[00:00:20] Speaker 03: Mr. Paul, whenever you're ready. [00:00:22] Speaker 03: Good morning, Your Honors, and may it please the Court. [00:00:24] Speaker 03: Under the Lowry, the printed matter doctrine applies to the novel arrangements of printed minds or characters useful and intelligible only to the human mind. [00:00:33] Speaker 03: Our claimed web assets do not meet that definition. [00:00:37] Speaker 03: In King Pharmaceuticals, this court expanded that definition. [00:00:41] Speaker 02: Can I ask? [00:00:43] Speaker 02: Let me just say how I'm thinking about it, and then you can tell me. [00:00:46] Speaker 02: It seems to me you're biting off way more than you need to bite off here. [00:00:51] Speaker 02: OK. [00:00:51] Speaker 02: Why isn't a simple proposition on which reversal of the board on printed matter would be required is that the printed matter exception requires a necessary but not sufficient condition that the element at issue [00:01:07] Speaker 02: the particular expressive content of some expression. [00:01:12] Speaker 02: This doesn't. [00:01:13] Speaker 02: And in particular, the origin of an expression is not the expressive content. [00:01:20] Speaker 02: It doesn't matter whether the reader is a computer or a human being. [00:01:25] Speaker 02: Origins of the expression are not part of the communicative content. [00:01:32] Speaker 02: And as far as I can tell, the printed matter doctrine has never been applied except when what is being claimed is the particular communicative content. [00:01:46] Speaker 02: If it is, then there are some exceptions, and it can be a functional relation. [00:01:53] Speaker 03: I guess... I think I'm having trouble understanding your distinction. [00:02:01] Speaker 01: Your patent doesn't claim any particular printed matter. [00:02:05] Speaker 01: No. [00:02:05] Speaker 01: Well, we're... Well, isn't that the end of the... I think that's the question. [00:02:11] Speaker 01: When it doesn't claim particular printed matter, but refers to the origins of different types of printed matter, that's not printed matter itself. [00:02:21] Speaker 03: I agree, and I agree that in the very first part of our appeal brief, we stated that print matter doctrine applies to printed lines or characters of musical intelligence only to human mind. [00:02:34] Speaker 02: Claim that do not, and therefore that's enough to reverse. [00:02:38] Speaker 02: That seems to me a broader proposition than the proposition you need, because that proposition would exclude content readable by a computer. [00:02:49] Speaker 02: Well, that's a more difficult proposition to sustain than the narrower proposition that an element that does not claim the content of a communication is not an element to be ignored under the Brinkett Matter Doctrine. [00:03:09] Speaker 02: Regardless of who the receiver of the content is, it just doesn't apply to that. [00:03:16] Speaker 03: Certain content can be given patently. [00:03:20] Speaker 03: For example, if the content of a data structure is the amount of users using a particular server and you're doing load balancing, so you have [00:03:35] Speaker 03: One server is load balancing, 10 other servers, because you have 100,000 users using it, and you have to balance them out there. [00:03:45] Speaker 03: That's informational content. [00:03:47] Speaker 03: And I believe that, if claimed as a data structure, that informational content is the number of users attempting to access this server. [00:03:59] Speaker 03: Well, yeah, that should be giving the panel a wait. [00:04:02] Speaker 03: Again, I'm just [00:04:06] Speaker 03: your point is throwing me for a loop. [00:04:12] Speaker 03: Why are you pushing back? [00:04:16] Speaker 01: I'm just trying to understand. [00:04:20] Speaker 01: At least in your brief you're trying to argue for the big broad rule that [00:04:26] Speaker 01: the printed matter doctrine can apply to computers. [00:04:29] Speaker 01: And I think what she's telling you is, we're not going to buy that argument, because you have a much simpler, more narrow argument that you should win on. [00:04:37] Speaker 03: Yeah, and I believe that the printed matter can apply to computers if it's directed to the underlying content, and that's what was said by this court in Lowry. [00:04:50] Speaker 03: in which they stated these claims are not directed to the underlying content. [00:04:55] Speaker 03: For example, by way of an example, an audio file is a data structure. [00:05:06] Speaker 03: It explains to the computer, this is what it is, this is how it should be operated on. [00:05:11] Speaker 03: Whereas if the data structure is, if the audio file is the star spangled banner, the star spangled banner part of it is the underlying content, and that shouldn't be given patable weight. [00:05:26] Speaker 03: our claims aren't directed to that underlying content. [00:05:28] Speaker 04: Can I just move you on ahead, which is if indeed some of the contents here were to result in a reversal of the board here, what is your view as to how we proceed? [00:05:42] Speaker 04: This case has been going on for over 10 years, but would the reversal on the Trinted Matter doctrine [00:05:49] Speaker 04: question result in your view result in a remand so that the board could revisit this question. [00:05:56] Speaker 03: The board can revisit it and if the board chooses, yes of course the board can revisit the issue depending upon what this court states and if the board does reverse and does send it back to the examiner, the examiner is not prevented from reopening prosecution. [00:06:13] Speaker 03: The MPP [00:06:15] Speaker 03: 121-14.04 specifically permits the examiner where there are situations where prior art that indicate unpatentability of the subject matter, they can request to reopen prosecution. [00:06:28] Speaker 03: So even if we do get a reversal here, there's no guarantee that we're going to get a patent. [00:06:37] Speaker 02: So you think that even if we reversed on claim 24, we should go on to review the claim construction [00:06:45] Speaker 03: That's not necessary. [00:06:47] Speaker 02: Not necessary. [00:06:48] Speaker 03: I mean, it's necessary if the... I'm going to agree that it's not necessary. [00:06:58] Speaker 02: We have a certain amount of discretion about whether it would be prudential to decide an issue that might well come up on remand. [00:07:07] Speaker 02: Would it be a good idea for us to address that? [00:07:11] Speaker 03: I believe the brief stands for itself, but if you have any questions, I would be more than happy to answer them. [00:07:17] Speaker 02: Your argument, at least as I understand it, rests pretty heavily, and maybe this is perfectly sufficient, I guess, on a combination of two things. [00:07:30] Speaker 02: One, that a search request, at least implicitly, [00:07:36] Speaker 02: entails identification of a criterion for the recipient of the request to use to compile the list. [00:07:45] Speaker 02: That's not the same as picking things already on a list. [00:07:50] Speaker 02: And second, that a number of picking things on a list [00:07:56] Speaker 02: descriptions in the specification are fully accounted for by the specifications acknowledgement that sometimes searches don't need to be performed and those would be examples where searches are not being performed. [00:08:12] Speaker 03: The example in the specification that talks about where searches are not performed, they're actually in re-reading it and I made this point in the [00:08:26] Speaker 03: is there actually, there isn't a criteria involved. [00:08:29] Speaker 03: The criteria is, you know, is it a sound file or what have you. [00:08:34] Speaker 03: There is, even where there's quote unquote no search being involved, there is still a criteria. [00:08:39] Speaker 03: And so that language, again written some 14, 15 years ago, isn't exactly accurate in determining what the search, you know, a search still requires a criteria. [00:08:54] Speaker 03: I mean, that's then the one point. [00:09:01] Speaker 04: there are no other questions. [00:09:20] Speaker 00: May it please the court. [00:09:22] Speaker 00: We fully acknowledge that this claim does not [00:09:25] Speaker 00: entail printed words on a piece of paper. [00:09:30] Speaker 00: It's not traditional printed matter, as that term has been used in prior court decisions. [00:09:36] Speaker 00: I still think that the underlying policy of the printed matter doctrine applies in this case in that, as this court explained in King Pharmaceuticals, we want to prevent the indefinite patenting of claims just by adding a novel but unfunctional [00:09:53] Speaker 00: addition to the claims and here clearly I think it's pretty undisputed that the origins of the web assets provide no function to the rest of the method. [00:10:05] Speaker 02: There are two things on which you say repeatedly in your brief that I guess I didn't really track. [00:10:15] Speaker 02: One is the heading, the origins of the web assets are non-functional descriptive materials. [00:10:23] Speaker 02: That sounds like nonsense to me. [00:10:26] Speaker 02: I mean, the origins are not descriptive material at all. [00:10:32] Speaker 02: Non-functional or otherwise, it's just not a description. [00:10:35] Speaker 00: They're described, I mean, in the claim. [00:10:36] Speaker 02: But the provenance of a wine is not descriptive. [00:10:40] Speaker 00: It's where it came from. [00:10:42] Speaker 00: Yeah, but that's something that's describing it. [00:10:45] Speaker 00: That's a property that's telling you something about it. [00:10:47] Speaker 02: I think that... The origin is not put into the material that is claimed. [00:10:54] Speaker 02: If the material said, I come from the user, as opposed to I come from third party, then the origin would be part of the descriptive content. [00:11:03] Speaker 00: Well, I think that's the point. [00:11:05] Speaker 00: The origin has no use here. [00:11:07] Speaker 00: There's no application of the origin. [00:11:09] Speaker 02: So one point is it seems to me the origin just isn't descriptive material at all. [00:11:14] Speaker 02: The second thing that you say a number of times is the method step [00:11:23] Speaker 02: So it doesn't change the, the origins don't change the method at all. [00:11:30] Speaker 02: Again, I don't understand how that can be. [00:11:33] Speaker 02: One method involves selecting things from A or B. Another method involves selecting things from A. How are those things not different? [00:11:46] Speaker 00: Well, I think the point is that the rest of those, that it doesn't matter where you pick [00:11:52] Speaker 00: It matters under the claims. [00:11:57] Speaker 01: Why doesn't it matter? [00:11:58] Speaker 01: I'm obviously not a web designer or anything like that. [00:12:04] Speaker 01: 10 or 15 years ago, say the basic web design packages came out and it limited you to only the materials provided with the web design software. [00:12:14] Speaker 01: And you couldn't go outside that. [00:12:16] Speaker 01: You couldn't put in your own pictures, your own videos or anything like that. [00:12:22] Speaker 01: You were limited to [00:12:24] Speaker 01: software package and this company comes along and says we found a new method that doesn't confine you to just the materials here, you can also go and use your personal resources. [00:12:35] Speaker 01: Why isn't that a functional difference? [00:12:39] Speaker 00: Well, if that was the case that really, you know, choosing from, in the prior art, you could only choose from A, and then your claim, now you say you can choose from A or B, and, you know, that's like a leap from the prior art that has some function, I agree that that may be a case where that limitation would be given weight. [00:13:06] Speaker 01: But isn't that the limitation we're talking about? [00:13:11] Speaker 01: That you found irrelevant. [00:13:12] Speaker 01: It may be that you should have found it obvious. [00:13:17] Speaker 01: But to disregard it on a printed matter doctrine when it's not printed matter at all is problematic. [00:13:22] Speaker 00: I think the issue that the board came across here was that the claim sets up to have this distinction between where you get your [00:13:34] Speaker 00: web-asset from, but then in the rest of the claims, it makes no use of that. [00:13:39] Speaker 02: So, for example, in the... Lots of claim elements don't use other elements of the claim. [00:13:47] Speaker 02: The fact is, you say, the origin of the selected web-asset does not in any way change, alter, or affect the method. [00:13:56] Speaker 02: I can't get how that could be true when the claim says, select from A or B. It doesn't affect it. [00:14:08] Speaker 00: I agree that there's a difference between selecting from a third-party web asset versus selecting from a user-submitted web asset. [00:14:16] Speaker 00: That's different. [00:14:17] Speaker 00: I agree. [00:14:18] Speaker 00: If you think that's a different method, then... Well, you just said you think that's a different method, too, right? [00:14:25] Speaker 00: The point is that the rest of the method steps are performed exactly the same no matter where you get your web asset from. [00:14:34] Speaker 00: It doesn't matter if you get your web asset from a third party, from yourself, from the internet. [00:14:39] Speaker 00: The origin of it has no bearing on how the method is performed. [00:14:44] Speaker 01: Except that for certain parts of the steps, using different origins, you go to a different place. [00:14:52] Speaker 01: I mean, the fact that everything else in the program works the same way doesn't mean that this particular method step has no function. [00:15:02] Speaker 01: I mean, if nobody had ever thought of it before, the fact that the only difference between this and the prior art is that you can go outside of what was provided and use your own resources, the fact that everything else is the same doesn't mean it's not a patentable step, does it? [00:15:22] Speaker 00: What they were getting at in the specification here, and if you read the specification, they have a system set up so that when a third party web asset author, when you select their web asset, it's supposed to provide payment to them. [00:15:35] Speaker 00: So, you know, if you create these images or music files or whatever, you put it in the database, then if someone selects your image or your music file, you get some credits and some money for that. [00:15:47] Speaker 00: It's in this application? [00:15:48] Speaker 00: Yeah, it's in this application. [00:15:51] Speaker 01: I agree, there is some, I mean that didn't, the distinction between the two didn't come randomly, but I mean there is, I think that's the big, but I think, but I think, but I think that you're understanding that this distinction isn't the point of the invention, there's no discussion that it's necessarily, you know, a patentable step or anything like that, but that doesn't make it printed matter, it just makes it obvious. [00:16:15] Speaker 00: I think that's the case. [00:16:18] Speaker 00: would think if this case came back there would be an easy, obviousness rejection or even an anticipation or rejection by saying that it was within the knowledge of in the art that you could choose from different places. [00:16:32] Speaker 02: Was there evidence of that? [00:16:34] Speaker 02: This dates to what, 1995? [00:16:38] Speaker 02: That's a long time. [00:16:40] Speaker 02: What we all have in our heads right now is not what we had in our heads in 1995. [00:16:45] Speaker 00: The problem is that we don't [00:16:47] Speaker 00: We don't have any evidence on that because this printed matter rejection first arose at the board level. [00:16:53] Speaker 00: So we don't have the examiner incorrectly thought that this reference meant the claim limitation even giving weight to all the words. [00:17:03] Speaker 00: So that's why the board reversed that rejection and then put a new rejection in itself. [00:17:09] Speaker 00: So if it came back, I think that, you know, [00:17:12] Speaker 00: we could reopen prosecution, as Paul said, and examine whether this claim is anticipated or obvious, giving weight to all the claim limitations. [00:17:24] Speaker 02: Can I ask you about the search request issue? [00:17:30] Speaker 02: Sure. [00:17:31] Speaker 02: I guess I was struck almost at the threshold with the following problem, I guess, with the board's claim construction. [00:17:42] Speaker 02: A definition is supposed to take a form such that you can replace the thing being defined with the definition, plop it in and it makes grammatical sense. [00:17:58] Speaker 02: That seems to me not to have gone on here. [00:18:03] Speaker 02: A search request is something that is being, under the claim, received. [00:18:10] Speaker 02: It is not the act of doing something. [00:18:15] Speaker 02: It is an information packet to be acted on by the receiver of that information packet. [00:18:23] Speaker 02: That's not a selective retrieving of data. [00:18:27] Speaker 02: And while that may seem like a small matter, it seems to me to get at the problem with the board's claim construction, which is that this information packet is supposed to tell the receiver of that packet, go and find something. [00:18:48] Speaker 02: that seems to me to entail a criterion, one or more criteria, for how the receiver of this information packet is supposed to go and file this thing. [00:19:00] Speaker 02: And that's what it seems to me the board eliminated with its claim construction. [00:19:05] Speaker 00: I think that the board is just looking at [00:19:07] Speaker 00: the broad use of the term search request in the specification and giving the term its broadness reasonable construction because as we talked about in the brief and as we talked about with the Pellant, there are examples in the specification where you're just choosing from a list. [00:19:22] Speaker 02: But don't all of those examples, or I guess I don't want to be tendentious about the question, but is it true or not true that all of those examples can be understood as coming under that portion of the specification language that says sometimes you don't need to have a search, like when you just say, oh, I already see the list of choices. [00:19:47] Speaker 02: I want that one and that one. [00:19:49] Speaker 00: That's not a search. [00:19:51] Speaker 00: I don't believe so because I think if what we cited in our brief in the specification, there's a, I mean the example in the specification where this comes up is choosing a color. [00:20:04] Speaker 00: So they just provide you a list from what's called the color palette and you just choose one color. [00:20:09] Speaker 00: And that is specifically referred to as a search request in the specification. [00:20:12] Speaker 00: Where is that? [00:20:14] Speaker 00: So it's at, in our brief, it's on pages 25 and 26, and in the appendix, it's A668, line 26 to A669, line 6. [00:20:29] Speaker 00: So it says... 660? [00:20:33] Speaker 00: Yes. [00:20:36] Speaker 00: So the information that is obtained is responsive to the search request entered at step 1604. [00:20:41] Speaker 02: That is, the information concerns color elements. [00:20:45] Speaker 00: So it says the search request was made via color palette 640. [00:20:50] Speaker 00: So the color palette is just the example where you can just, you don't enter anything in, you don't enter a keyword search, you just select a color you want. [00:20:59] Speaker 00: And that's physically referred to as a search request. [00:21:02] Speaker 00: So, you know, I think that the board was just going on the breadth of the specification, which gives an example of a search request where you're not entering a keyword. [00:21:15] Speaker 00: You're not performing the traditional kind of Google searches, as you would think of it. [00:21:34] Speaker 00: I would hope that this court wouldn't look so narrowly at the Printer Matter Doctrine and see that this case, while not traditionally fitting into Printer Matter, really the same underlying policy applies. [00:21:58] Speaker 02: Can I just check my understanding? [00:22:01] Speaker 02: Printed matter doctrine is not actually statutory so you're making an argument that a doctrine that is non-statutory that has been said over many decades to be one without a very decent statutory foundation should be broadened according to some broad policy one can find in this non-statutory doctrine. [00:22:23] Speaker 00: I don't think we're [00:22:24] Speaker 00: I don't think we're necessarily broadening it beyond what is said in the King Pharmaceuticals case. [00:22:29] Speaker 02: That was actually a claim element that says, communicate the following information to somebody. [00:22:37] Speaker 00: Correct, but I don't think it was the fact that it was communicating information that renders it correct. [00:22:43] Speaker 02: Is there any printed matter case that doesn't [00:22:46] Speaker 02: at a minimum, just a necessary condition, not a sufficient condition, at a minimum require an involved, a printed matter case in which the doctrine was applied to support disregarding a claimed element, that didn't involve an element that claimed the content of an expression? [00:23:08] Speaker 00: I'm not aware of one. [00:23:09] Speaker 00: Yeah, I'm not either, but this is [00:23:13] Speaker 00: I mean, the origin is still providing you some information. [00:23:17] Speaker 00: It's providing information to the user and not... I just think that we'd be allowing the indefinite claiming of something that has no function here. [00:23:35] Speaker 00: merely descriptive. [00:23:37] Speaker 01: If you think it's indefinite, why don't you reject it? [00:23:40] Speaker 00: No, not indefinite in the indefinite sense, but the sense that you can just keep adding these kind of trivial limitations that don't distinguish them over prior art, so therefore they're obvious. [00:23:55] Speaker 01: You're really asking us to let you be lazy. [00:23:59] Speaker 01: I don't mean to be mean about it, but this is the third printed matter case I've seen from you all, and I've only been here two years. [00:24:05] Speaker 01: And they've all involved instances like this, where the board is trying to fix a sloppy examiner's rejection. [00:24:14] Speaker 00: I think that in this case, an obviousness rejection can clearly be made. [00:24:17] Speaker 00: But I think that there could be a case where you add a limitation that's not functionally related to the method. [00:24:25] Speaker 00: and it wouldn't be obvious. [00:24:26] Speaker 00: Because if you're picking something, if you're adding something that has no functional relation to the method, you can understand that it may not be so obvious. [00:24:32] Speaker 00: So I think that, I think sure obviousness could be substituted here, but it may not be the case. [00:24:38] Speaker 00: Thank you. [00:24:39] Speaker 00: Thank you. [00:24:46] Speaker 03: Let me just address a few of the points made. [00:24:50] Speaker 03: The invention actually goes claims prior to 2015. [00:24:55] Speaker 03: June 2000, not 1995, but still 15 years ago. [00:25:01] Speaker 03: The opposing council talks about the origins of the web assets, those that we talked about, but mentioned in the reply brief. [00:25:10] Speaker 03: When we specifically asked the board, what do you believe to be the print of matter, they did not state the origins of the web assets was the print of matter. [00:25:25] Speaker 03: Had the board done that, we would have changed our appeal brief accordingly to address that particular point. [00:25:32] Speaker 03: Now, to go to your point, Judge Hughes, about being a web designer, I'm no web designer, but where you get the web assets, in this case, where if it's provided to the user, [00:25:47] Speaker 03: The functionality would have to be, those web assets would have to be stored locally in the computer, either in memory or in a hard drive or in a diskette. [00:25:57] Speaker 03: And the user interface would have to access those web assets in a different manner, in a functionally different manner than it would be able to access the web assets that were associated in the database that's in the website design [00:26:16] Speaker 03: server. [00:26:17] Speaker 03: And so there is a functional difference associated with those limitations. [00:26:21] Speaker 03: And you could argue about that if there were an obviousness rejection about whether... Absolutely. [00:26:31] Speaker 03: Why I always say about obviousness rejections is until I see the prior art and until I understand what was art at the time of the invention, it's tough for me to decide whether something's obvious or not. [00:26:42] Speaker 03: And based upon the prior art that they provided, [00:26:45] Speaker 03: in the one or two rejection which is quite far-rejected there is no obvious rejection currently before but they can't do it later but certainly not before can i ask you a very specific question about the search request? [00:27:01] Speaker 02: yes page 669 of the appendix [00:27:14] Speaker 02: Yeah, so this is page 369, page 39 of your application. [00:27:20] Speaker 02: And up at the top. [00:27:25] Speaker 02: speaks of, I guess Mr. Foreman indicated, the line about information obtained at various places concerned sound elements if the search request was made via sound menu 540 and concerns color elements if the search request was made via color palette 640. [00:27:49] Speaker 02: Does not that language use the phrase search request [00:27:55] Speaker 02: to a simple pick from a menu that you are looking at. [00:28:03] Speaker 03: A menu that has already had a criteria applied to it, which is a color palette. [00:28:09] Speaker 03: So you've had, it's a search request in the context of either a color palette, some palette, or what have you. [00:28:16] Speaker 03: It's not a search request that [00:28:22] Speaker 03: you have, let's say, an entire list of objects that haven't already been, and a criteria has already been applied to it. [00:28:31] Speaker 03: Again, it's a color palette. [00:28:33] Speaker 03: You have a criteria already applied to it. [00:28:36] Speaker 03: And again, that still falls within our definition of search request. [00:28:42] Speaker 03: It has to involve a criteria. [00:28:53] Speaker 03: If there are no other questions. [00:29:02] Speaker 03: Thank you.