[00:00:37] Speaker ?: My hand hurts. [00:01:20] Speaker 03: Okay, the next case is number 15-12-64 in Real Saba, Mr. Dougherty. [00:01:49] Speaker 02: Good morning. [00:01:51] Speaker 02: I'm David Dougherty, and I represent Chica Latifah Al-Sabah. [00:01:58] Speaker 02: Chica Latifah Al-Sabah is the inventor of a design. [00:02:03] Speaker 02: This design is covered in a design patent, which is essentially the drawing, but somewhat enlarged. [00:02:14] Speaker 02: Today, the sole issue before this court is whether or not that patent is directed to statutory subject matter. [00:02:27] Speaker 02: Our position, of course, is that it is. [00:02:31] Speaker 02: And this belief is supported by 37 CFR 171. [00:02:35] Speaker 02: 37 171 states [00:02:44] Speaker 02: that you must have a description of the invention. [00:02:48] Speaker 02: There is the description. [00:02:51] Speaker 00: And it goes further. [00:02:52] Speaker 00: Let me ask you, I give you here that there's copyrightable material and it's probably a clever teaching tool. [00:03:03] Speaker 00: The question is why is it that there was no claim to even the use on a computer format or use as with respect to some kind of board. [00:03:19] Speaker 00: I mean all it was is one sheet that showed on the face of it the description of the information that would go into some kind of teaching aid. [00:03:30] Speaker 00: Would it have been pretty simple to describe something that the teaching aid would be attached to? [00:03:36] Speaker 02: It would be. [00:03:38] Speaker 02: But we believe we did. [00:03:40] Speaker 02: And the statute required that we enable a person of ordinary skill in the art. [00:03:48] Speaker 02: And that's very important to our argument. [00:03:51] Speaker 02: It's a person of ordinary skill in the art. [00:03:55] Speaker 02: That is, in our opinion, someone with a bachelor's degree in education and an understanding of teaching foreign languages. [00:04:06] Speaker 00: Okay, so what did you enable them to do? [00:04:09] Speaker 02: We enabled them to make and use the invention. [00:04:15] Speaker 00: Right, you enabled them to use the information? [00:04:18] Speaker 00: Yes. [00:04:19] Speaker 00: In what format? [00:04:20] Speaker 00: In a teaching aid. [00:04:23] Speaker 00: Okay, give me an example. [00:04:25] Speaker 00: Pardon? [00:04:25] Speaker 02: Give me an example. [00:04:29] Speaker 02: A far out example would be a truck body. [00:04:34] Speaker 02: If we reproduce that on a truck body and park the truck underneath the window of the classroom, it's a teaching aid. [00:04:46] Speaker 02: It's something to help a student remember. [00:04:52] Speaker 02: And that's all it is. [00:04:56] Speaker 02: And anyone who is skilled in the art would look at that and say, that's a teaching aid. [00:05:05] Speaker 02: So therefore, since we have fully complied with the statute. [00:05:10] Speaker 00: But when it was rejected, why didn't you go back and amend the application to simply identify some physical teaching aids that could be used? [00:05:22] Speaker 02: The patent office would have rejected that on the basis that it's new matter. [00:05:32] Speaker 02: I don't believe it would be, but it could have been done and I should have done it. [00:05:39] Speaker 02: But that, in this case, the patent has been rejected on the basis that this is not statutory subject matter. [00:05:50] Speaker 03: Because as a design patent, you didn't show the device. [00:05:57] Speaker 02: to which the design is applied other than a piece of paper, or the teaching aid is embodied in what we showed. [00:06:05] Speaker 02: It's inherent. [00:06:07] Speaker 02: How can you do that? [00:06:08] Speaker 04: It would also apply if, as a teaching aid, you said to someone, memorize that and carry it around in your head. [00:06:15] Speaker 02: They can do that, but no one knows exactly what is in somebody else's head. [00:06:22] Speaker 02: And how can that be used to help a student? [00:06:28] Speaker 04: Well, you put it in your head and then someone can, because it's in their head, they can speak it to someone else and tell them it should be in their head if they're any good at memorizing it. [00:06:38] Speaker 04: And then your patent would be able to be enforced not against an article of manufacture, but against a metal process. [00:06:45] Speaker 04: you'd be able to sue people for infringing your design patent because they'd memorized it. [00:06:50] Speaker 04: How could you ever communicate? [00:06:53] Speaker 04: Well, the... Isn't that right? [00:06:57] Speaker 04: You'd have a scope of coverage of your patent that would reach beyond an article of manufacture. [00:07:06] Speaker 04: Well, all we wanted to cover was an article of manufacture. [00:07:11] Speaker 04: But instead of showing hatch marks or something like that, very simply in order to, the case law that you depend on differs from you because their design had some hatch marks that showed a little bit of depth, if you would, for the paper. [00:07:27] Speaker 02: That's true. [00:07:30] Speaker 02: All we have to do is teach a person of ordinary skill. [00:07:36] Speaker 02: And a person of ordinary skill who looks at that is going to say it's a teaching aid. [00:07:45] Speaker 00: This blow up that you have here is not even something that was identified in the application. [00:07:52] Speaker 02: No, but that is a duplication in enlarged scale. [00:07:59] Speaker 02: That is exactly the drawing that was shown. [00:08:03] Speaker 02: The person could tear the back page of the patent office, which was the drawing. [00:08:10] Speaker 00: But you didn't show any edge lines. [00:08:12] Speaker 00: You didn't say, this is a teaching aid and we claim it in the format of a 12 by 14 blow up on a poster board with the ability to present it on the side of a truck or wherever. [00:08:28] Speaker 00: You didn't make any of those claims. [00:08:30] Speaker 00: We did not. [00:08:33] Speaker 03: But you couldn't have done a design patent. [00:08:36] Speaker 03: It's just that the design is shown. [00:08:39] Speaker 03: And you're restricted from describing. [00:08:42] Speaker 03: One wonders at the choice of a design patent rather than a utility patent. [00:08:51] Speaker 02: We have a utility patent that is also on appeal. [00:08:57] Speaker 02: Application. [00:08:59] Speaker 02: We did both. [00:09:00] Speaker 02: We covered it as a design and we covered it as a utility invention. [00:09:09] Speaker 03: The design depends on the Arabic script also, is that right? [00:09:16] Speaker 03: Yes. [00:09:17] Speaker 03: So it seems could be very easily avoided. [00:09:21] Speaker 02: That's true. [00:09:23] Speaker 02: If you scramble the letters, it doesn't infringe. [00:09:29] Speaker 02: If you make different groups with different letters in them, that is not covered. [00:09:36] Speaker 02: But all we have asked for is this specific design. [00:09:44] Speaker 02: And we believe it's inherent or it's embodied in the design. [00:09:52] Speaker 02: And it's clearly disclosed as a teaching aid for teaching Arabic. [00:09:59] Speaker 02: And that, we believe, will enable a person of ordinary skill in the art [00:10:06] Speaker 02: practice, to use and practice the invention, which is what the Statute 171 says, you must enable a person of ordinary skill in the art to make and use the same. [00:10:28] Speaker 00: The reason that there's an Article of Manufacture requirement is that there needs to be a distinction between a design patent and a pure copyrightable material, and that the only way you come within the bounds of something that could be covered by the patent laws is if you identify an Article of Manufacture, which you could have done with dotted lines or shading, [00:10:53] Speaker 00: or even the side of a truck as you say. [00:10:56] Speaker 00: So what I'm trying to understand is why you think we can simply give you sort of a design patent on some copyrightable information because otherwise we would have to give everybody who has a picture [00:11:13] Speaker 00: could be entitled to a cat. [00:11:14] Speaker 02: No, because we have a specific design. [00:11:20] Speaker 02: It is this arrangement of letters, of Arabic letters. [00:11:27] Speaker 02: If you just have a scrambled picture of those letters rearranged, that is not a teaching aid. [00:11:39] Speaker 02: It is not our teaching aid. [00:11:41] Speaker 02: We have only asked for a patent on this arrangement of letters as shown and described. [00:11:53] Speaker 04: So on your theory, if you were to prevail, there'd have to be a revision of the MPEP about how examiners are going to review a design patent because they'll need to ask this enablement question. [00:12:07] Speaker 04: But they're not currently asking. [00:12:09] Speaker 02: That could be true. [00:12:11] Speaker 02: That's very properly... Is that a good idea? [00:12:17] Speaker 04: That I don't... And then we'll have litigation here in the future over whether or not the examiner was correct when the examiner said this would or would not enable. [00:12:28] Speaker 04: It seemed to me that it was in search of a simple way here to square up this application with even the cases you rely on by having shading or something like that that makes it clear to everyone. [00:12:41] Speaker 04: That's not something that would go around in somebody's head that would be attached to an article. [00:12:48] Speaker 02: That could be changed, but it is this specific design and this arrangement that we claim [00:12:58] Speaker 02: as a teaching aid. [00:13:01] Speaker 02: If you change the arrangement of those letters, it's a different design. [00:13:10] Speaker 04: Well, that's true with any design. [00:13:13] Speaker 04: If you change the design, it's a different design. [00:13:15] Speaker 02: We believe that if you accept the rule of the examiner and the board, the Patent Office Trial and Appeal Board [00:13:26] Speaker 02: will have overruled the legislature. [00:13:30] Speaker 02: They will have overruled this court who has affirmed design patents because any design patent, it must have a description, namely a drawing. [00:13:45] Speaker 02: And if you look at a drawing, anyone can imagine it in their head or visualize it in their head. [00:13:55] Speaker 02: So they have rejected it on a basis that every design patent, every issue is invalid. [00:14:03] Speaker 00: What if you asked for a design patent and all you did was lay out the ABCs and you just put ABCDES and you said it's a teaching aid? [00:14:14] Speaker 02: To me that is not a teaching aid. [00:14:17] Speaker 02: Why? [00:14:19] Speaker 02: For example, [00:14:21] Speaker 02: Here a student can remember the one letter in the first group, the plurality of letters in the second group. [00:14:34] Speaker 02: That gives structure, more structure, and that can be used as a teaching aid. [00:14:42] Speaker 00: Well this is a much more complex list of, what you say is all it is is a list of letters. [00:14:50] Speaker 00: Right, the ABCs for a toddler is just a list of letters. [00:14:56] Speaker 00: So I can imagine a thousand ways in which I can use the ABCs to teach a toddler their ABCs. [00:15:03] Speaker 00: So why isn't it that anybody who wants to patent the ABCs could do that? [00:15:09] Speaker 02: They could if they make a specific design that is not suggested by any choir art. [00:15:20] Speaker 00: and it doesn't have to be attached to anything. [00:15:22] Speaker 00: It doesn't have to be attached to anything and just be a series of letters. [00:15:27] Speaker 02: It has to be attached to a substrate. [00:15:30] Speaker 02: How? [00:15:31] Speaker 02: For two things, there must be a substrate and there must be contrast. [00:15:38] Speaker 02: If you do the drawing and the contrast behind it is the exact same color, you can't see it. [00:15:49] Speaker 02: It's invisible. [00:15:56] Speaker 02: And as pointed out in the original brief, if there's no contrast, you can't see it. [00:16:05] Speaker 02: It's not a teaching aid. [00:16:09] Speaker 02: And it wouldn't be recognized as a teaching aid. [00:16:13] Speaker 02: It couldn't be used as a teaching aid. [00:16:17] Speaker 02: We have a specific arrangement of letters. [00:16:24] Speaker 02: And that's what we're asking to cover. [00:16:28] Speaker 02: And we show, if you look at the patent application, the drawing, the design is embodied in the drawing. [00:16:45] Speaker 02: It's inherent from the drawing. [00:16:48] Speaker 03: you've told us that you also have the utility patent application. [00:16:53] Speaker 03: I assume also a copyright application. [00:16:56] Speaker 03: No, we did not file the copyright. [00:16:59] Speaker 03: Well, it doesn't have to be filed anyway. [00:17:01] Speaker 03: I appreciate that. [00:17:03] Speaker 03: Okay. [00:17:04] Speaker 03: Thank you, Mr. Doherty. [00:17:05] Speaker 02: It was my mistake. [00:17:07] Speaker 03: Well, I don't know. [00:17:08] Speaker 03: I don't know. [00:17:09] Speaker 03: It doesn't have to be filed until it's infringed. [00:17:12] Speaker 03: Thank you, Mr. Doherty. [00:17:14] Speaker 02: Thank you. [00:17:22] Speaker 01: I think my co-counsel said it best when he said that his design must be attached to something. [00:17:32] Speaker 01: I think a better way to phrase that is under 35 U.S.C. [00:17:36] Speaker 01: 171, a design patent must be applied to or embodied in an article of manufacture. [00:17:44] Speaker 01: If you look at the title of this application and the claim, it generally describes a teaching aid for teaching Arabic. [00:17:51] Speaker 01: But then when you turn to the drawing, Al-Sabah has not shown her design applied to a teaching aid. [00:17:58] Speaker 01: Looking at the drawing, the design is not applied to any article of manufacture. [00:18:02] Speaker 01: It's sort of an abstract design or a picture standing alone. [00:18:06] Speaker 01: And this court's predecessor, Henry Schnell... Okay, so it's not standing alone. [00:18:11] Speaker 03: It's on a piece of paper. [00:18:13] Speaker 03: And this is the teaching aid. [00:18:15] Speaker 01: that argument that's on a piece of paper doesn't work either because again if you look at the title of the application and you look at the claim of the application there is no mention of paper as required under 37 CFR 1.153 and then if you turn to the drawing the drawing doesn't show the claim design applied to paper rather paper is just the median that [00:18:38] Speaker 01: Alcaba filed her application with the USPTO. [00:18:41] Speaker 00: We're just missing a few dotted lines or maybe a little bit of shading. [00:18:44] Speaker 00: Is that what you're saying? [00:18:45] Speaker 01: Well, there are plenty of ways it could have been done. [00:18:47] Speaker 01: I'm basically saying there's no way for the office to look at this design and determine what the article manufacturer is. [00:18:55] Speaker 01: It could be done with some dotted lines. [00:18:57] Speaker 01: It could be done with different elevational views. [00:18:59] Speaker 01: It can be done with shading. [00:19:00] Speaker 01: There's probably numerous ways that weak [00:19:03] Speaker 01: that Elsevac could have shown the USPTO how this is applied to some article manufacturer, but that wasn't done here. [00:19:10] Speaker 03: But once you put in the dotted lines, you're limited to the particular article of manufacture that you've applied it to. [00:19:18] Speaker 03: Isn't that correct? [00:19:20] Speaker 03: Let's say they put it on the side of a truck. [00:19:23] Speaker 03: So there are dotted lines showing the truck with this design on it. [00:19:30] Speaker 03: If you [00:19:32] Speaker 03: change the truck to a lawn mower. [00:19:36] Speaker 03: For instance, you have no protection. [00:19:40] Speaker 01: You could file a design patent for a lawn mower, but in that particular application you wouldn't, no, because your application was directed to that particular article manufacturer. [00:19:49] Speaker 01: However, if you wanted to have your design applied to multiple articles of manufacture, you can do that. [00:19:56] Speaker 01: You'd have to list them in the title, you'd have to list them in the claim, and you'd have to provide drawings that let the public know the various ways that you are applying your design. [00:20:07] Speaker 03: Is this a school room with teaching aid? [00:20:09] Speaker 03: How do you demonstrate by dotted lines that it's somewhere in the school room? [00:20:17] Speaker 01: Well, you'd have to select an article manufacturer. [00:20:20] Speaker 01: Somewhere in the school room, we'd have to pick an article manufacturer. [00:20:23] Speaker 01: So if you wanted, let's say, a poster, I'm selecting something. [00:20:27] Speaker 01: But it could be any article manufacturer. [00:20:29] Speaker 03: So you show it attached to a support the way it is there, and you now have the design decorating the support. [00:20:39] Speaker 03: I'm looking at the design adding its design to the rack that it's standing on. [00:20:49] Speaker 04: Then you would be limited if you said my teaching aid is on that particular type of a support. [00:20:56] Speaker 04: That's how I show it. [00:20:57] Speaker 04: Then you'd be limited. [00:20:58] Speaker 04: It isn't your point that there's a public notice factor here to the claims. [00:21:03] Speaker 04: then the applicant is supposed to tell the world the article or articles to which the design will be attached. [00:21:09] Speaker 01: That's correct. [00:21:10] Speaker 04: So that would be infringer knows when they're going to be in trouble. [00:21:13] Speaker 01: Right. [00:21:13] Speaker 01: That's correct, Your Honor. [00:21:14] Speaker 01: And the office isn't in the habit of patenting abstract designs. [00:21:17] Speaker 01: I mean, we need to understand what your design is applied to. [00:21:22] Speaker 00: five four one patented a one oh one the appendix I don't really understand why that frankly it seems to show less information rather than more than why is that patentable whereas this one is not. [00:21:40] Speaker 01: Well your honor if you look at a one oh one for example you can see [00:21:45] Speaker 01: shading which kind of shows that it's embodied within something. [00:21:50] Speaker 01: And if you turn to 102 and you look at figures four and figures five, it's showing you different viewpoints of the article of manufacture as opposed to a design. [00:22:00] Speaker 00: And then again, if you look at... I don't understand that though. [00:22:04] Speaker 00: Tell me what the article of manufacture is in this case. [00:22:07] Speaker 01: Well, the examiner found it to be a game board. [00:22:09] Speaker 01: And so if you're looking at figure four or figure five and it's turned, then you're looking at the [00:22:15] Speaker 01: seems to be the side elevational view in figure four and figure five is a front elevational view. [00:22:24] Speaker 01: So if you can imagine, you know, like a shootin' letter or a thin game board, that's what you would be looking at. [00:22:29] Speaker 04: And even in figure... Figure two, what are the dotted lines on the far right? [00:22:36] Speaker 04: Figure two, that looks to be... Figure that's on page 103? [00:22:39] Speaker 01: Yeah, that seems to be some shading to show surface. [00:22:43] Speaker 04: And the three dots, right? [00:22:46] Speaker 04: Two dots. [00:22:48] Speaker 01: Oh, I see what you're talking about. [00:22:49] Speaker 04: On the far right side of the drawing, you have a broken line in several places. [00:22:56] Speaker 01: Yeah, I see what you're talking about. [00:22:59] Speaker 01: I'm not 100% sure what those little lines are showing, but in design patents, when you have broken lines, you're showing environment. [00:23:08] Speaker 01: You're showing a part of the article manufacturer that's not [00:23:12] Speaker 01: that you're not claiming in the design. [00:23:14] Speaker 01: So it's giving environmental perspective. [00:23:18] Speaker 00: I don't understand what these little shading marks are in any of these figures. [00:23:22] Speaker 00: What does that add? [00:23:23] Speaker 01: To show surface. [00:23:26] Speaker 01: Like there's maybe a different texture than the design. [00:23:32] Speaker 01: It's on something. [00:23:33] Speaker 01: To show that it is sitting on something. [00:23:35] Speaker 01: It's not. [00:23:35] Speaker 00: So all we had to do was put a little design, a little shading in those lists. [00:23:42] Speaker 01: I would. [00:23:43] Speaker 01: what you know what i had to do somehow let the u p p you know what are committed to simply explain that why didn't why didn't examiner work with them to understand so that you can understand what it is you need to do with the man made a rejection letting them know that it wasn't applied to an article manufacturer and the applicant can then usually have offered something up as an article manufacturer as we stand here today the offer was a truck. [00:24:09] Speaker 04: Does the AMPAP give any guidance about trading and that sort of thing? [00:24:13] Speaker 01: It does, Your Honor. [00:24:15] Speaker 04: What does the MPEP say to help out applicants to know how to avoid this problem? [00:24:23] Speaker 01: Well, the MPEP goes into a lot of discussion about the fact that it needs to be applied to an article of manufacture. [00:24:31] Speaker 01: I'm just trying to find the section. [00:24:34] Speaker 01: I know that it talks about [00:24:37] Speaker 01: how to show your drawing. [00:24:39] Speaker 04: That's what I was curious about. [00:24:41] Speaker 01: Yes. [00:24:42] Speaker 01: Just give me one second, Your Honor. [00:24:53] Speaker 01: Your Honor, I'm not 100% sure what section of the MPEP that is at the moment, but what I can say is that there is, in our regulations, we also talk about how you can show your drawings. [00:25:04] Speaker 01: properly in terms of following broken lines or dotted lines or solid lines under 37 CFR 1.152. [00:25:35] Speaker 01: So it says, the design must be represented by a drawing that complies with the requirements of 1.84, must contain a sufficient number of views to constitute a complete disclosure of the appearance of the design, and then to get to your point about lining, it says solid black surface shading is not permitted except when used to represent the color black as well as color contrast. [00:26:02] Speaker 01: Broken lines may be used to show visible environment structure. [00:26:05] Speaker 01: but they may not be, it goes on. [00:26:07] Speaker 01: I can read it, but it's very long. [00:26:09] Speaker 01: It's talking about how you can draw your design so that they can be. [00:26:15] Speaker 04: But what I'm getting at is what happens to those regulations if we rule against the office here. [00:26:22] Speaker 04: I mean, it seemed to me that the rejection by the examiner was because I can't tell what type of article you're trying to attach this to. [00:26:31] Speaker 04: Please do something, and you have regulations that tell you how to do it. [00:26:35] Speaker 04: Right? [00:26:36] Speaker 01: Yes, Your Honor. [00:26:39] Speaker 04: What's going to happen in the BTO if we rule in favor of the appellate here and you say you don't have to worry about any of these things? [00:26:49] Speaker 01: Well, we'd have to go back and figure out how to respond, depending on the ruling and how it's framed. [00:26:55] Speaker 01: But that would be a problem, because it doesn't just come from our regulations, it also comes from the statute. [00:27:00] Speaker 01: I mean, the statute tells you that you have to apply your design to an article manufacturer. [00:27:05] Speaker 01: The regulations explain how it is that you can do that. [00:27:10] Speaker 01: So it would be a bigger problem than us. [00:27:13] Speaker 01: We'd have to figure out how to reinterpret the statute as well. [00:27:19] Speaker 01: And so just in conclusion, because Alciba's design is not applied to a manufacturer, and it is an article manufacturer, and it is just a design standing alone, which is not in compliance with 35, I'm sorry, 35 USC 171, I respectfully ask that this court affirm the board's decision. [00:27:40] Speaker 04: Well, what about Mr. Alciba's argument that patent has to be enabled? [00:27:46] Speaker 04: And if this patent, if a person of ordinary skill would enable this patent by using it as an article of manufacture, by putting it on an article of commerce, that satisfies the test. [00:27:59] Speaker 04: And that's what I understand to be his argument. [00:28:02] Speaker 01: Right. [00:28:03] Speaker 01: But the problem is before we even get there, we have to figure out whether or not this is patentable. [00:28:08] Speaker 01: We didn't even touch on enablement because the first rejection the examiner made is that this is not a patentable design because it is not applied to... So you're saying you can't use the enablement requirement to shoehorn yourself into patentable subjects. [00:28:22] Speaker 01: Yes, Your Honor. [00:28:25] Speaker 01: You can look at this and immediately say, this is not patentable. [00:28:29] Speaker 01: We do not protect pictures standing alone via design patents. [00:28:33] Speaker 01: We do not protect abstract ideas at the USPTO. [00:28:37] Speaker 03: Okay, anything else from the secretary? [00:28:40] Speaker 03: Okay, thank you. [00:28:42] Speaker 03: Thank you, Mr. Darley. [00:28:44] Speaker 03: You waved rebuttal. [00:28:45] Speaker 03: Are you content with that? [00:28:46] Speaker 03: Do you need the last word? [00:28:51] Speaker 03: I know that you said that you said your piece. [00:28:55] Speaker 03: Okay, the case is taken under submission. [00:28:57] Speaker 03: That concludes this morning's argument.