[00:00:00] Speaker 01:
All right, off to work.

[00:00:01] Speaker 01:
The first case for argument is 22-2251 in Ray Richmond.

[00:00:07] Speaker 01:
Mr. Shields?

[00:00:08] Speaker 02:
Yes, thank you, Your Honor.

[00:00:10] Speaker 01:
Please proceed.

[00:00:26] Speaker 02:
Thank you, Your Honor.

[00:00:28] Speaker 02:
If I may, one housekeeping matter.

[00:00:32] Speaker 02:
There's a typo in the brief on page 14, line 16, for which I apologize.

[00:00:40] Speaker 02:
The date says 2002, which doesn't make sense.

[00:00:44] Speaker 02:
It should be 2020, which was the date of our expert Ducharme's declaration.

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And I'd like to bring to the Court's attention that

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The patent expired on February 26, 2024, to the extent that that makes a difference in the claim construction standard that would be applied by this court.

[00:01:12] Speaker 02:
It took 10 years in the patent office.

[00:01:15] Speaker 02:
How does that affect you going forward?

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My position is that the patent is patentable either way, under either standard, and we are, in my argument, I'm applying the

[00:01:29] Speaker 02:
broadest reasonable construction standard that was applied by the board.

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But I did want to bring that to the attention of the court in case that makes any difference.

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Because we have some case law that once it's expired, we go back to normal construction.

[00:01:44] Speaker 02:
It does, but I don't know whether it changes what was already done before.

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MPEP 2258 talks about the different standard, whether it's expired or not expired, applied by the Patent Office.

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Is there any pending litigation with regard to this?

[00:02:01] Speaker 02:
Yes, there is, Your Honor.

[00:02:04] Speaker 02:
But that will, of course, now that it's expired, it will only be for past infringement.

[00:02:10] Speaker 01:
All right.

[00:02:10] Speaker 01:
Please proceed with the arguments.

[00:02:11] Speaker 02:
Your Honor, I'll get right on to the reasonable probability of success issue.

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There's no dispute between the parties, between the director and the

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Patent Owner, Mr. Richmond, who I'm proud to represent here.

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And I thank the court for listening to me.

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And it's been a long time in the Patent Office.

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There's no dispute that the burden of proving that, both at the preliminary prima facie stage and ultimately falls on the Patent Office.

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Ultimately, that is the Patent Office's burden to prove is, of course, not a certainty of success.

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But the burden falls on the patent office.

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Now, in response to the assertion in the examiner's first official action of an asserted prima facie case and asserted reasonable likelihood of success, Richmond responded with two declarations.

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One was the declaration of its

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technical expert, that would be Dr. Dacharm, and also Dr. Joeria, who is a heat transfer expert.

[00:03:30] Speaker 02:
Can I just interrupt?

[00:03:32] Speaker 03:
So one of your points, and I think maybe you're moving beyond this, although you referred to the burden, which is clear, that there's something missing from the board's own opinion, namely a statement of the affirmative

[00:03:51] Speaker 03:
basis for thinking that there would be a reasonable expectation.

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That's just not in the board opinion.

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But it is in the examiner's, I guess it's actually called the non-final action, even though it's the last action.

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And then also again in the examiner's answer,

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And isn't it right what the government says that the regulation fills that gap because the regulation says that when the board

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affirms a particular ground.

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It's affirming the full reasoning of the examiner of putting aside what is, I think, a separate question, whether the same incorporation might not be true for a specific argument made on appeal from the examiner to the board.

[00:04:49] Speaker 02:
Your Honor, I think that that

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statement would apply perhaps to the examiner's holding regarding clewage that the examiner's position was that... The examiner said, I do have an affirmative reason for thinking that Skilled Medicine would reasonably expect success.

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These are just parts that are everywhere, but you're just putting them together.

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Skilled Medicine would expect them to work.

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And then you said, oh, no, no, no, no, no.

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The thing would basically overheat.

[00:05:23] Speaker 02:
Yes, Your Honor, and I believe we presented, I know we presented, expert testimony by Dr. Geluria that at the heat dissipation shown by the data sheets of the preferred embodiment and the other embodiments that were specifically referenced and incorporated by reference from a predecessor, Patty Mueller, my expert evaluated all of those and the least

[00:05:54] Speaker 02:
heat consuming of those was the one that he used.

[00:06:01] Speaker 03:
So the least power consuming.

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And that, I think, is where the hard thing comes down to.

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I'm prepared, at least, until I'm told otherwise, to agree with you that the board and the examiner were both

[00:06:21] Speaker 03:
Incorrect in saying that there was a conflict between the six degrees and the one hit one of your experts Because when you know if current was running and one current was not running so put that aside The 16 to the 29 is what matters and

[00:06:40] Speaker 03:
surely the board had substantial evidence to say that the relevant dusk temperature is more like 25 degrees Celsius than like 35 degrees Celsius.

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Except that for me, there's lots of evidence for that, you know, a substantial evidence standard.

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At least I don't see how that could be lacking in substantial evidence.

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But then the board never

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Well, the bourbon examiner each say on the 16th of the 29, if you start at 25, obviously, you'd be over 40.

[00:07:15] Speaker 03:
But the problem is that when you said,

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least heat-generating combination of processor and controller for Pete, is Pete Grass the right pronunciation?

[00:07:30] Speaker 03:
Yes, I believe it is.

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Is this particular combination, they said, you know, we don't actually see the evidence for the assertion that that is the least heat generating.

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And without that,

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You know, they don't have to accept that 25 plus 16 is the right addition.

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Your Honor, I'll do my best to try to answer your question.

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It is the least power consuming of all the processors and electronic devices and controllers that were identified in such a way that you could determine what their power was likely to be.

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That was one of two particular microchip processors, the preferred one of Peepgrass.

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I believe it was the microchip 12C672 processor.

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And then there was another one that was referred to in a predecessor patent that was incorporated by reference.

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And there was also a controller.

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These had data sheets.

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You could look them up.

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You could figure out what they were.

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And that's what Ducharme used.

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So of those that could be figured out, that could be analyzed... Even assuming that that is correct, why is that the relevant question?

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Isn't the relevant question what a relevant skilled artisan looking at peatgrass would reasonably expect?

[00:09:01] Speaker 03:
That's the question reasonably expect in a prior art reference that clearly covers all kinds of possibilities of processors and controllers.

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And that expectation doesn't have to be based on independent evidence to the reasonable skilled artisan that examines the heat generating activity of all kinds of different possibilities.

[00:09:31] Speaker 02:
Your Honor, I see what Your Honor's point is, but there's one very important thing.

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There was no dispute that there would be failure at 1.471.

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There was no challenge to the methodology of Dr. Jaluriya during prosecution.

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The issue was the examiner said, well, you haven't excluded all of possibilities.

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What about all these options?

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And basically, of all those, that list of options, which is basically just a list of resistors and capacitors, and you could use any electronic component to put this together, what's missing from all of that is which one of those combinations would be less than 1.47 watts?

[00:10:16] Speaker 02:
The undisputed testimony shows that there would be failure if it's 1.47 watts.

[00:10:21] Speaker 02:
It doesn't matter what components you put together.

[00:10:24] Speaker 02:
if it's not 1.47 watts, which is undisputed testimony under oath, and really has to be accepted as fact.

[00:10:35] Speaker 02:
So the patent office hasn't addressed that at all.

[00:10:37] Speaker 02:
They haven't said this combination would be reasonably likely to be less than 1.47 watts.

[00:10:46] Speaker 02:
What they said, on the other hand, the opposite of that, they said,

[00:10:50] Speaker 02:
Richmond, you haven't proven that every one of those options would use 1.47 watts.

[00:10:56] Speaker 02:
And I agree, we didn't prove that.

[00:11:00] Speaker 01:
I thought they rejected the underlying assumption that the 1.47

[00:11:08] Speaker 01:
W requirement was reliable and not faulty.

[00:11:17] Speaker 02:
Yes, Your Honor.

[00:11:18] Speaker 02:
I believe the director argues that.

[00:11:21] Speaker 02:
But in fact, during prosecution, there was no challenge to that whatsoever.

[00:11:26] Speaker 02:
I'm sorry.

[00:11:30] Speaker 03:
What does it mean for the director to argue that, but there being no challenge?

[00:11:35] Speaker 03:
It does sound like opposite things.

[00:11:38] Speaker 02:
What I mean, Your Honor, is that in the evidence, the evidence established that there would be failure at 1.47 watts.

[00:11:45] Speaker 02:
So the question then is, of those other options that we did not prove any particular heat

[00:11:55] Speaker 02:
generation four.

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They do have heat generation.

[00:11:59] Speaker 02:
So the question then is, is it more likely than not that one of those options was less than 1.47 watts, in which case there would not be failure.

[00:12:10] Speaker 02:
But the patent office has not pointed the direct, the examiner did not, the board did not, and the director has not pointed to anything

[00:12:20] Speaker 02:
that provides a substantial evidentiary basis to conclude that, yes, one of those other options would be likely to use less than 1.47 watts.

[00:12:34] Speaker 02:
None.

[00:12:36] Speaker 02:
There's a little bit of a hurdle here for them to prove that, because at the time, Color Kinetics, the assignee of Peepgrass, was no dispute on this.

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It was at the forefront of this technology.

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And so what the patent office's position is, is well, here's a bag of parts that is referred to in Peepgrass, and you haven't proven that it's 1.47 watts,

[00:13:02] Speaker 02:
And 1.47 watts, that's the number.

[00:13:04] Speaker 02:
The number is, more than that is failure, less than that, I don't know.

[00:13:09] Speaker 02:
But I don't assert that less than that is essentially 100% failure.

[00:13:16] Speaker 02:
But at 1.47 watts or more, there's failure.

[00:13:21] Speaker 02:
Which one of those, which one of those combinations, and there are really millions of them because it's essentially a bag of parts, which one of those is 1.47 watts?

[00:13:29] Speaker 02:
This has been in the patent office for 10 years.

[00:13:34] Speaker 01:
So just so I can understand it, maybe I'm just behind.

[00:13:38] Speaker 01:
Your position is they disagree with your expert because they said, well, there are lots of other things.

[00:13:44] Speaker 01:
There are different options for processors, for the circuit.

[00:13:48] Speaker 01:
But you're saying that's not sufficient to establish reasonable expectation of success because they didn't test those other options.

[00:13:58] Speaker 01:
No?

[00:13:58] Speaker 02:
Well, not exactly.

[00:14:03] Speaker 02:
My position is that

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If the processor, however configured, uses 1.47 watts or more, it will fail.

[00:14:14] Speaker 03:
That's what we proved.

[00:14:20] Speaker 03:
the 1.47 watts translates essentially by mathematics into the 16 to the 29 degrees.

[00:14:26] Speaker 02:
Yes, exactly, Your Honor, through the analysis.

[00:14:31] Speaker 02:
But that was not disputed.

[00:14:33] Speaker 02:
What was disputed is, well, that it has to be that number.

[00:14:38] Speaker 02:
And, Your Honor, I don't know

[00:14:40] Speaker 02:
The patent office could have cited other references, other than Peepgrass that had processors, that they could have said, look at this, you could use this processor and it's 1.47 watts, it's less than that.

[00:14:55] Speaker 02:
But they didn't do that.

[00:14:57] Speaker 02:
They relied exclusively on the listing of just sort of, you could use any kind of these parts to put together to make a processor.

[00:15:07] Speaker 02:
and that you haven't proven that it's more than 1.47 watts.

[00:15:13] Speaker 02:
And of course I can't because it's just a bag of parts with no identification of how they're made.

[00:15:21] Speaker 02:
So what I can only go with is what does the patent office point to in terms of actual prior art?

[00:15:31] Speaker 02:
Here's a processor that I can evaluate from some reference

[00:15:35] Speaker 02:
that doesn't teach away from the invention, like clewineage, saying it would be boring to use a cycle, or some other reference, which one of those is, prove me, prove it to me, find me a processor that uses less than that, point to it.

[00:15:52] Speaker 02:
They've had 10 years to do that, and they don't.

[00:15:57] Speaker 02:
There's nothing that's only a bag of parts and there is no evidence that the patent office points to that can lead to a substantial evidence that could cause somebody to say, yes, it would be likely that one of those options would be less than 1.47 watts.

[00:16:18] Speaker 02:
There's simply no evidence of that.

[00:16:21] Speaker 02:
Your Honor, I'm going to reserve the rest of my time.

[00:16:24] Speaker 01:
Or am I out complete?

[00:16:26] Speaker 01:
That's OK.

[00:16:26] Speaker 01:
We'll restore some time.

[00:16:27] Speaker 01:
All right.

[00:16:29] Speaker 02:
Do I have any rebuttal time, or is that it?

[00:16:31] Speaker 01:
You've used it, but we'll restore a couple minutes.

[00:16:33] Speaker 01:
Thank you.

[00:16:34] Speaker 00:
Good morning, Your Honors, and may it please the Court.

[00:16:50] Speaker 00:
The issue on appeal is the obviousness of claims to an LED lamp with continuous color-changing cycle powered by solar energy and a rechargeable battery.

[00:17:01] Speaker 00:
There is no dispute that every element in the representative claim 13 was taught in the prior art.

[00:17:07] Speaker 00:
Peepgrass

[00:17:08] Speaker 00:
is almost an anticipatory reference.

[00:17:12] Speaker 00:
It teaches every element of the claim, including and even suggests why we- Just because we don't want you to run out of time, too.

[00:17:19] Speaker 01:
Why don't you begin where your friend left off and discuss with us whether there was sufficient evidentiary if the burdens were satisfied with respect to the 1.47?

[00:17:31] Speaker 00:
So what the board did was the board didn't shift the burdens.

[00:17:38] Speaker 01:
No, but we came up with tests saying that various examples of this don't meet the test of under 1.47, right?

[00:17:51] Speaker 01:
Right.

[00:17:52] Speaker 01:
And it seems to me the board or the examiners answer to that was, well, there are lots of other things you can do, lots of other ways to do this, a million other ways to do this in pea grass.

[00:18:07] Speaker 01:
his evidence isn't probative of anything.

[00:18:10] Speaker 01:
Am I correctly asserting?

[00:18:12] Speaker 01:
I mean, did the board come up with anything else to show that there was a reasonable expectation of success?

[00:18:18] Speaker 00:
I would put it this way, Your Honor.

[00:18:19] Speaker 00:
The examiner showed a very strong motivation to combine.

[00:18:23] Speaker 00:
And what the examiner found with Dr. Jaluria's testing was that Peepgrass's disclosure of teachings of processors was very broad.

[00:18:37] Speaker 00:
And so what the examiner and the board found that the evidence didn't show that a person of ordinary skill in the art would have to choose that particular processor and that particular controller to get to and then dissipate that amount of heat.

[00:18:56] Speaker 00:
So they weren't requiring to show failure, but what the board said was that there wasn't evidence to show that that much heat would have to be dissipated.

[00:19:08] Speaker 05:
Now, Appellant says that... So is there sufficient evidence to show that there are other combinations or ways to do it that would work?

[00:19:18] Speaker 00:
There is sufficient evidence in the record to show that there would have been a reasonable expectation of success.

[00:19:24] Speaker 01:
What is that evidence?

[00:19:25] Speaker 00:
That is that peat grass teaches everything, including a reference to solar power.

[00:19:33] Speaker 00:
So it is contemplated.

[00:19:35] Speaker 00:
PLAMP teaches LEDs with solar power connected to a rechargeable battery.

[00:19:40] Speaker 00:
And there's nothing in the prior art or the specification that talks about any overheating problems, much less resolving the problem.

[00:19:49] Speaker 00:
So if there is a problem of overheating in the prior art, it's not explained in the 827 patent how to address it.

[00:19:58] Speaker 00:
So either a person of ordinary skill in the art

[00:20:01] Speaker 00:
work with this combination or there wasn't a problem.

[00:20:07] Speaker 01:
I'm not sure I'm clear on what you're saying.

[00:20:10] Speaker 01:
That there was sufficient showing of reasonable expectation of success because?

[00:20:20] Speaker 00:
Because the prior art shows that LED systems and solar power and rechargeable batteries were all in existence at the time.

[00:20:31] Speaker 03:
In fact, the 827 specification even says... But nothing in the prior art shows that if you put them together in this way, it would work.

[00:20:44] Speaker 00:
My answer, Your Honor, would be that it actually does suggest that it would work, because.

[00:20:50] Speaker 03:
Well, you know, a suggestion in Peepgrass, you can write to, that includes that little parenthetical, or anyway, the reference to solar, does not show that it would work.

[00:21:04] Speaker 03:
It's just somebody sitting down in writing said, oh, you could use it with this, you could use it with that, without having done any work to figure out whether you could actually do it.

[00:21:12] Speaker 00:
It is a short passing reference in Peepgrass, but we do have Plamp that actually talks about the circuitry connecting an LED system to a solar panel and a battery.

[00:21:28] Speaker 00:
And then we have the 827 reference itself, which says that these LED color changing systems are in the prior art.

[00:21:35] Speaker 00:
It says that solar garden lights are known.

[00:21:41] Speaker 00:
None of these three references suggest at all an overheating problem.

[00:21:47] Speaker 01:
So where did this come up?

[00:21:49] Speaker 01:
Because they decided to test some of them and they were overheating.

[00:21:52] Speaker 01:
How did this come up in the proceeding?

[00:21:55] Speaker 00:
I think this came up on reexamination.

[00:21:57] Speaker 00:
They had two experts who did some testing and testified that there would be overheating.

[00:22:08] Speaker 01:
Well, in those circumstances, what is

[00:22:11] Speaker 01:
What isn't the board or the examiner required to do something more, at least to come up with three other experiments that show that it wasn't overheating?

[00:22:23] Speaker 01:
If they come up affirmatively and show it's overheating, I don't know how you pick and choose what you're going to combine here.

[00:22:31] Speaker 01:
But is it enough to say, well, there's so many other combinations.

[00:22:36] Speaker 01:
So just because they found two were problematic, that doesn't mean anything.

[00:22:40] Speaker 01:
And we still had a reasonable expectation of success.

[00:22:43] Speaker 01:
That's what I understand was the board's answer to this.

[00:22:46] Speaker 00:
I don't think that alone might not be enough.

[00:22:50] Speaker 00:
But the board had problems with both experts testing, the assumptions that they made in the testing.

[00:23:01] Speaker 00:
the rest of the record strongly supports a motivation to combine here.

[00:23:07] Speaker 04:
So are you suggesting that the board didn't shift the burden, they just didn't find the expert testimony presented persuasive, and so it didn't alter its finding that there was an expectation of success?

[00:23:22] Speaker 00:
Yes, Your Honor, that's what I'm suggesting.

[00:23:24] Speaker 00:
And the board did say that.

[00:23:28] Speaker 01:
Where did it say that?

[00:23:31] Speaker 01:
Because I'm looking at page nine, where I think is where they were discussing this.

[00:23:39] Speaker 01:
They seem to just say here that we agree that they listed a number of options.

[00:23:48] Speaker 01:
And we agree that the appellant has not established that all such processor options would dissipate the equivalent of 1.47.

[00:23:59] Speaker 01:
As a result, we're not convinced they've proven circuit heat dissipation, blah, blah, blah.

[00:24:07] Speaker 01:
Does the board speak to it otherwise, or this examiner, or is this what it is?

[00:24:12] Speaker 00:
I was going to point you to that and also the page before it where it talks about Dr. Ducharme's testing, which we haven't talked about too much here.

[00:24:19] Speaker 00:
But in that passage that you read, Judge Prost, the end of it is that the board says we are not convinced that the appellant has proven heat dissipation such that the combination of references would be at a high risk of temperature-based failure, just at a high risk.

[00:24:40] Speaker 00:
The reasonable expectation of success doesn't have to be absolute.

[00:24:44] Speaker 00:
It just has to be reasonable.

[00:24:47] Speaker 01:
Well, what would be sufficient in your view to establish a high risk of temperature-based failure?

[00:24:53] Speaker 00:
Well, one thing that appellant could have tried to show is that actually this processor and this controller were at

[00:25:01] Speaker 00:
maybe an average heat dissipation, or maybe it was a lower heat dissipation.

[00:25:05] Speaker 00:
And I believe we talked earlier about, they said that it was the least power-consuming combination.

[00:25:16] Speaker 00:
However, it was just the least out of two, and the two were the two specific parts that they picked.

[00:25:26] Speaker 00:
One was just a passing reference in peatgrass, and one was from a different,

[00:25:31] Speaker 00:
So there's no evidence here that it's even an average power dissipation combination, much less a lower one or something that a person of ordinary skill in the art couldn't resolve.

[00:25:51] Speaker 03:
Does the 827 patent itself identify

[00:25:56] Speaker 03:
a processor and control circuit that includes processor and controller that is different from the particular processor and controller that Dr. Geluria did his testing on to conclude that those would

[00:26:21] Speaker 03:
generate 1.47 watts and therefore make the whole thing too hot.

[00:26:27] Speaker 03:
Because if this one works, presumably, there's a circuit that doesn't produce that heat.

[00:26:37] Speaker 00:
I may have misunderstood, but that's... I will try to answer your question, Your Honor.

[00:26:42] Speaker 00:
The 827 patent is very short.

[00:26:46] Speaker 00:
It's only 10 or 11 columns, and there is

[00:26:50] Speaker 00:
some discussion of power supply in columns four and five, that's appendix 40 and 41, but they don't go through and list combinations.

[00:27:02] Speaker 00:
In column five, about the middle of the page, it says the power supply circuit is connected in parallel to the light-operated circuit, and it sort of goes on to describe maybe what the elements of the circuits are, but doesn't specify anything about

[00:27:21] Speaker 00:
which parts or whether there would be overheating or how to avoid it.

[00:27:26] Speaker 03:
And there was no enablement rejection here, right?

[00:27:29] Speaker 03:
No.

[00:27:32] Speaker 03:
Originally, I guess, and we're on re-exams, so that wouldn't have been an issue, right?

[00:27:37] Speaker 03:
Right.

[00:27:45] Speaker 03:
Do you have anything to say in defense of the assertions by both the board and the examiner that the experts on this point were inconsistent?

[00:27:56] Speaker 03:
Because I don't get that at all.

[00:27:59] Speaker 00:
Yes.

[00:27:59] Speaker 00:
The examiner explained why he thought that the experts were inconsistent.

[00:28:06] Speaker 00:
And that was because Dr. Dusharm, when he did his testing without plugging in

[00:28:14] Speaker 00:
plugging anything and powering anything.

[00:28:17] Speaker 00:
He measured the temperature rise and found that it would rise six degrees just sitting in the sun at 25 degrees Celsius.

[00:28:29] Speaker 00:
His calculation resulted in his theory that at 25 degrees, the thing would work because the six degrees would only get the temperature up to 31.

[00:28:43] Speaker 00:
35 degrees, it would fail because the temperature, you add six degrees and it gets to 41, and 40 was the limit.

[00:28:54] Speaker 00:
But Dr. Ducharm's theory was that because of the four degree reduction from the color changing cycle, it would work.

[00:29:02] Speaker 00:
So Dr. Ducharm's testing resulted in his theory that at 35 degrees, it's gonna work because of that four degree unexpected result.

[00:29:13] Speaker 00:
Dr. Joliot's testing resulted in a theory that it would not even work at 25 degrees, and it certainly wouldn't work at 35 degrees.

[00:29:22] Speaker 00:
And that is the conflict of the two experts that the examiner explained.

[00:29:30] Speaker 00:
If there are no further questions, I'll yield my time.

[00:29:33] Speaker 00:
Thank you.

[00:29:34] Speaker 03:
Oh, I'm sorry.

[00:29:35] Speaker 03:
I do.

[00:29:36] Speaker 03:
I'm sorry.

[00:29:37] Speaker 03:
This is a legal question.

[00:29:39] Speaker 03:
So it is striking that the board's opinion does not itself articulate or even expressly adopt the examiner's articulation of an affirmative reason

[00:29:56] Speaker 03:
that relevant artisan would reasonably expect success.

[00:30:01] Speaker 03:
So you have, if I understand things right, you have to rely on the board's adoption as a matter of law of this assertion by a couple of paragraphs that pretty much say the same thing by the examiner in the examiner's documents.

[00:30:25] Speaker 03:
Um, we have, have we adopted that view of the regulation, um, as a presidential matter?

[00:30:34] Speaker 00:
I don't have a case law to cite to your honor, but, but you're right that 37 CFR 41 50 does.

[00:30:45] Speaker 00:
say that unless the board expressly does not adopt an examiner's reasoning, it's included in the board's decision.

[00:30:54] Speaker 03:
I mean the language maybe bears that understanding, maybe even most naturally bears that understanding.

[00:31:01] Speaker 03:
I guess I've seen at least one, I think, non-precedential

[00:31:07] Speaker 03:
decision, I think it was non-PREC, that seemed to adopt that.

[00:31:12] Speaker 03:
On the other hand, we have a case called Vernetics, not too, too long ago, a non-PREC that rejected the idea that the Board's affirmance automatically incorporates the examiner's statement and even referred to the demanding requirement

[00:31:35] Speaker 03:
that applies to incorporation by reference in other contexts, particularly one specification incorporating by reference another material from another specification that has to be focused on precisely what is being examined.

[00:31:53] Speaker 03:
So it left me a little uncertain.

[00:31:56] Speaker 03:
whether this regulation is enough to fill a gap that has to be filled in order to avoid actual burden shifting.

[00:32:09] Speaker 00:
Again, I would be happy to provide you a case if we can go look.

[00:32:13] Speaker 00:
But I think here the overall picture is that

[00:32:18] Speaker 00:
reasonable expectation of success is a part of the motivation to combine analysis.

[00:32:23] Speaker 00:
And here, the motivation to combine is very strong.

[00:32:27] Speaker 00:
It's already in the references.

[00:32:29] Speaker 00:
And Appellant has not disputed the examiner's analysis of that.

[00:32:37] Speaker 00:
So I believe it's enough here.

[00:32:41] Speaker 00:
Thank you, Your Honors.

[00:32:45] Speaker 01:
Will we strike two minutes of rebuttal?

[00:32:48] Speaker 02:
If I have any time?

[00:32:50] Speaker 01:
Yeah, I'm going to restore two minutes.

[00:32:51] Speaker 02:
Okay, two minutes.

[00:32:53] Speaker 02:
All right.

[00:32:53] Speaker 02:
I'll do it in two minutes.

[00:32:56] Speaker 02:
Your Honor, I'll just mention quickly the commercial success.

[00:33:07] Speaker 02:
The board overruled the examiner on lack of nexus.

[00:33:11] Speaker 02:
The examiner found lack of nexus.

[00:33:12] Speaker 01:
It's a little, I mean, I guess I'm not going to foreclose you from doing it, but normally you would read.

[00:33:18] Speaker 01:
Oh, OK.

[00:33:19] Speaker 02:
That's already in the briefs.

[00:33:21] Speaker 02:
I won't waste my time.

[00:33:22] Speaker 02:
As far as the sixth seagull, I think your honor has

[00:33:29] Speaker 02:
correctly determined.

[00:33:30] Speaker 02:
There really isn't a conflict.

[00:33:31] Speaker 02:
It was just two different circumstances, two different test conditions.

[00:33:37] Speaker 02:
So there's really no conflict.

[00:33:38] Speaker 02:
The issue of whether it requires 16.8 or 29.8, that arises from the

[00:33:51] Speaker 02:
operation of the processor, which is essential to produce the color-changing light.

[00:33:56] Speaker 03:
Does your spec identify a circuit that would not have the problems of the particular processor controller combination that you... I believe it does identify a circuit.

[00:34:11] Speaker 02:
I don't recall what that is.

[00:34:14] Speaker 02:
I, there's different reasons why it doesn't fail.

[00:34:19] Speaker 02:
And some of them I just didn't know.

[00:34:22] Speaker 03:
That wasn't litigated here.

[00:34:23] Speaker 02:
No, it wasn't litigated here.

[00:34:25] Speaker 02:
And at the time, he didn't know why it didn't fail.

[00:34:31] Speaker 02:
But it

[00:34:32] Speaker 02:
In fact, it doesn't.

[00:34:33] Speaker 02:
And the issue here is, would somebody at the time of the invention have believed that it would succeed?

[00:34:40] Speaker 02:
And the answer is no.

[00:34:42] Speaker 02:
All they would have to do is do some calculations, find, no, it's going to fail.

[00:34:48] Speaker 02:
The temperatures that were used were those provided by the examiner.

[00:34:54] Speaker 02:
So we didn't contest the dust time temperatures.

[00:34:59] Speaker 02:
The issue of failure, 1.47 or more, is really not an issue.

[00:35:05] Speaker 02:
The issue is, like I said, whether they can point to a processor, input peak browse, they would be likely to use less.

[00:35:14] Speaker 02:
That wouldn't seem to be a great burden to do that, but the patent office didn't do that.

[00:35:22] Speaker 02:
And I think I, since I'm

[00:35:24] Speaker 02:
Near the end of my time, I will just close it at that.

[00:35:28] Speaker 02:
Thank you very much for the opportunity to present to Your Honors.

[00:35:31] Speaker 01:
Thank you.

[00:35:32] Speaker 01:
We thank both sides.

[00:35:33] Speaker 01:
The case is submitted.