidence at all.

[00:11:29] Speaker 04:
It's just his... I understand I'm not trying to undermine.

[00:11:32] Speaker 04:
I just wanted to make sure there wasn't something else because you said he's the only one who cited to any evidence.

[00:11:38] Speaker 00:
That's correct.

[00:11:39] Speaker 00:
He does cite to references within his declaration.

[00:11:42] Speaker 00:
For who a person of ordinary's academy art is?

[00:11:45] Speaker 00:
Not necessarily for who the person of ordinary's school and the art is.

[00:11:48] Speaker 00:
But that's additional evidence that he did cite in his declaration.

[00:12:03] Speaker 00:
I see that I'm about into my rebuttal time, so I'll cede the rest of my time, unless there's any further questions from the

[00:12:11] Speaker 04:
Now let's hear from the government.

[00:12:13] Speaker 04:
Thank you.

[00:12:16] Speaker 04:
Ms.

[00:12:17] Speaker 04:
Kweller, when you're ready.

[00:12:29] Speaker 02:
Your Honors, and may it please the Court.

[00:12:31] Speaker 02:
The Board correctly determined that the tubes of breathable material recited in the pending claims are obvious variants of the already patented

[00:12:40] Speaker 02:
tubes of breathable material patented in the Smith patents.

[00:12:45] Speaker 02:
Substantial evidence supports the board's determination that there was a motivation to make a tube of entirely breathable material, there was motivation to corrugate that tube, and there was a reasonable expectation of doing both.

[00:12:58] Speaker 02:
In response to some of the questions that were raised in the opening, with respect to the argument that there's no evidence, that is incorrect.

[00:13:05] Speaker 02:
As the board stated, you start with the scope

[00:13:08] Speaker 02:
of claim four of Smith 366.

[00:13:11] Speaker 02:
That is undisputedly a range that includes the entire wall of readable material.

[00:13:17] Speaker 02:
So they've already told you that that's in the scope and that it will work.

[00:13:21] Speaker 02:
Now as far as the motivation, it seems like FPH is looking for a teaching or a suggestion or a motivation from some other reference.

[00:13:30] Speaker 02:
That's simply not required by KSR.

[00:13:33] Speaker 02:
And we also have the scope of claim four, which your honors have recognized

[00:13:38] Speaker 02:
gives you the idea that it is already obvious to choose the upper end of that scope.

[00:13:43] Speaker 02:
That's established by the Peterson case where the existence of the range itself, one of ordinary skill in the art, would have been motivated to optimize and look within those to see what was the most workable.

[00:13:57] Speaker 04:
There's no requirement for an extra... There's no requirement for everybody who would have, person with an A.C.

[00:14:02] Speaker 04:
on the art would have known that it would be most desirable to have it be at the very end of the range.

[00:14:09] Speaker 02:
So the presumption of obviousness case law says once you have a range in the prior art, the burden shifts to the applicant to say, my range that I'm asking for, the upper end, is critical.

[00:14:22] Speaker 02:
It provides unexpected results to rebut that presumption of obviousness.

[00:14:26] Speaker 02:
So we have the presumption of obviousness here, and it was not rebutted.

[00:14:30] Speaker 02:
In addition, the examiner and the board did set forth why you would look for that upper range.

[00:14:35] Speaker 02:
They said an entire wall of breathable material would provide the most permeability to water vapor, which was one of the goals of the invention.

[00:14:44] Speaker 02:
With respect to not rebutting it, the declaration by Mr. Eaton was correctly found not credible by the board

[00:14:52] Speaker 02:
They go at length to discuss the number of reasons why it's not credible.

[00:14:57] Speaker 01:
You mean that it wasn't completely discredited, you know, 90% or 80%?

[00:15:03] Speaker 01:
I would not say that.

[00:15:05] Speaker 01:
In other words, the presiding judge pointed to suggest that the board did not completely reject it.

[00:15:13] Speaker 02:
Your Honor is correct.

[00:15:14] Speaker 02:
They did not completely reject it.

[00:15:16] Speaker 01:
How are we supposed to decide how much of Eaton survived and how much didn't?

[00:15:21] Speaker 02:
Well, I think the board looked at it correctly because they said, even if he is wrong and we don't believe it's credible, we're still giving weight to his argument that this material would be too thin to be self-supporting.

[00:15:33] Speaker 02:
And that's Appendix 15 through 16.

[00:15:36] Speaker 02:
So they assumed it was weak, despite all the problems with Mr. Eaton's declaration.

[00:15:40] Speaker 02:
but they found that one of ordinary skill in the art would still corrugate it.

[00:15:44] Speaker 02:
And so the board's decision that one, it was not credible, but still providing the fact that giving it weight, they still proved obviousness, is defensible on both ends.

[00:15:54] Speaker 02:
And the lack of abuse of discretion here.

[00:15:57] Speaker 01:
Giving it full weight or giving it partial weight?

[00:15:59] Speaker 01:
They gave it partial weight.

[00:16:01] Speaker 01:
I don't know.

[00:16:03] Speaker 01:
But I'm trying to get at what happens when

[00:16:06] Speaker 01:
You have an expert family agency says, well, we don't believe everything he says.

[00:16:11] Speaker 01:
But then they don't tell you what it is they do believe or don't believe.

[00:16:15] Speaker 01:
How am I supposed to review their decision?

[00:16:18] Speaker 02:
So Your Honor, I do believe they told you exactly what they're assuming is correct.

[00:16:22] Speaker 02:
And that's at appendix 15 to 16.

[00:16:24] Speaker 02:
They said, we're going to assume that what he said regarding it being too weak, the believable material,

[00:16:32] Speaker 02:
being too weak to be self-supporting.

[00:16:34] Speaker 02:
We're going to assume that that is correct.

[00:16:36] Speaker 02:
So that is the part that they told you exactly where they're giving weight to it.

[00:16:41] Speaker 02:
The rest of it, with respect to the reasonable expectation of success, they were very clear that they were not giving him weight, that one of ordinary skill would not have an expectation of success in order to make it, to make an entire wall of reasonable material.

[00:16:57] Speaker 01:
And that comes down to... It doesn't part of that rationale come from me.

[00:17:02] Speaker 01:
board's use of enablement?

[00:17:05] Speaker 02:
I would disagree with the characterization of the board's use of enablement.

[00:17:09] Speaker 01:
Am I right that part of that whole argument about what you would reasonably expect comes from the fact that there was a prior patent and the prior patent was understood to reach the entire region and there was purportedly no enablement problem with the prior patent because it survived.

[00:17:28] Speaker 01:
I can understand that argument, but it struck me that the board actually had sort of in the back of its mind that there had been an enablement rejection here at one point.

[00:17:38] Speaker 01:
They say we don't think that there was a need to reject this claim on enablement.

[00:17:43] Speaker 01:
So I didn't quite understand why the board was

[00:17:47] Speaker 01:
going as far into the neighborhood as apparently it did.

[00:17:51] Speaker 02:
So the board was responding to Mr. Eaton's statement that one would have no ability to make this absent the teachings of the specification.

[00:18:00] Speaker 02:
So they said, OK, there were so many significant obstacles that one of ordinary skill in the art had to overcome.

[00:18:07] Speaker 02:
absent the teachings of the specification, let's look to the specification.

[00:18:11] Speaker 02:
Where does it tell you how to overcome these obstacles?

[00:18:14] Speaker 02:
The examiner said that.

[00:18:15] Speaker 02:
The board said that.

[00:18:17] Speaker 02:
Mr. Eaton never told us where in his specification

[00:18:21] Speaker 02:
FPH never told us where in the specification.

[00:18:24] Speaker 02:
The opening brief to this court never told us.

[00:18:27] Speaker 02:
So the word properly said, if it's not in the specification, it must be within the ordinary artisan's skill.

[00:18:34] Speaker 02:
And that's why there was no enablement rejection before, because they presume that the specification did not have enablement rejection.

[00:18:41] Speaker 02:
The prior patent did not have an enablement rejection, meaning

[00:18:45] Speaker 02:
This must be within the ordinary skills artisan, meaning there's no lack of reasonable expectation of success for this application and these claims in finding that you would be able to make an entire law.

[00:18:58] Speaker 01:
The purpose of that assumption is what leads to enablement cases in the district courts, right?

[00:19:05] Speaker 01:
That assumption is flimsy, if you will, correct?

[00:19:10] Speaker 01:
The board's assumption?

[00:19:11] Speaker 01:
I mean, the assumption that there's no inevitable problem unless you've set in your specification, oh, my god, there are real problems here in doing this, and here's how you do it.

[00:19:20] Speaker 01:
I don't think we do.

[00:19:21] Speaker 01:
If there's no evidence at the PTO, if nothing is set in the spec about how you make and use, then that means there's no inevitable problem.

[00:19:31] Speaker 02:
I would say the premise of that is that FPH is the one that's arguing it's so difficult.

[00:19:41] Speaker 02:
So we don't get to this part.

[00:19:42] Speaker 02:
The examiner said there is enablement.

[00:19:45] Speaker 02:
We think it would be within the ordinary skill of the artisan.

[00:19:49] Speaker 02:
FPH is the one saying, no, no, no.

[00:19:51] Speaker 02:
There's significant obstacles.

[00:19:52] Speaker 02:
No one would be able to figure this out.

[00:19:54] Speaker 02:
So it's kind of the rabbit hole that they themselves brought themselves into.

[00:19:58] Speaker 02:
I disagree that it's kind of us, one or the other.

[00:20:01] Speaker 03:
What is your response to opposing counsel's domination arguments, whether you're responding on forfeiture or on the merits?

[00:20:08] Speaker 02:
So with respect to both, I believe they're incorrect.

[00:20:11] Speaker 02:
On the merits, domination is a very basic principle that you cannot rely on the fact of a genus alone.

[00:20:20] Speaker 02:
You can't say, for example, the Kaplan case said organic solvents.

[00:20:24] Speaker 02:
You can't say that covers every organic solvent, boom, done, obvious type double patting.

[00:20:30] Speaker 02:
You need some articulated reasoning.

[00:20:32] Speaker 02:
You need to step forth an anticipation argument, an obviousness argument.

[00:20:37] Speaker 02:
That's what we have here.

[00:20:38] Speaker 02:
The board did not say tube of scope of claim four, done, moving on.

[00:20:44] Speaker 02:
They said they looked at the claim construction.

[00:20:47] Speaker 02:
They said this is the range it teaches.

[00:20:48] Speaker 02:
They also had a motivation.

[00:20:50] Speaker 02:
So it was a proper, obvious analysis with itself dispenses with the domination argument.

[00:20:56] Speaker 02:
On the forefoot trip front, I would say there was no different argument

[00:21:00] Speaker 02:
in the examiner's answer.

[00:21:02] Speaker 01:
If the water was all genus claims would fail for domination.

[00:21:07] Speaker 02:
Correct, Your Honor.

[00:21:07] Speaker 02:
For example, if they had said all tubes mean corrugated tubes, and it's obvious to type double patenting, that would have been incorrect.

[00:21:15] Speaker 02:
Here, they set forth why it would have been obvious to corrugate.

[00:21:18] Speaker 02:
So you can't rely on the fact alone, but that doesn't mean a genus can't anticipate.

[00:21:23] Speaker 02:
In the AbbVie case, we had a genus

[00:21:26] Speaker 02:
And they said, this is not improper domination because we're saying why the genus anticipates.

[00:21:31] Speaker 02:
So it's just the requirement you need some analysis.

[00:21:34] Speaker 02:
And they did, I believe, forfeit it.

[00:21:36] Speaker 02:
There was nothing new in the examiner's answer.

[00:21:39] Speaker 01:
And as the board itself said... Well, it was the first time the examiner, you know, made it talk about the range.

[00:21:46] Speaker 01:
When the examiner in its various office actions before the litigation proceeded, only referred to at least a region.

[00:21:56] Speaker 01:
and didn't call out that whenever you saw him in at least a region, you're talking about a genus.

[00:22:02] Speaker 02:
And if you're honest, do you believe that that is the proper way to read the examiner's previous rejections?

[00:22:07] Speaker 02:
We think we survive on the merits of the lack of domination alone.

[00:22:11] Speaker 02:
I disagree.

[00:22:13] Speaker 01:
The previous rejection has to have relied on at least a region teaching you the full length.

[00:22:19] Speaker 01:
Because otherwise, the examiner wouldn't have allowed you to stand on it, right?

[00:22:23] Speaker 02:
Correct, Your Honor.

[00:22:23] Speaker 02:
So I think the examiner set it forth

[00:22:26] Speaker 02:
He said nothing different in his examiner's answer here.

[00:22:29] Speaker 01:
Do you ever believe that the first time a range is mentioned is in response to the examiner?

[00:22:36] Speaker 02:
I think the first time the word range is used, in my understanding, is after the examiner's answer.

[00:22:43] Speaker 02:
But the word range itself is not the domination argument.

[00:22:48] Speaker 01:
The word range, that's what triggers the domination argument?

[00:22:51] Speaker 02:
I think the word at least a region

[00:22:53] Speaker 01:
That was my point.

[00:22:56] Speaker 01:
Why isn't the range necessarily come up when you say at least a region, but you didn't make that argument in your brief.

[00:23:06] Speaker 02:
We did not, because we do believe that the merits argument is the stronger argument in response to domination.

[00:23:12] Speaker 02:
There is a lot that could be read into back and forth.

[00:23:16] Speaker 02:
And so it was a decision not to overly rely on forfeiture before this court when we felt the answer was.

[00:23:21] Speaker 01:
Well, you relied on it, but it was a lead argument on the question.

[00:23:26] Speaker 01:
I apologize if did not.

[00:23:28] Speaker 01:
You read the merits and say, oh, well, if you disagree with me on the merits, we have a secondary forfeiture argument.

[00:23:36] Speaker 02:
I apologize if that's the implication that we gave this court, that it was a hierarchy.

[00:23:40] Speaker 01:
Well, you set it up in your brief.

[00:23:41] Speaker 01:
I mean, we understand basically when people have a lead argument in the brief, that's their strongest argument on the point, and the secondary argument is secondary.

[00:23:53] Speaker 02:
Your Honor, I apologize if that implied anything.

[00:23:55] Speaker 01:
Yeah, I was taught to write briefs.

[00:23:57] Speaker 01:
I don't know how they teach people at the Patent Office.

[00:23:59] Speaker 02:
To me, it was the fact, as the author of the brief, that it didn't make sense to discuss forfeiture after the merits, since you would not need to get to the merits if there was forfeiture.

[00:24:08] Speaker 02:
And that was my decision in writing the brief.

[00:24:10] Speaker 02:
But I will take that under advisement in future brief writing, Your Honor.

[00:24:14] Speaker 02:
Thank you.

[00:24:16] Speaker 02:
As far as my last point with respect to the person of ordinary skill in the art, there was a lot of discussion about the evidence of person of ordinary skill in the art.

[00:24:27] Speaker 02:
We have Mr. Eaton's testimony, but we also have the evidence of the specification itself and the claims of the specification, which are directly the field of technology is breathable materials.

[00:24:38] Speaker 02:
And so that is counter-evidence that the knowledge of the person of ordinary skill in the art would include knowledge of breathable materials at a minimum.

[00:24:48] Speaker 01:
What about the manner of the application?

[00:24:49] Speaker 01:
Combos for moving surfaces?

[00:24:52] Speaker 02:
Correct, Your Honor.

[00:24:53] Speaker 02:
A component of the breathing circuit is the breathing material.

[00:24:56] Speaker 04:
So our case law says when the fact finder is trying to determine who a person of ordinary skill in the art is, that they should do things like look to the specification, look to the title, look to the abstract, look to the claims themselves to make that determination right.

[00:25:12] Speaker 04:
Correct, Your Honor.

[00:25:13] Speaker 04:
I'm just confirming that that is the evidence.

[00:25:15] Speaker 02:
Yes, that is the evidence.

[00:25:16] Speaker 02:
In addition to Mr. Eaton's own testimony, which

[00:25:19] Speaker 02:
does spend a considerable amount of time talking about the properties of breathable materials.

[00:25:23] Speaker 02:
So I think that also indicates that is the main field of technology in this case.

[00:25:28] Speaker 03:
Opposing counsel seemed to imply that you almost be an expert on the other side speaking to these issues.

[00:25:35] Speaker 03:
Do you want to respond in a way to that argument that I thought I heard opposing counsel?

[00:25:42] Speaker 02:
With respect to the need for an expert, we do have the examiner, which has expertise in this field.

[00:25:47] Speaker 02:
But I don't think we need to reach that here, because we do have evidence itself, which is not cited by Mr. Eaton.

[00:25:53] Speaker 02:
We have the teachings of the specifications.

[00:25:55] Speaker 02:
So I don't know if it's a comparison of expert to expert, but certainly underlying support of FPH's expert versus the support of patents and the specification itself.

[00:26:06] Speaker 02:
So I think that's the proper lens at which to look through the person of ordinary skill in the art.

[00:26:12] Speaker 02:
Unless Your Honors have any other questions, we ask the court to affirm the board's rejection of the claims as obvious type double patting.

[00:26:19] Speaker 02:
Okay, thank you, Counselor.

[00:26:22] Speaker 04:
Mr. Everton, you have a little over three minutes.

[00:26:28] Speaker 00:
Thank you, Your Honor.

[00:26:30] Speaker 00:
So first, on the issue of the timeliness of the domination arguments, just wanted to revisit that.

[00:26:39] Speaker 00:
So the domination arguments were a continuation of the arguments in Applicants Appeal Brief.

[00:26:48] Speaker 00:
I just wanted to go back and look at what exactly did the examiner say in his rejection.

[00:26:55] Speaker 00:
And so this is in Appendix 610.

[00:27:00] Speaker 00:
He said,

[00:27:03] Speaker 00:
that it would have been obvious to modify the modified patent claim force tube wall to be formed entirely of this permeable material in order to allow for the passage of water vapor out of the tube along any point of the tube's length.

[00:27:18] Speaker 00:
So the modification there that he's proposing is to modify the tube so that it would be formed entirely of a permeable material.

[00:27:29] Speaker 00:
So that rejection did not have anything about ranges, and the ranges hadn't come in yet until in the examiner's answer he brought up the ranges, and that's at Appendix 860 through 861.

[00:27:48] Speaker 00:
And then applicants' arguments about domination were in response to the examiner's answer and the new arguments about ranges in his answer.

[00:28:00] Speaker 00:
Now, I also want to revisit Mr. Eden's declaration.

[00:28:04] Speaker 00:
We talked about the level of ordinary skill and the attacks on his declaration.

[00:28:09] Speaker 00:
But in his declaration, and this is at Appendix 543 through 560, if we go specifically to Appendix 552.

[00:28:22] Speaker 00:
552?

[00:28:23] Speaker 00:
Yeah, 552.

[00:28:36] Speaker 00:
We see that Mr. Eaton cited two contemporaneous evidence supporting his opinion.

[00:28:42] Speaker 04:
This is paragraph 33.

[00:28:44] Speaker 00:
Yes, paragraph 33.

[00:28:45] Speaker 00:
You'll see there the permapure patent that discusses napheon.

[00:28:49] Speaker 00:
And there's an excerpt there that a person of skill would have known that the walls would be too thin if you use this thin permeable material.

[00:29:00] Speaker 00:
But then you'd have to make those walls much thicker in order to support themselves and to support a tube.

[00:29:05] Speaker 00:
And by doing so,

[00:29:06] Speaker 00:
You would defeat the purpose of the material because it would no longer be permeable enough, no longer be breathable.

[00:29:18] Speaker 00:
Then he also cites in paragraph 34, the painter reference, which discusses these extremely thin and weak film materials.

[00:29:28] Speaker 00:
So regardless of the level of ordinary skill in the art and whether or not Mr. Eaton was incorrect in that, there is independent evidence provided by these references.

[00:29:40] Speaker 00:
about what a person of skill in the art would know at that time.

[00:29:44] Speaker 04:
He also says there's no expectation of success absent the teaching of the specification.

[00:29:50] Speaker 04:
What is he referring to by the teaching of the specification?

[00:29:54] Speaker 04:
Is it just that they did it and then they were successful?

[00:30:00] Speaker 04:
What do you think he's referring to by that testimony?

[00:30:04] Speaker 00:
So there are examples provided of breathable material in these tubes within the specification and we've provided those.

[00:30:12] Speaker 00:
Example embodiments are Appendix 49 where the entirety of the tube is made of this breathable material.

[00:30:21] Speaker 00:
And it did.

[00:30:22] Speaker 00:
It did.

[00:30:22] Speaker 00:
The patent showed that it could be done.

[00:30:24] Speaker 00:
The patent provided examples and told the person of skill in the art that it is possible to make the entire tube wall of a breathable material.

[00:30:32] Speaker 04:
OK.

[00:30:32] Speaker 04:
Thank you, Mr. Everton.

[00:30:36] Speaker 04:
This will be submitted.

[00:30:40] Speaker 04:
Thank you for your argument today.

[00:30:41] Speaker 04:
Thank you, Your Honor.