[00:00:00] Speaker ?:
you

[00:00:28] Speaker 00:
In this case, Your Honor, we have a slightly similar situation, albeit not quite as egregious, I would say.

[00:00:36] Speaker 00:
We have a situation where the underlying rejection of the claim was based upon one grounds by the examiner.

[00:00:43] Speaker 00:
And again, we addressed that point.

[00:00:47] Speaker 00:
We formulated in the appeal the way that we understood it.

[00:00:50] Speaker 00:
It was presented that way.

[00:00:51] Speaker 00:
The examiner confirmed his understanding the rejection and responded to it.

[00:00:55] Speaker 02:
This is the written description question.

[00:01:00] Speaker 02:
Is that what we're talking about?

[00:01:03] Speaker 00:
You're correct.

[00:01:04] Speaker 00:
I apologize.

[00:01:06] Speaker 00:
It's three cases and the claims kind of get mixed up.

[00:01:09] Speaker 00:
This is the instance where the pivotal question was, what is he really objecting to?

[00:01:17] Speaker 00:
Is he objecting to the fact that

[00:01:20] Speaker 00:
He can't find an instance in which something is removed from the subscriber's queue, or is he objecting to the fact that he can't?

[00:01:27] Speaker 04:
Removal based on comparison.

[00:01:29] Speaker 00:
Correct, your honor, or removal based upon comparison, exactly.

[00:01:33] Speaker 00:
And so the board's opinion affirmed there were multiple grounds of rejection.

[00:01:38] Speaker 00:
The board only affirmed that part of the decision and said, well, again, you misread his rejection.

[00:01:44] Speaker 02:
OK, what's wrong with what the board did here?

[00:01:46] Speaker 02:
They found insufficient written description because all they had in the spec was talking about bumping in the context of shipping delivery, and they didn't find that sufficient.

[00:01:56] Speaker 02:
Why are they wrong?

[00:01:57] Speaker 00:
Your Honor, I would point you to the briefs which indicate that the Board itself said, the examiner was wrong in that point, that the specification and original claims do show that things are removed from Subscribers Queue.

[00:02:11] Speaker 03:
And again, the original claim did.

[00:02:14] Speaker 00:
I'm sorry?

[00:02:15] Speaker 00:
The original claim, in fact, said that.

[00:02:17] Speaker 03:
But not based on a comparison.

[00:02:19] Speaker 00:
But not based upon a comparison, exactly, Your Honor, yes.

[00:02:21] Speaker 00:
So when we amended the claim and we submitted the new claim, the examiner objected to it.

[00:02:27] Speaker 00:
We wrote the appeal and said, look, as far as we can tell, the issue between us is the following.

[00:02:32] Speaker 00:
You disagree that it shows something being removed.

[00:02:35] Speaker 00:
We don't understand that because, again, it wasn't the original claim.

[00:02:38] Speaker 00:
But Your Honor, if you read the appeal brief and read the examiner answer,

[00:02:42] Speaker 00:
to which we include in our brief over and over and over again, his point repeatedly is, I don't see where something's taken out.

[00:02:50] Speaker 00:
I don't see where something's taken out.

[00:02:51] Speaker 02:
I know, but let's get a little bit away from arguing process and just tell us where the board erred in its opinion.

[00:02:57] Speaker 00:
The board erred because the claim, I'm sorry, the specification does show comparing.

[00:03:04] Speaker ?:
How?

[00:03:05] Speaker 00:
In the following way, Your Honor.

[00:03:07] Speaker 00:
The specification talks about a situation where

[00:03:10] Speaker 00:
the user or subscriber has an account of some kind.

[00:03:14] Speaker 00:
And in that account, they have a variety of different media titles.

[00:03:19] Speaker 00:
In the background, there's some logic.

[00:03:20] Speaker 04:
Do you want to tell us where in the specification that is?

[00:03:23] Speaker 00:
Yes, Your Honor.

[00:03:25] Speaker 04:
That's what this is all about.

[00:03:27] Speaker 00:
Correct, Your Honor.

[00:03:28] Speaker 00:
And we, in fact, created a little mini-synopsis of that.

[00:03:34] Speaker 00:
But on page 22 of the brief, for example, of the original brief,

[00:03:38] Speaker 04:
Why are there two points in the specification?

[00:03:41] Speaker 00:
Okay, I'm sorry, Your Honor.

[00:03:42] Speaker 00:
This is figure... It's going to be a figure two, Your Honor, one second.

[00:03:57] Speaker 02:
And you're going to give us the page number?

[00:03:58] Speaker 02:
81?

[00:03:59] Speaker 02:
I'm sorry, Your Honor?

[00:04:01] Speaker 02:
Figure two is page 81, page 6.

[00:04:04] Speaker 00:
Okay.

[00:04:04] Speaker 00:
You're ahead of me, Your Honor.

[00:04:06] Speaker 00:
Okay.

[00:04:12] Speaker 00:
So what we did was, for purposes of trying to illustrate this a little bit more clearly for this court's benefit, is we pointed out that in Figure 2, there's a variety of different scenarios by which the user can control the content of their subscriber selection queue.

[00:04:30] Speaker 00:
And you will see that in the bottom left-hand box, 240, one of the things the system does is it figures out, is there something that you might want us to bring to your attention every once in a while?

[00:04:42] Speaker 00:
and let you know about it, and maybe put it in your queue.

[00:04:47] Speaker 00:
And how do I go about doing that?

[00:04:49] Speaker 00:
I look at your prior ratings, I look at your prior rentals.

[00:04:52] Speaker 00:
So the decision about whether to put something in or take something out is based upon looking at what you've done before, what you've had before.

[00:05:00] Speaker 04:
But that doesn't recite removal based on comparison.

[00:05:04] Speaker 00:
Your Honor, I think what it mentions is the original claim mentions specifically removing

[00:05:10] Speaker 00:
removing titles and the removing step was done.

[00:05:16] Speaker 00:
I'll go back to the original claim.

[00:05:27] Speaker 03:
Thank you, Your Honor.

[00:05:34] Speaker 00:
Part one of the claim, I'm sorry, limitation C of the claim says monitoring the subscriber rental queue in accordance with said queue monitoring control rules to determine if a change should be made to a composition and or ordering.

[00:05:48] Speaker 00:
And then after that it says D automatically selecting something to be added or removed.

[00:05:53] Speaker 00:
Now the monitoring step which is talked about in limitation C is part and parcel of what's going on in figure two.

[00:06:01] Speaker 00:
Namely, I'm looking at your queue

[00:06:04] Speaker 00:
I'm looking at what's in there.

[00:06:05] Speaker 00:
I'm comparing the thing that I think you might want against things which are already in your queue right now.

[00:06:13] Speaker 00:
And so we felt that it was pretty apparent to a person's skill in the art that when you look at what part C already said, and if you read the rest of the disclosure about what's going on in figure two, this notion of looking at what's there and comparing what I think you might want inherently involves some kind of comparison operation.

[00:06:45] Speaker 03:
Again... Can I ask you this question?

[00:06:51] Speaker 03:
I read the board as relying on what I'm going to describe as a procedural grant, entirely or mostly, or at least one of the grants.

[00:07:09] Speaker 03:
We can tell pretty plainly that the examiner said, what I can't find written description support for is not removal all by itself, but removal based on comparison.

[00:07:24] Speaker 03:
And you, in your appeal brief, in the argument section, never responded to that.

[00:07:33] Speaker 03:
That all by itself leaves the examiner's rejection on that ground unresponded to and standing whether or not had it been contested in the argument section of your brief, we would agree with it.

[00:07:49] Speaker 03:
Can you respond to that?

[00:07:51] Speaker 00:
I think, Your Honor, is mostly correct in that point.

[00:07:54] Speaker 00:
And that was part two, really, of what we were disputing about the board's opinion.

[00:07:59] Speaker 00:
The board basically said, you misread the examiner's rejection.

[00:08:03] Speaker 00:
We read it to be this.

[00:08:04] Speaker 00:
And by the way, now that you're complaining about it and pointed out to us information you believe is germane to the question, we're telling it to your face.

[00:08:13] Speaker 00:
We're not even going to look at that information."

[00:08:15] Speaker 00:
To which we said, why?

[00:08:16] Speaker 00:
And they said, well, that was not in the argument section.

[00:08:21] Speaker 00:
That was part two of what was mentioned in our original brief as being a grounds for error here.

[00:08:26] Speaker 03:
Why isn't that a perfectly legitimate process ground?

[00:08:35] Speaker 03:
If you're going to seek to overturn the examiner's rejection of a claim and the examiner gave ground A, which is sufficient for rejecting that claim, you have to make the argument on ground A in the argument section of your appeal bill.

[00:08:53] Speaker 00:
Your honor is correct to some extent, but only in the instance of saying that the board is not obligated to look at the entire appeal brief.

[00:09:00] Speaker 00:
By that logic, the board was not obligated to look.

[00:09:05] Speaker 00:
at the summary description of the subject matter, which was in the appeal brief.

[00:09:09] Speaker 03:
We get briefs all of the time that in the background section, the various sections before argument, tell us all kinds of things that might be useful as context, but what matters is what the arguments are that are being made.

[00:09:28] Speaker 00:
The formatting of the brief of this court is slightly different, and I don't believe this court would have said in an opinion, for example,

[00:09:34] Speaker 00:
You put facts in the background.

[00:09:36] Speaker 00:
We're not going to look at those facts as part of your argument.

[00:09:39] Speaker 00:
I don't believe this court would be that arbitrary.

[00:09:41] Speaker 00:
And I believe in this instance, the Board of Appeals is being very arbitrary when it says, on a question of written description, which that's the key point, we're not going to bother looking at the disclosure you provided within the appeal brief itself, which is required by the rules, by the way, to be there, and not consider that.

[00:10:03] Speaker 00:
I just think that that point is not well taken.

[00:10:06] Speaker 00:
I think, and I was not able to fully document this, but the Board of Appeals did ask at one point in time for that to be an official rule that it could not be considered.

[00:10:15] Speaker 00:
I was not able to follow the trail of an entire legislation, but it was not passed.

[00:10:19] Speaker 00:
That point was not adopted.

[00:10:21] Speaker 00:
The board was not allowed to say there's parts of the brief we're going to look at and parts that we're not.

[00:10:26] Speaker 00:
So that is an important point.

[00:10:28] Speaker 00:
But beyond that, as I said, I think that the board's interpretation of the rejection

[00:10:33] Speaker 00:
is completely out of line with the rest of the character of the rejection.

[00:10:37] Speaker 00:
I think after 30 years of doing prosecution, I have a fairly good understanding and feel for what a rejection is.

[00:10:44] Speaker 00:
And when I repeat that to the examiner, and the examiner repeats that back to me in the answer, and I file a rebuttal brief, and we're all copathetic about what the rejection is, but then I get an appeal decision which says, no, you completely misunderstood him,

[00:11:01] Speaker 00:
Again, I think there's something fundamentally wrong with that point and I don't think it was appropriate.

[00:11:09] Speaker 00:
The question about Alice again comes up in connection with this case and again I won't go into it fully here except to say that as with the other claim I think that for the most part what we pointed out in this instance was that

[00:11:28] Speaker 00:
This notion of where the claim lives, it lives mostly in the computer domain.

[00:11:33] Speaker 00:
It's moving things around within the computer.

[00:11:35] Speaker 00:
It's computer logic talking to the modules.

[00:11:38] Speaker 00:
It's working behind the scenes for the user as an agent.

[00:11:42] Speaker 00:
We think that those are all things which are perfectly acceptable and perfectly well within the realm of ambit of one-on-one subject matter.

[00:11:50] Speaker 02:
With that said, I will finish.

[00:12:08] Speaker 01:
May it please the court.

[00:12:10] Speaker 01:
I think the court understands that the examiner issued a clear rejection.

[00:12:15] Speaker 02:
which was not addressed by... Just a general thing, is the Solicitor's Office just adding the 101 stuff to all of its briefs now, notwithstanding it never having been relied on below?

[00:12:25] Speaker 02:
Is that just part of the process now?

[00:12:27] Speaker 01:
I don't know that it's being added in each appeal, Your Honor, but in this instance, we wanted to present the Court with notice that we were familiar with the Alice issue, potential issue in this case, and we also wanted to give Gross an opportunity to respond.

[00:12:42] Speaker 02:
Well, yeah, it's an opportunity, I guess.

[00:12:46] Speaker 02:
I mean, what he's got is an opportunity in gray, which is a limited page count for purposes of responding to the whole appeal.

[00:12:53] Speaker 02:
And then you present this new issue.

[00:12:56] Speaker 02:
And yeah, I guess that's an opportunity if one could pursue that.

[00:13:00] Speaker 02:
But anyway, it's a little troubling.

[00:13:02] Speaker 02:
But go ahead.

[00:13:05] Speaker 01:
Yes, Your Honor.

[00:13:06] Speaker 01:
Here, the examiner's rejection was clear.

[00:13:10] Speaker 01:
The examiner stated that he could not find any descriptive support for the removal based upon some form of comparison.

[00:13:18] Speaker 03:
Do you happen to have a JA page for the clearest statement by the examiner to that effect?

[00:13:24] Speaker 01:
Yes, your honor.

[00:13:24] Speaker 01:
So there are two places.

[00:13:27] Speaker 01:
First is in the final rejection, which is located at A120, 121.

[00:13:31] Speaker 01:
And the second is in the examiner's answer.

[00:13:38] Speaker 01:
which is located at one ninety two one ninety three.

[00:13:44] Speaker 03:
The examiner has reviewed these sections and does not see where it has been disclosed that an item is actually removed from the cube based on a comparison step that's claimed.

[00:13:56] Speaker 01:
That's correct.

[00:13:57] Speaker 01:
So what happened here is that

[00:13:58] Speaker 01:
Gross submitted an amendment in which he indicated certain sites, which actually, which he alleged, supported the new amendment.

[00:14:06] Speaker 01:
And those sites were paragraphs 65, 76, 73, 75, 77, and 96, which are all noted there in the rejection.

[00:14:16] Speaker 01:
And the examiner said, well, I looked at those different paragraphs, but I don't see where there's any support for this new amendment.

[00:14:24] Speaker 01:
He went on to say that he actually conducted a text search of the entire specification and couldn't find where the word removal and comparison were associated with one another.

[00:14:33] Speaker 02:
Well, except on the figure two on A81, it says replace the next item to be shipped.

[00:14:45] Speaker 01:
Yes, Your Honor.

[00:14:47] Speaker 02:
Isn't replacing close to removal?

[00:14:51] Speaker 01:
Your Honor,

[00:14:52] Speaker 01:
Question for written description is not whether or not it's closed or it would provide an inherent disclosure.

[00:15:00] Speaker 01:
For written description, it's not even whether or not the claimed invention would have been obvious over what is described.

[00:15:07] Speaker 01:
The question is whether or not there's sufficient disclosure there, for one, of Ordinance of Community Art, to believe that the applicant actually possessed the claimed invention.

[00:15:17] Speaker 02:
Well, wait a minute.

[00:15:17] Speaker 02:
When you look at this box here, and it says when

[00:15:21] Speaker 02:
queue keeper finds a better title, I want him to replace the next item to be shipped.

[00:15:28] Speaker 02:
That seems like a removal, particularly when you look at the other choices, which are presumably alternatives, which is put it in the queue and order after my correct choices.

[00:15:40] Speaker 02:
So that's kind of a

[00:15:41] Speaker 02:
arguably a bumping thing, or you say it's bumping, or just move it in the order.

[00:15:46] Speaker 02:
But that suggests, does it not, that replacing means taking it out and putting something else in?

[00:15:52] Speaker 02:
No?

[00:15:53] Speaker 01:
I don't think so, Johanna.

[00:15:54] Speaker 01:
I think that what it's getting at there is simply shipping order.

[00:15:59] Speaker 01:
What item will actually be shipped next?

[00:16:02] Speaker 01:
Whether or not it's the user's preference,

[00:16:04] Speaker 01:
which should be shipped next or whether or not the recommended DVD should be shipped next.

[00:16:11] Speaker 04:
And when you look at it, you would also say that it's not in the spec, it's not in the recommended material.

[00:16:17] Speaker 01:
That's correct, Your Honor.

[00:16:18] Speaker 01:
There's nothing in the specification that expressly describes 250, which is figure two, which the court was just reading at 881 as removal based on some form of comparison.

[00:16:33] Speaker 01:
And that's what's key, because that's the amendment that Gross submitted to the office.

[00:16:39] Speaker 01:
It's not merely whether or not a DVD can be removed.

[00:16:43] Speaker 01:
The amendment was removal based upon a comparison.

[00:16:47] Speaker 03:
On the comparison side, just again focusing on figure two, better title sounds like a comparison.

[00:16:58] Speaker 01:
I can't say that that's the case, Your Honor, because when you look at the

[00:17:01] Speaker 01:
actual description itself.

[00:17:05] Speaker 01:
There are very few instances in which the word comparison or some formulations thereof is actually used.

[00:17:17] Speaker 03:
You are doing a comparison when you say A is better than B. This title is better than something else.

[00:17:25] Speaker 03:
I'm not sure what else that could be.

[00:17:28] Speaker 03:
It seems to me that's not really what's missing from figure two, the arguments.

[00:17:34] Speaker 03:
is that what's missing is that replace the next item to be shipped doesn't clearly say take it out of the queue altogether but take it out of its priority slot.

[00:17:49] Speaker 01:
I think that's correct your honor.

[00:17:51] Speaker 01:
It's a matter of whether or not figure 2 is talking about taking the current DVD out of its

[00:18:00] Speaker 01:
priority slot, whether or not it should actually be shipped next or whether or not it should be held until after the recommended title is actually shipped.

[00:18:12] Speaker 01:
There's nothing in Figure 2 to indicate that what is actually taking place is some form of removal itself based upon a comparison that's taking place.

[00:18:22] Speaker 01:
And when you look at the specification, the only instance

[00:18:27] Speaker 01:
that the word compare is used is at A49 and that comparison language is related to whether or not the next DVD should be shipped.

[00:18:40] Speaker 01:
It gets to the whole idea of a shipping order.

[00:18:44] Speaker 01:
Whether or not the user's DVD should be shipped or whether or not the recommended title should be shipped.

[00:18:51] Speaker 01:
That's the only location that the specification actually talks about comparison.

[00:18:57] Speaker 01:
And when Gross was just up here now and asked, well, give us your best location that supports the amendment, he said that, well, he thinks that figure two inherently involves some form of comparison, but that's not the test for written description.

[00:19:13] Speaker 01:
It's not whether or not a figure is an obvious variant of what is being claimed.

[00:19:20] Speaker 01:
The hallmark for written description is disclosure.

[00:19:23] Speaker 01:
And the idea is whether or not one of ordinary skill in the art would actually think that the claimed invention was actually in the possession of the inventor.

[00:19:33] Speaker 01:
And there's nothing in figure two or anywhere else in the specification that would actually establish that Bruce was in possession of removal based upon a comparison.

[00:19:43] Speaker 01:
Again, the examiner did a text search to try to find some sort of connection between the word removal and comparison, and he couldn't find one.

[00:19:53] Speaker 01:
And he pointed that out in the rejection and he concluded that because he couldn't find any written descriptive support for the amendment that he thinks that the amendment constituted new matter.

[00:20:04] Speaker 01:
Gross had an opportunity to argue this point before the board and he failed to do so.

[00:20:13] Speaker 01:
If there are no further questions.

[00:20:28] Speaker 00:
Thank you, Your Honors.

[00:20:29] Speaker 00:
Again, I would only like to point out that I understand this listener's position about the interpretation by the board of the examiner's rejection.

[00:20:40] Speaker 00:
I would only ask that the court look at, for example, page 15 of the brief as submitted, which pulls out from the entirety of the record the repeated comments by the examiner.

[00:20:51] Speaker 03:
of what his real objection was to the claim.

[00:21:07] Speaker 03:
support what's claimed.

[00:21:08] Speaker 03:
The examiner has reviewed these sections and does not see where it has been disclosed that an item is actually removed from the queue based on a comparison step as claimed.

[00:21:19] Speaker 03:
That seems extremely clear.

[00:21:22] Speaker 00:
Your honor, but your honor is reading from the final office action.

[00:21:25] Speaker 00:
You're not reading from the appeal brief.

[00:21:26] Speaker 00:
In the appeal brief, the examiner is much more categorical about what his real objection is.

[00:21:32] Speaker 00:
And in the appeal brief, as we mentioned on A168,

[00:21:36] Speaker 00:
What we mentioned at the very top was the sole disagreement with the examiner revolves around the adequacy of the description and whether it discloses that items can be automatically removed from the subscriber rental queue.

[00:21:49] Speaker 00:
That was it.

[00:21:50] Speaker 00:
The examiner's response is on page 8206 where he says, response to argument.

[00:21:56] Speaker 00:
The examiner still takes the position that the limitation that the media titles can be automatically removed

[00:22:02] Speaker 00:
from a subscriber rental queue is directed to a new matter that is not supported by the originally filed disclosure.

[00:22:08] Speaker 00:
And it goes on from there.

[00:22:09] Speaker 00:
And again, in my brief, I give you five or six different instances.

[00:22:13] Speaker 00:
He says over and over and over again, there is no discussion of any media titles being removed from any queue.

[00:22:21] Speaker 00:
Where's the support and specification for the actual removal of the item?

[00:22:26] Speaker 00:
These are in my brief.

[00:22:27] Speaker 00:
I don't want to fill this record with that, but the point is that

[00:22:30] Speaker 00:
He was unequivocal about what his real issue was.

[00:22:33] Speaker 00:
The board found he was wrong.

[00:22:35] Speaker 00:
That should have been the end of the story.

[00:22:37] Speaker 00:
But the board gave their own interpretation, which was not consistent with his rejection.

[00:22:43] Speaker 00:
The question that the chief judge asked about the claim, I'm sorry, the specification in Figure 2, the figure definitely talks about replacing items.

[00:22:53] Speaker 00:
The attendant disclosure in the specification also talks about that point.

[00:22:57] Speaker 00:
And we believe that married with the original claim language, which said, by the way, you're going to be removing things.

[00:23:03] Speaker 00:
We think that that was pretty clear about what was going on.

[00:23:06] Speaker 00:
There was a comparison going on.

[00:23:07] Speaker 00:
In some instances, you are going to remove things.

[00:23:11] Speaker 00:
The comparison operations are alluded to throughout the specification because of the following.

[00:23:17] Speaker 00:
Recommendation systems, as are discussed in specification,

[00:23:21] Speaker 00:
create predictions for people.

[00:23:22] Speaker 00:
They figure out what you're going to give as a rating to a particular item.

[00:23:26] Speaker 00:
So the recommender system, which is talking here, will say, for example, that you're going to like the movie Fargo.

[00:23:31] Speaker 00:
You're going to give it a score of 10.

[00:23:33] Speaker 00:
And then says, OK, I've determined that that's what you're going to give that movie.

[00:23:37] Speaker 00:
Let me go back now and see what other things you've got in your queue and whether there's something in there which is lower than that.

[00:23:41] Speaker 00:
So that's why I'm saying that a person's skill in the art reading this will understand that given the fact the recommendation systems create scores, create predictions, create ratings,

[00:23:51] Speaker 00:
is looking at those against the ratings, which are mentioned specifically in the specification, that the user gives to the items.

[00:24:01] Speaker 04:
Thank you.