[00:00:00] Speaker 03: The next case for argument is 24-1199 NRA International Insulation Products. [00:00:11] Speaker 03: Mr. Habib, whenever you're ready. [00:00:13] Speaker 04: Good morning, Your Honor. [00:00:14] Speaker 04: Good morning. [00:00:14] Speaker 04: Good morning, Your Honor. [00:00:17] Speaker 04: Chef Habib, Counsel for Appellant. [00:00:21] Speaker 04: You may please the court. [00:00:24] Speaker 04: This is a patent case. [00:00:26] Speaker 04: And the issue is whether a waterproof [00:00:29] Speaker 04: propylene film qualifies as a synthetic roofing underlayment that is explicitly recited in claim one. [00:00:44] Speaker 04: The specification describes synthetic roofing underlayment and so the description [00:00:58] Speaker 04: in the specification can be used to determine whether or not the film qualifies as a synthetic roofing underlayment. [00:01:15] Speaker 04: In the specification it calls out that roofing underlayment is placed between a roof deck and roofing material. [00:01:25] Speaker 04: The underlayment protects the roof deck from water that penetrates the roofing material. [00:01:32] Speaker 04: In real life, a very common application is plywood sheathing as a roof deck, with shingles being plied over that sheathing [00:01:47] Speaker 03: as the roofing material given that time is limited and we really have read all the materials let me just ask you one thing that just question popped up is that you seem to you think the claim term [00:02:00] Speaker 03: synthetic roofing underlayment carries with it all these extra requirements, fasteners and concerning placement. [00:02:09] Speaker 03: Let me just finish the question that you can tell me. [00:02:12] Speaker 03: And the claim itself doesn't mention any of those explicitly. [00:02:17] Speaker 03: Why didn't you amend your claim? [00:02:22] Speaker 03: You had the opportunity to amend your claim right to include that at this juncture of the case. [00:02:26] Speaker 03: That may have changed what was going on here. [00:02:29] Speaker 04: Perhaps. [00:02:31] Speaker 04: However, we are not reading limitations into the claim. [00:02:39] Speaker 04: Synthetic roofing underline that is expressly recited as a limitation. [00:02:43] Speaker 03: Yeah, but you're talking about fasteners and all these other things in your arguments which don't appear in the claim itself. [00:02:51] Speaker 03: So I'm just wondering if that was the rub here and arguably [00:02:56] Speaker 03: led to it, you know, affected the result, why you didn't amend your claim. [00:03:01] Speaker 04: I think it's a misunderstanding that describing how a synthetic roofing underlayment is used in real life to express the physical qualities that a synthetic roofing underlayment must have. [00:03:21] Speaker 04: For example, it is often with shingles, you nail the shingles, [00:03:26] Speaker 04: So a roofing underlayment is often used in an environment where there's fasteners. [00:03:32] Speaker 04: The claimed synthetic roofing underlayment, or excuse me, the claimed roofing underlayment can be infringed when the roofing underlayment is in the warehouse. [00:03:46] Speaker 04: We're not saying it must be installed to be infringing. [00:03:53] Speaker 04: Key quality that distinguishes this roofing underlayment from the prior HART is that the one layer is a synthetic roofing underlayment. [00:04:04] Speaker 04: Synthetic roofing underlayments are conventional. [00:04:08] Speaker 04: We point out in the specification examples of commercially available synthetic roofing underlayments. [00:04:15] Speaker 01: So, Counselor, doesn't Cross Sieg disclose the second layer? [00:04:21] Speaker 01: that it also includes an outer plastic surface as the plastic. [00:04:27] Speaker 04: Crostic discloses it as the second outer layer, a vapor barrier. [00:04:35] Speaker 04: Not a roofing underlayment, a vapor barrier. [00:04:40] Speaker 04: Polypropylene films are often used as a vapor barrier. [00:04:46] Speaker 04: to prevent water vapor from going from between a warm side to a cold side of an environment. [00:04:57] Speaker 04: The crostic reflective insulation is used to divide an interior into a warm side and a cooler side. [00:05:11] Speaker 04: So the vapor barrier prevents that moisture migration. [00:05:17] Speaker 04: from the warm side to the cold side. [00:05:20] Speaker 01: We do agree that these are all factors that a person that's skilled in the art would know? [00:05:25] Speaker 04: Yes. [00:05:27] Speaker 04: These materials have been used for many, many years in the roofing and construction industry. [00:05:37] Speaker 03: Can I ask you a question about just one of what I think is one of your arguments, and I don't really understand it, which is I think the motivation to combine, where you argue that you wouldn't have been motivated to combine Crostick with Hamdar, those are two references you're talking about, because Crostick already had waterproofing, was waterproof. [00:06:01] Speaker 03: How does that help you? [00:06:02] Speaker 03: I mean, that says no, this is anticipation and not obviousness. [00:06:05] Speaker 03: How does that help you? [00:06:07] Speaker 04: The reason is, in the final office action, the examiner combined CROSSTIC with the HAMDAR waterproofing membrane. [00:06:22] Speaker 04: HAMDAR discloses a polyethylene film that functions as a carrier sheet. [00:06:30] Speaker 04: In CROSSTIC figure 3, you see that as item 22. [00:06:36] Speaker 04: And it adheres to a waterproofing membrane, 24. [00:06:42] Speaker 04: So when we read the final rejection, combining Crostik with Andar's waterproofing membrane, we assume that it's including the membrane. [00:06:58] Speaker 04: In the examiner's answer, he says, no, that's the wrong interpretation. [00:07:06] Speaker 04: It's just that Hamdart teaches a waterproof polypropylene film. [00:07:13] Speaker 04: So he's now stripped the film away from the waterproofing membrane and says the polypropylene film alone is waterproof. [00:07:22] Speaker 04: But we agree it's waterproof. [00:07:25] Speaker 04: But this does not disclose that a waterproof polypropylene film can function as a synthetic roofing underlayment [00:07:35] Speaker 04: when, for example, sandwiched between roofing material and roof deck with the possibility of fasteners, there's been no showing that a polyester, a waterproof polyester film alone can function as a synthetic roofing underlayment. [00:07:55] Speaker 04: As a matter of fact, if it did, why would Hamdar have a waterproofing membrane adhering to that polyester film? [00:08:05] Speaker 04: Our response was to the combination of a polyester film with a waterproofing membrane, adding the waterproofing membrane to CROSDIC. [00:08:19] Speaker 04: That's how we read the final rejection. [00:08:24] Speaker 02: So if it was waterproof, you don't have to add the waterproofing membrane. [00:08:27] Speaker 02: How does all of that add up to no substantial evidence for motivation to combine Hamdar and CROSDIC? [00:08:35] Speaker 04: Because we were, the initial rejection, it was our belief that the examiner was combining a waterproofing membrane with the polyethylene film of crostic, adding a waterproofing membrane, which in Hamdahr is a separate component adhering to the polyethylene [00:09:05] Speaker 04: propylene film. [00:09:07] Speaker 04: I may just say plastic film. [00:09:09] Speaker 04: It's easier. [00:09:12] Speaker 04: So we were pointing out in response to the final rejection that it was already waterproof. [00:09:18] Speaker 04: No need to add a waterproofing membrane as disclosed in Handar as a separate additional component. [00:09:28] Speaker 04: But in the examiner's answer, he's now stripped away the membrane. [00:09:33] Speaker 04: and is relying on a waterproof poly plastic film alone to function as a roofing underlayment, but has provided no evidence, no examples where a plastic film alone functions in an environment of a roofing underlayment. [00:09:59] Speaker 04: It is known to include films [00:10:02] Speaker 04: plastic films in a roofing underlayment. [00:10:06] Speaker 04: But not a, as far as we know, not to use a plastic film alone, alone, as a roofing underlayment between roofing materials and a roof deck. [00:10:24] Speaker 04: If it can't function in that environment, you know, roofing, my shingles are 20 years old. [00:10:32] Speaker 04: They're going to be replaced soon, but they're 20 years old. [00:10:35] Speaker 04: And that roofing underlayment is going to be there for 20 years. [00:10:39] Speaker 04: So again, there are certain characteristics of a roofing underlayment that are described in the specification. [00:10:50] Speaker 04: And again, that description in the specification can be referred to when evaluating [00:11:02] Speaker 04: what the synthetic roofing underlayment of claim one is. [00:11:06] Speaker 04: Again, we're not reading the limitations from the specification into the claim. [00:11:14] Speaker 04: The claim explicitly recites synthetic roofing underlayment that is described in the specification. [00:11:23] Speaker 04: Its use, and the fact that it's, for example, made of synthetic fibers, [00:11:30] Speaker 04: And so we've described what a synthetic roofing underlayment is to give definition to the term in the claim itself, of synthetic roofing underlayment. [00:11:48] Speaker 03: You're into your rebuttal, so I'm going to hear from the government, and we'll serve you the rest of your time. [00:11:53] Speaker 03: Thank you. [00:12:15] Speaker 00: May I please record? [00:12:17] Speaker 00: Fahad Patel with the USPTO. [00:12:19] Speaker 00: I'll try and be brief. [00:12:20] Speaker 00: I want to respond to some of the arguments. [00:12:23] Speaker 00: The first point, actually, just to bring up is that the council focused on the claim limitation synthetic roofing underlayment. [00:12:32] Speaker 00: We had a forfeiture argument in our brief. [00:12:34] Speaker 00: And it's because before the board, IIP did not actually argue that limitation in its appeal brief to the board. [00:12:43] Speaker 00: So I can just give you the site briefly. [00:12:48] Speaker 00: But it's on appendix 305, which is IIP's appeal brief to the board. [00:12:58] Speaker 00: And the argument there was simply this interior-exterior argument that the claimed use is outside exterior, whereas the reference has interior use. [00:13:10] Speaker 00: So the interior-exterior argument is what they argued before the board, and the board addressed that argument. [00:13:18] Speaker 00: So the sort of shift in an argument is a forfeiture, is what we've argued. [00:13:24] Speaker 00: So that's sort of one point I wanted to start with. [00:13:28] Speaker 00: The second point is kind of focusing more on the panel's questioning to my friend, and it's about whether the claim actually requires any of these features like a placement or fasteners or self-sealing. [00:13:44] Speaker 00: So none of that is in the claim language, and it doesn't limit the scope of the claim. [00:13:47] Speaker 00: And I think actually there was an admission that I heard, which I think makes the point, which was that [00:13:53] Speaker 00: the product embodying the claim as written can infringe sitting in a warehouse. [00:13:59] Speaker 00: I believe that's what my friend said. [00:14:01] Speaker 00: So if that's the scope of the claim, it can infringe sitting in a warehouse not located between shingles and the roofing panel, not having fasteners, not having self-sealing. [00:14:13] Speaker 00: If it can infringe that way, then it can be invalidated [00:14:18] Speaker 00: by prior art of the same scope, essentially. [00:14:22] Speaker 00: So in other words, the prior art need not have fastener, self-healing membrane. [00:14:27] Speaker 03: But the other argument is that the claim language doesn't include that. [00:14:29] Speaker 00: It doesn't include that. [00:14:30] Speaker 00: I think that's exemplified by that admission. [00:14:33] Speaker 00: So the claim language does nothing about any of these features. [00:14:35] Speaker 00: It's a composition claim. [00:14:38] Speaker 00: It's just three layers. [00:14:40] Speaker 00: One layer is waterproof on one side. [00:14:42] Speaker 00: On the other side, there's a reflective layer. [00:14:45] Speaker 00: And in the middle, there's an insulating layer. [00:14:48] Speaker 00: And there's adhesives. [00:14:49] Speaker 00: That's basically what the claim covers. [00:14:52] Speaker 00: The claim doesn't say anything about fasteners or a placement or anything like that. [00:14:59] Speaker 00: So that's sort of the rebuttal. [00:15:02] Speaker 00: So I don't fully understand what they're saying actually is limiting to the claim if it could infringe sitting in a warehouse. [00:15:11] Speaker 01: Well, it looks like one of his arguments is that there's a limitation in the placement of the membrane. [00:15:20] Speaker 00: I believe that they're arguing that the underlayment has to be [00:15:26] Speaker 00: Well, at least in front of the board, IEP argued that the underlayment has to be exterior. [00:15:31] Speaker 00: It has to be outside, on top of the roof of a house. [00:15:36] Speaker 00: And that's apparently a limitation of the claim, according to IEP. [00:15:41] Speaker 00: So the main argument is that the claim doesn't require any specific placement of the underlayment. [00:15:46] Speaker 00: It doesn't require that it be outside. [00:15:50] Speaker 00: And even if it was outside, that would just be like an intended use of really a composition, almost like an apparatus intended use that doesn't actually limit what the claim requires. [00:16:06] Speaker 00: Because the claim is just the layers. [00:16:08] Speaker 00: It's a composition. [00:16:09] Speaker 00: It's what is in the roofing underlayment, not where you put it or how you attach it to something. [00:16:16] Speaker 00: So the claim doesn't require this exterior placement. [00:16:23] Speaker 02: I think he's appealing the finding of motivation to combine Hamdar and Crostick, or at least whether there be a reasonable expectation of success. [00:16:33] Speaker 02: If we don't read admissions into what has been said by the applicant, how would we find substantial evidence to support what the board did nonetheless? [00:16:44] Speaker 00: So the board's combination, if you set aside the admissions about the waterproofing of Crostick, [00:16:52] Speaker 00: then all the examiner and the board did was they looked at CROSSTIC. [00:16:59] Speaker 00: They said, OK, CROSSTIC has this propylene layer already. [00:17:03] Speaker 00: And the claim requires that the synthetic roofing underlayment be waterproof. [00:17:09] Speaker 00: And so the question becomes, would CROSSTIC's propylene layer be waterproof? [00:17:15] Speaker 00: So the only thing that the examiner and the board took from Hamdhar was this idea that propylene can be waterproof. [00:17:23] Speaker 00: It didn't take the whole layer from Hamdhar and try to incorporate the layer from Hamdhar into CroftStick. [00:17:31] Speaker 00: It just merely took the characteristic of propylene being waterproof as something that would have been obvious to a person of skill. [00:17:38] Speaker 00: That's sort of the extent of the reliance on Hamdar. [00:17:41] Speaker 02: And the finding as to motivation with the reasonable expectation of success, what did the board say? [00:17:48] Speaker 00: So the board should be on appendix four, and the examiner said this too. [00:17:59] Speaker 00: It was for mold formation. [00:18:01] Speaker 00: So what the examiner said is that it would have been obvious to make cross-stix propylene layer waterproof to prevent mold from entering the insulation layer and forming. [00:18:15] Speaker 00: That was the reason. [00:18:18] Speaker 03: Anything further? [00:18:18] Speaker 00: That was appendix five. [00:18:20] Speaker 00: I'll just correct that. [00:18:20] Speaker 03: Thank you. [00:18:22] Speaker 03: Thank you. [00:18:28] Speaker 03: Mr. Habee, you have some rebuttal time left. [00:18:41] Speaker 04: May I please report? [00:18:44] Speaker 04: Again, the purpose of discussing the uses of a synthetic briefing underline is to [00:18:56] Speaker 04: demonstrate the properties it must exhibit to exist as a synthetic roofing underline during use. [00:19:03] Speaker 04: We don't care if you use it for something else, if you use it to cover your car, whatever, but it's a synthetic roofing underline. [00:19:12] Speaker 04: It has to function in that environment. [00:19:14] Speaker 04: The examiner has not proven that a polyester film by itself, waterproof, not waterproof, can function as a synthetic roofing underlayment in the environment that a person of ordinary skill would understand that a roofing underlayment would function. [00:19:33] Speaker 04: The reason it's important to understand that the examiner has only shown interior uses is because it does not [00:19:44] Speaker 04: evidence that this prostate insulation can be used in an external environment to function as a roofing underlayment. [00:19:55] Speaker 04: It's really that simple. [00:19:56] Speaker 04: And it should be understood too that when the appeal brief was filed with the board, at that point we believed that the combination was Hamdahr's waterproofing membrane being added to the [00:20:13] Speaker 04: plastic film. [00:20:15] Speaker 04: It was only in the examiner's answer that he said, no, we're using the teaching of Hamdahr to make the film waterproof, not to add the membrane. [00:20:28] Speaker 04: So again, you've ripped the membrane away from the film. [00:20:32] Speaker 04: That membrane must have been important to be a roofing underlayment. [00:20:36] Speaker 04: It was included in Hamdahr, but now it's been ripped away. [00:20:40] Speaker 04: And we're now saying that the film alone [00:20:43] Speaker 04: which was being used in Hamdyer to provide a friction skid-resistant upper surface so you could walk on it without slipping. [00:20:54] Speaker 04: That's all. [00:20:56] Speaker 04: So there's been absolutely no evidence given by the examiner that acrostic, waterproof or not waterproof, waterproof film or not waterproof film, can function in an external exterior environment [00:21:13] Speaker 04: as a synthetic roofing underlayment between roofing material and roof deck. [00:21:19] Speaker 04: That simply hasn't been demonstrated at all. [00:21:22] Speaker 04: And those limitations, if I could quote MPEP 2111, there's a difference between reading a claim in light of the specification to thereby interpret limitations explicitly recited in the claim [00:21:43] Speaker 04: It's quite different from reading limitations into the claim to thereby narrow the scope. [00:21:48] Speaker 04: We're not doing that. [00:21:53] Speaker 04: The limitation of a synthetic roofing underlayment is explicitly recited in the claim. [00:22:00] Speaker 04: We can therefore go to the specification to flesh out what synthetic roofing underlayment is and how it can function. [00:22:10] Speaker 03: Thank you. [00:22:12] Speaker 03: We thank both sides. [00:22:13] Speaker 03: The case is submitted.