[00:00:00] Speaker 03:
Our next case for argument is 24-1337, Emory X-Fab Semiconductor Boundaries.

[00:00:08] Speaker 03:
Ms.

[00:00:08] Speaker 02:
O'Rourke, yes, proceed.

[00:00:11] Speaker 02:
Good morning, Your Honors.

[00:00:13] Speaker 02:
May it please the Court?

[00:00:14] Speaker 02:
Alana Raj on behalf of Appellant Exfab.

[00:00:19] Speaker 02:
Exfab requests that the Court reverse the Board's decision rejecting the pending claims as obvious over Nakahata in view of Whiston based on two deficiencies in the obviousness analysis.

[00:00:33] Speaker 02:
The first is that substantial evidence does not support the board's finding that the Nakahata-Wiston combination discloses a trench isolation region in Nakahata starting substrate.

[00:00:46] Speaker 02:
And this is because the record does not reflect

[00:00:50] Speaker 02:
and does not contain any findings regarding the material of Nakahata's carrier substrate.

[00:00:57] Speaker 03:
I think that the problem the government argued was that you didn't raise this issue below and so therefore it's forfeited.

[00:01:03] Speaker 03:
So you can't expect the board to make a fact binding on something you didn't raise.

[00:01:07] Speaker 03:
So where precisely did you raise it?

[00:01:09] Speaker 03:
Why don't you show us where it was raised?

[00:01:12] Speaker 03:
in the actual briefing?

[00:01:13] Speaker 02:
Sure.

[00:01:14] Speaker 02:
So with respect to the forfeiture issue, generally speaking, and under the Medtronic Teleflex case that we cite in our briefing, the court has stated, as you know, that the exact phrasing of the argument does not have to be used below so long as it can be said that the tribunal was fairly put on notice as to the substance of the- But can you answer the Chief Judge Moore's question and point us to where in the record

[00:01:41] Speaker 01:
Sure.

[00:01:41] Speaker 01:
I see this argument was raised below.

[00:01:43] Speaker 01:
Give us specific JA pages.

[00:01:44] Speaker 02:
Sure.

[00:01:45] Speaker 02:
So if you turn to appendix number, and I'm going to pull it up, the first one I'll point you to, Your Honors, is 702 and 703.

[00:02:00] Speaker 02:
And this is in ExFab's appeal to the board.

[00:02:05] Speaker 02:
And in there on page 702, right off the bat, it says, indeed, there's no disclosure of the trench isolation regions formed by local oxidation.

[00:02:17] Speaker 02:
of the semiconductor material of the carrier substrate.

[00:02:21] Speaker 02:
And so there, right off the bat, it's raised in the appeal to the board.

[00:02:27] Speaker 02:
Then turning to page appendix 708, that's page 14 of our appeal brief, there's the heading right off the bat again.

[00:02:38] Speaker 02:
The proposed combination does not disclose the claim timeshifely.

[00:02:42] Speaker 03:
What was the session page?

[00:02:43] Speaker 02:
I'm sorry, appendix page 708.

[00:02:47] Speaker 02:
And so that's where we get into the argument in further detail and discuss how the proposed combination of the Nakahata-Wiston combination doesn't disclose the claim trench isolation region.

[00:02:58] Speaker 03:
But there's a difference between saying it doesn't disclose the trench isolation regions and saying it doesn't have a non-silicon starting substrate.

[00:03:06] Speaker 03:
So where is that?

[00:03:08] Speaker 02:
Sure.

[00:03:09] Speaker 02:
You know, I think that the main point here, Your Honors, is that we have continuously raised to the board, both during prosecution and also during in the appeal.

[00:03:23] Speaker 02:
And I think another great reference point would be, for example, on page, this is 778,

[00:03:31] Speaker 02:
and this is in our request for rehearing, where the entire basis of the request for rehearing, Your Honor, is that no, and this is from page 778 in the appendix, nowhere in the decision did the board find that either Nakahata or Whiston

[00:03:48] Speaker 02:
a loner in combination, disclosed the claim trench isolation regions.

[00:03:52] Speaker 02:
And then we emphasized what was in our appeal brief.

[00:03:56] Speaker 02:
This is on page 779 at the bottom.

[00:03:58] Speaker 02:
We said, as Appellant explained, the trenches must extend into the semiconductor material of the carrier substrate.

[00:04:08] Speaker 02:
And so the only carrier substrate, Your Honors, that's in the record.

[00:04:11] Speaker 04:
Not one of those references that you quoted deals with a specific point.

[00:04:17] Speaker 04:
that you're raising now, right?

[00:04:19] Speaker 04:
You're trying to say, well, we raised a general argument about the combination not showing the trench or whatever, but you never raised the silicon substrate issue.

[00:04:33] Speaker 02:
So Your Honors, while the terms... Isn't that right?

[00:04:39] Speaker 02:
So the term silicon is not raised directly, but we think that the board was fairly put on notice of this issue in particular.

[00:04:48] Speaker 01:
How would it be put on notice of this issue in particular if it was not raised directly?

[00:04:53] Speaker 02:
So we continuously raised that Nakahata does not disclose that there's a trench isolation region extending into the substrate.

[00:05:07] Speaker 02:
And then again was raising that Whiston does not disclose a trench isolation region.

[00:05:14] Speaker 02:
and that Wiston's LOCUS region, and LOCUS stands for Local Oxidation of Silicon, does not extend into the carrier substrate.

[00:05:25] Speaker 02:
And so, you know, we think based on the continuous raising of that, and, you know, I think, Your Honors, also, if we look at page three of the great brief,

[00:05:36] Speaker 02:
the reply brief.

[00:05:39] Speaker 02:
It's telling us to how the board responded to our arguments, I think.

[00:05:45] Speaker 02:
So we argued, for example, that Wiston's locust regions, and this is on Appendix Page 780, we argued that Wiston's locust regions do not extend into the carrier substrate.

[00:05:56] Speaker 02:
Again, the only carrier substrate that's identified in the record in particular is the carrier substrate of Nakahata.

[00:06:04] Speaker 02:
so we're arguing about that and then we so we say therefore these locust regions are not trenches.

[00:06:12] Speaker 02:
The board addressed this very issue in its decision on rehearing and made several findings as to what the combination discloses and said look the what the examiner found and what the board affirmed is that the combination is

[00:06:34] Speaker 02:
is that the Locust region is replacing the mask that is on Nakahata's substrate.

[00:06:45] Speaker 02:
And so the board did address and make findings as to the combination.

[00:06:50] Speaker 02:
And so we think the board was fairly put on notice under the forfeiture law as to the issue that we're raising here today.

[00:06:59] Speaker 02:
And Your Honors, just on a further note there,

[00:07:05] Speaker 02:
We, of course, do not think that there's forfeiture.

[00:07:08] Speaker 02:
But there is discretion if you do find forfeiture.

[00:07:12] Speaker 02:
And we think you should use your discretion if you do find forfeiture in order to address this issue, given that in order for there to be a proper obvious sense of rejection, there has to be a prima facie case.

[00:07:25] Speaker 02:
And we just don't believe that is shown here because there's no.

[00:07:28] Speaker 03:
If we find there's forfeiture, you want us to use our discretion to reach fact issues the board didn't reach because you didn't raise them?

[00:07:33] Speaker 03:
What a reference discloses and teaches is a question of fact.

[00:07:37] Speaker 03:
Pellet courts don't do that.

[00:07:38] Speaker 03:
We don't use forfeiture to decide fact issues.

[00:07:41] Speaker 02:
So we're not asking you to decide a fact issue, we're asking you to

[00:07:46] Speaker 02:
We're not asking you to use your discretion to decide a fact issue.

[00:07:51] Speaker 02:
It's to determine whether there's any finding.

[00:07:57] Speaker 03:
Whether Nakahawa discloses a silicon substrate embodiment.

[00:08:00] Speaker 03:
If you didn't raise it, you forfeit it.

[00:08:02] Speaker 03:
It's not surprising there's not a finding by the board.

[00:08:04] Speaker 03:
So then the next step would be does Nakahawa

[00:08:09] Speaker 03:
decide, disclose a silicon substrate embodiment.

[00:08:12] Speaker 03:
That is a quintessential question of fact.

[00:08:14] Speaker 03:
And by the way, if I reach it, I'm going to find it does.

[00:08:16] Speaker 03:
Let me give you a couple paragraphs.

[00:08:18] Speaker 03:
How about paragraph 73, 176, 181, and 202, where Nakahawa discloses it all over the place.

[00:08:24] Speaker 03:
If the board needed to, it could have easily pointed to any of these paragraphs to satisfy the concern you're raising on appeal.

[00:08:31] Speaker 03:
You're right.

[00:08:31] Speaker 03:
They didn't point to these paragraphs because you didn't raise the issue.

[00:08:35] Speaker 03:
But if they did raise the issue,

[00:08:36] Speaker 03:
I feel like you would have lost on the merits pretty clearly.

[00:08:39] Speaker 03:
So what exactly is it you want me to do?

[00:08:41] Speaker 03:
I don't understand.

[00:08:42] Speaker 02:
So I think we disagree that there would, of course, be a finding that Nakahata

[00:08:51] Speaker 02:
does disclose the silicon substrate, and the reason being necessarily discloses.

[00:08:57] Speaker 02:
And I think that's what we're trying to communicate here, Your Honors, is that there's no finding that this is all based on, the entire thing is based on an assumption.

[00:09:08] Speaker 02:
The entire obviousness analysis is based on an assumption.

[00:09:11] Speaker 02:
And it's not necessarily true.

[00:09:14] Speaker 04:
What do you want us to do, to remand to the board to consider this issue, which you didn't raise in the first place?

[00:09:20] Speaker 02:
Well, you know, I think it's not just this issue though, because we have two issues.

[00:09:25] Speaker 04:
No, no, what do you want us to do?

[00:09:27] Speaker 04:
You want us to decide the issue as a matter of fact, or you want us to remand, or what do you want?

[00:09:32] Speaker 02:
I mean, we're asking for a reversal because of, yeah, and not just on this issue, but also on the motivation to come by an issue.

[00:09:41] Speaker 01:
OK, so turning to that issue, can you point us to where in your briefing before the board you challenged the motivation to provide an issue that you're raising on appeal here?

[00:09:48] Speaker 02:
So we challenged it in, and I'll again turn to page 702 of the appendix, where that's our appeal brief.

[00:09:57] Speaker 02:
And in that appeal brief, right off the bat, we talk about hindsight.

[00:10:01] Speaker 02:
And this is hindsight that we have continuously raised.

[00:10:05] Speaker 02:
to the examiner on multiple occasions and then again raised it in our appeal brief.

[00:10:10] Speaker 02:
And it just was not addressed.

[00:10:12] Speaker 02:
What ended up happening is that in the decision on appeal, the board adopted the

[00:10:20] Speaker 02:
examiner's Findings there were two very conclusory findings that we just don't that that both touch on hindsight the first one is that It's their examiner essentially just says it's disclosed and I think a good example of this your honors in the appendix is on pages 745 and 752 when you're in 745 in the appendix you will see and I

[00:10:50] Speaker 02:
In 745 in the appendix you're going to see where the examiner is walking through in its examiner's answer the basis for the obviousness combination.

[00:11:06] Speaker 02:
And actually, I apologize, it's 743.

[00:11:11] Speaker 02:
And as you can see, as the examiner walks through the combination, what the examiner does is then ends with, look, Whiston discloses the trench isolation region.

[00:11:23] Speaker 02:
but does not actually make a connection between disclosing the trench isolation region and anything with respect to Nakahada.

[00:11:32] Speaker 02:
And then if you turn to page 752, Your Honors, in the appendix, right there the examiner expressly says,

[00:11:41] Speaker 02:
and compares the Wiston and the choice of choosing Wiston and the Locus to the same process used by applicant that's in the middle of page 752.

[00:11:52] Speaker 02:
And so our hindsight argument is directly reflective of what was going on during prosecution.

[00:11:58] Speaker 02:
These are repeats of what was happening during prosecution.

[00:12:02] Speaker 02:
And it was not addressed at all by the board.

[00:12:05] Speaker 02:
And then the other issue here, Your Honor, is the only other thing that the examiner raised

[00:12:10] Speaker 02:
was low cost, and there's nothing to substantiate low cost alternative in the record.

[00:12:18] Speaker 02:
In fact, the only thing in the record that actually says anything about low cost is if you were to go to page 202 of the appendix, it's the very last sentence, and this is in the applicant's

[00:12:31] Speaker 02:
specification is that's the only place it refers to low cost, and it's with respect to what applicant is doing.

[00:12:38] Speaker 02:
So we think there's a hindsight issue here.

[00:12:40] Speaker 02:
It had been raised several times.

[00:12:42] Speaker 02:
The board, the examiner maintained the same two conclusory bases for the motivation to combine, and we think that it's just not supported by substantial evidence.

[00:12:57] Speaker 02:
And with that, I'll hold the remainder of my time.

[00:13:17] Speaker 00:
Good morning, Your Honor.

[00:13:18] Speaker 00:
I just want to please support Monica Lateef on behalf of the Director of the USPTO.

[00:13:24] Speaker 00:
Based on the conversation that was had with my co-counsel, I just want to reiterate that both of these positions that EXPAD is presenting have, in fact, been forfeited.

[00:13:34] Speaker 00:
But to touch a little bit, because Chief Judge Moore sort of pointed out that

[00:13:38] Speaker 00:
the silicon is shown in the specification for wisdom.

[00:13:44] Speaker 00:
So I think if I could, I'd like to focus my argument on what's going on with the motivation to combine, if there are no questions on that piece.

[00:13:52] Speaker 00:
So with respect to the motivation to combine, we also say that that was a forfeited argument.

[00:13:56] Speaker 00:
If you look at the argument that Exfag presented, they talked about hindsight, but they never actually gave a reason why there was something wrong with the low-cost finding, nor did they give a reason why there's something wrong with replacing the deposition of Nakahata with the local oxidation of wisdom.

[00:14:12] Speaker 00:
You can't just say, we disagree with this motivation combined as the applicant.

[00:14:16] Speaker 00:
You need to look at what the examiner's rejection is and say, well, you made this finding.

[00:14:21] Speaker 00:
This is why this finding is wrong.

[00:14:23] Speaker 00:
Instead, they just came and said, well, there's a hindsight issue.

[00:14:27] Speaker 00:
And in making that hindsight argument, what they actually argued was the missing limitation.

[00:14:32] Speaker 00:
It's couched as though it's a motivation problem.

[00:14:36] Speaker 00:
But if you actually read the words in that section, they're saying there's a problem with hindsight because it's lacking the trench isolation region.

[00:14:44] Speaker 00:
So it's never really addressing motivation.

[00:14:47] Speaker 00:
So that is why we believe that was a forfeited argument.

[00:14:50] Speaker 00:
And as a result, this is not something that this court can consider.

[00:14:54] Speaker 00:
So we would ask that you affirm the board's decision.

[00:14:59] Speaker 00:
And if there are no questions,

[00:15:02] Speaker 00:
Thank you.

[00:15:19] Speaker 02:
So turning back towards the forfeiture issue and why we think that

[00:15:26] Speaker 01:
Can you respond to the specific argument that was just made in terms of the hindsight areas that you point us to really are not talking about what they shouldn't buy?

[00:15:36] Speaker 02:
Sure, so we think in general when referring to hindsight that that is in effect referring to motivation to combine because what that's saying is that the motivation to combine is not permissible because all it's doing is looking back towards what is happening in the application itself and not... Do you agree with what opposing counsel said in terms of the hindsight argument being focused on a missing limitation as opposed to being focused on motivation to combine?

[00:16:07] Speaker 02:
I don't agree that it was focused on a missing limitation.

[00:16:12] Speaker 02:
I think that the way that it was raised in general, and if we turn for example to page 703 and 702 of the appendix, we say that

[00:16:28] Speaker 02:
Under the hindsight, we say there's no disclosure, and that the only way that there can of the trench isolation regions, and that the only way that there can be disclosure of the trench isolation region in the prior art is the only logical jump, as we say, is by reliance on the disclosure from the specification, which is improper.

[00:16:51] Speaker 02:
And so I don't think it's focused on a missing limitation.

[00:16:54] Speaker 04:
It's not tied to motivation.

[00:16:59] Speaker 04:
Your hindsight argument.

[00:17:01] Speaker 02:
I mean, I think that in general, raising hindsight would necessarily tie it to motivation to combine, because it's saying there's an impermissible motivation to combine.

[00:17:12] Speaker 02:
Do you have any case law to support what you're saying?

[00:17:17] Speaker 02:
I don't believe there's any case in the record on that point, Your Honor.

[00:17:23] Speaker 02:
Unless Your Honors have any other questions.

[00:17:25] Speaker 02:
OK.

[00:17:25] Speaker 02:
I think with counsel, this case is taken under submission.

[00:17:28] Speaker 02:
Thank you.