[00:00:32] Speaker 02:
All right, the next case before the court is in Ray Hickey, case number 141682.

[00:00:37] Speaker 02:
And will I understand that you want to reserve only two minutes for rebuttal?

[00:00:46] Speaker 03:
That's correct, Your Honor.

[00:00:49] Speaker 02:
OK, you may proceed.

[00:00:55] Speaker 03:
Good morning, and may I please, the court's case proceeds from a decision of the board and a reissue proceeding.

[00:01:02] Speaker 03:
Denying all of the claims, I'm going to address three errors in the board's decision.

[00:01:09] Speaker 03:
First, the board erred in failing to consider each of the references and the claims as a whole.

[00:01:16] Speaker 03:
Second, the board further erred by ignoring evidence that there was no reasonable expectation of success.

[00:01:23] Speaker 03:
At best here, the board presented an unsupported case of obviousness to experiment

[00:01:28] Speaker 03:
based on a general and isolated teaching of the Vanderwood reference.

[00:01:33] Speaker 03:
And third, the PTO's arguments regarding emulsification and optimization reflect legal error and lack substantial evidentiary support.

[00:01:42] Speaker 02:
All right, let me get something out of the way in the beginning, or a couple things, quickly.

[00:01:48] Speaker 02:
You agree that Magnus discloses all of the limitations of claim one, except that it uses the CFC blowing yeast, right?

[00:01:57] Speaker 02:
Correct.

[00:01:58] Speaker 02:
Yes, Your Honor.

[00:01:58] Speaker 02:
So that's the thing that we're missing in Magnus.

[00:02:01] Speaker 03:
Yes.

[00:02:02] Speaker 02:
All right.

[00:02:02] Speaker 02:
Then the second point is, I think that it seems that you argue that government can't find, or PTO can't find a motivation to combine if the motivation isn't the same as the patentee's motivation in making his invention.

[00:02:17] Speaker 02:
But our case law is pretty clear that as long as there's a motivation, it doesn't have to tie necessarily to the patentee's motivation, right?

[00:02:25] Speaker 02:
Yes.

[00:02:25] Speaker 02:
We agree with that, Your Honor.

[00:02:26] Speaker 02:
OK.

[00:02:26] Speaker 02:
All right.

[00:02:27] Speaker 02:
Go ahead.

[00:02:28] Speaker 03:
Okay, Your Honor, in terms of the first point, I submit this case exemplifies the danger of an oversimplified assessment of obviousness by taking an isolated and generalized teaching of a prior reference.

[00:02:45] Speaker 03:
And here we have the PTO has reiterated its position that it can do just that, that it can isolate

[00:02:52] Speaker 03:
pentane from magnus and it's repeated its position and we quoted it back in the introduction of our reply brief because I think it's glaring but this is precisely what the PTO cannot do and this court has said time and time again it's impermissible within the framework of section 103 to pick and choose only so much of a portion of a reference that supports one's position to the exclusion of the remainder of the reference

[00:03:16] Speaker 03:
that other parts necessary to obtain a full appreciation of what the reference fairly suggests.

[00:03:23] Speaker 02:
OK.

[00:03:23] Speaker 02:
So you wouldn't disagree that there at least, whether it's from Vanderwooden or elsewhere, that the notion of replacing CFCs with something that's more environmentally friendly is something that was out there.

[00:03:40] Speaker 03:
We don't disagree with that, Your Honor.

[00:03:41] Speaker 02:
OK.

[00:03:41] Speaker 02:
So the point is, how does pentane get ever work in medics, right?

[00:03:47] Speaker 03:
Would there be a reasonable expectation of success in achieving the claimed invention?

[00:03:51] Speaker 02:
Correct.

[00:03:51] Speaker 02:
So on your argument about a multiplication, you say that that's federally different because it refers to polyether rather than polyester polyol.

[00:04:02] Speaker 02:
I'm having a hard time understanding why that distinction matters.

[00:04:05] Speaker 03:
Okay.

[00:04:06] Speaker 03:
Well, first of all, the claim is directed to a polyester polyol in a specific system with specific limitations and specific ratios.

[00:04:14] Speaker 03:
for which the claimed composition of chains significant benefits for making rigid foam at a given density and then a desired range.

[00:04:24] Speaker 03:
And it'll also allow you to use an appropriate amount of hydrocarbon blowing agent.

[00:04:28] Speaker 03:
So there's a single sentence in Vander Wooten.

[00:04:32] Speaker 03:
It's not a generalized teaching.

[00:04:33] Speaker 03:
In fact, it's essentially a statement of a problem with the prior arc.

[00:04:38] Speaker 03:
And it's directed to polyether polyols, not the claimed invention

[00:04:42] Speaker 03:
a polyester polyol.

[00:04:43] Speaker 03:
So you can't generalize anything from that.

[00:04:46] Speaker 03:
You can't generalize that.

[00:04:47] Speaker 02:
Explain to me what one of skill in the art would understand that distinction to mean.

[00:04:51] Speaker 02:
I mean, they're both polyols.

[00:04:53] Speaker 02:
That's the government's only response, really, is that, well, they're both polyols.

[00:04:57] Speaker 02:
But what is the difference from a standpoint of what a chemist, one skill in the art would understand at the time between use of a polyester and use of a polyether?

[00:05:08] Speaker 03:
I think all I can point to is in the record is that there are two different systems and that it was recognized that you could emulsify pentane to some degree in a polyether polyol system.

[00:05:23] Speaker 03:
But there's no statement in van der Roeden that you could emulsify pentane in a polyester polyol system.

[00:05:31] Speaker 03:
And I'd like to direct you to a particular page one point in van der Roeden.

[00:05:37] Speaker 03:
at JA-288, and if you read this, the opening portion of Vander Wooten, it comments on, not express the emulsification, but it says that there are solubility, I'll give you a moment if necessary, 288, and the opening middle of that left column, it says that there are solubility and compatibility issues with using pentane blowing agents

[00:06:07] Speaker 03:
with existing polyols, and therefore new formulas had to be developed, quote unquote.

[00:06:13] Speaker 03:
So there is not only solubility problems, but there are compatibility problems.

[00:06:17] Speaker 03:
So even setting solubility aside, there are compatibility problems, that means there are phase separation problems, with even emulsification is gonna have a phase separation problem.

[00:06:29] Speaker 03:
And Vander Rooten is teaching at a larger point that pentane

[00:06:34] Speaker 03:
It cannot be used in existing polyols without phase separation problems.

[00:06:39] Speaker 03:
And there's no teaching in van der Wooten, and the PTO doesn't have a point to any evidence, that you could build an emulsification to the claimed concentration of hydrocarbon blowing agent by using an emulsification process.

[00:06:53] Speaker 03:
It's not there.

[00:06:53] Speaker 03:
In fact, there's nothing in there in van der Wooten that suggests you can even emulsify pentane with any polyester polyol.

[00:07:02] Speaker 03:
let alone to the degree recited by the claim limitations here.

[00:07:08] Speaker 02:
Is that distinction addressed in the Hickey Declaration?

[00:07:16] Speaker 03:
Let me take a quick look here.

[00:07:19] Speaker 03:
The Hickey Declaration addresses the fact that there are unexpected benefits and unpredictability when you mix pentane in view of Anderwooden

[00:07:29] Speaker 03:
with the Magnus-type polyol.

[00:07:31] Speaker 03:
And so the Hickey Declaration at paragraph 17, for example, goes into detail as to why a person's skill in the art would find that it's unexpected and surprising that one could compatibilize such a high degree of hydrocarbons in the polyester polyol of Magnus.

[00:07:53] Speaker 00:
Let me ask a question.

[00:07:58] Speaker 00:
getting above the chemistry for a minute.

[00:08:01] Speaker 00:
Tell me why, at the end of the day, this is not a factual dispute between your client and the examiner, and the examiner didn't agree with your client's view of the facts.

[00:08:12] Speaker 00:
Why, under a substantial evidence standard, is there no reasonable basis to affirm the result that you're complaining against?

[00:08:20] Speaker 03:
Yes, Your Honor.

[00:08:21] Speaker 03:
First, let me take a step higher than that and say there is legal error

[00:08:25] Speaker 03:
in the analysis that the board engaged in, the first legal error was failure to consider the references and the claims as a whole.

[00:08:35] Speaker 03:
Considering just isolating pentane from van der Roeten, there is no teaching, suggestion, motivation, or any reason to believe that you would have a reasonable expectation of success when you consider van der Roeten as a whole to combine pentane with the polyol of magnus to somehow

[00:08:54] Speaker 03:
get to the ratios of the claimed invention.

[00:08:57] Speaker 03:
So the first error is a failure to consider the references and the claims as a whole.

[00:09:04] Speaker 02:
Secondly, there's further... You agree that in Magnus, you're in the ranges of the claimed invention.

[00:09:10] Speaker 02:
You're just saying that once you put the pentane in, you wouldn't have anticipated staying in those ranges.

[00:09:16] Speaker 03:
You wouldn't have anticipated... No, I don't agree that you would ever get to the range by taking pentane

[00:09:21] Speaker 03:
and combining it with the Magnus polyol from a point of view of a reasonable expectation of success.

[00:09:27] Speaker 03:
And that's the Hickey Declaration.

[00:09:30] Speaker 03:
The Hickey Declaration provided substantial and undisputed evidence that one would not expect to get to the claimed ratios, the hydrocarbon rate, hydrophobic ratios, by combining the pentane from Banaroon with the polyol of Magnus.

[00:09:46] Speaker 03:
And that's undisputed.

[00:09:47] Speaker 03:
When you take a look at the references as a whole, the evidence

[00:09:51] Speaker 03:
is to the effect, and undisputed, that you would not be able to expect to combine those pentane from Van der Rooten with the magnus polyol to achieve the claimed ratios.

[00:10:02] Speaker 00:
My concern, counsel, is if this were the context of a motion for summary judgment, I'd say you've raised a fact question.

[00:10:10] Speaker 00:
But it's not.

[00:10:11] Speaker 00:
The context is substantial evidence after a factual determination.

[00:10:16] Speaker 00:
And you have to show me that there's no reasonable basis the examiner could have reached the conclusion they did.

[00:10:22] Speaker 00:
That's what I'm interested in.

[00:10:24] Speaker 00:
Where is the lack of any reasonable basis?

[00:10:27] Speaker 03:
Well, let me comment on it.

[00:10:27] Speaker 03:
Beyond the error I just commented on, which is a legal error, there's another legal error before you can get to the threshold substantial evidence test.

[00:10:35] Speaker 03:
And that is what we have here is an unsupported argument of obviousness to try.

[00:10:41] Speaker 03:
And as you know, under KSR, obvious to try can only be acceptable at permissible and in very limited circumstances where there are a finite number of identified and unpredictable solutions.

[00:10:55] Speaker 03:
And here the board's decision fails on all three counts.

[00:10:58] Speaker 03:
There isn't a finite number of choices.

[00:11:01] Speaker 03:
They didn't identify what those choices were in the realm of all of the enormous number of possibilities.

[00:11:07] Speaker 03:
But perhaps most importantly,

[00:11:10] Speaker 03:
The choices are not predictable solutions.

[00:11:13] Speaker 03:
Mr. Hickey said that.

[00:11:14] Speaker 03:
Mr. Hickey's declaration.

[00:11:16] Speaker 02:
That's what I'm struggling with.

[00:11:18] Speaker 02:
I mean, I understand that the board has certain burdens here.

[00:11:24] Speaker 02:
But Mr. Hickey's declaration says you wouldn't have expected, based on Vanderwooden, to use the pentane and magnets and then end up with the right proportions, the optimization.

[00:11:39] Speaker 02:
He never says, and one of skill in the art would never think that you could do that.

[00:11:47] Speaker 02:
Right?

[00:11:48] Speaker 02:
He doesn't come right out and say that.

[00:11:49] Speaker 03:
I think the fair reading of the Hickey Declaration is there would be no reasonable expectation of success in combining, using the teachings of the references as a whole

[00:12:00] Speaker 03:
that one would arrive at the claimed hydrophobic and other ratios of the claim.

[00:12:06] Speaker 03:
I believe that's one important aspect of paragraph 17.

[00:12:11] Speaker 03:
In part, to quote it says, it is surprising to find that much lower levels of these refer to hydrophobic materials

[00:12:28] Speaker 03:
in combination with surfactants are effective in compatibilizing these high percentages of hydrocarbons.

[00:12:35] Speaker 03:
He's saying that it's surprising the art is unpredictable and therefore there are no result-effective variables.

[00:12:43] Speaker 03:
Therefore there is not a finite number of identified and predictable solutions.

[00:12:49] Speaker 03:
So again, there's a legal question that overlies the substantial evidence issue.

[00:12:55] Speaker 03:
You don't even get to the substantial evidence issue because of the legal error in conducting what here is an unsupported obviousness to try argument by the PCAP.

[00:13:08] Speaker 00:
How should we take into consideration the interested nature of the Hickey Declaration?

[00:13:15] Speaker 00:
How should we weigh that as opposed to a disinterested declaration?

[00:13:21] Speaker 03:
You weigh that as the PTO suggests.

[00:13:25] Speaker 03:
It should be given some weighting.

[00:13:29] Speaker 03:
You should consider that, although I don't think that that will drive a different outcome or a different analysis at the end of the day.

[00:13:35] Speaker 03:
You're not going to discount it to zero.

[00:13:37] Speaker 03:
There's no reason to discredit Mr. Hickey's testimony under oath by declaration.

[00:13:43] Speaker 03:
And the PTAB has not shown any reason to do so.

[00:13:47] Speaker 03:
So I think it's worthy.

[00:13:48] Speaker 03:
of some consideration, but I don't think it's material in the analysis at that end.

[00:13:53] Speaker 00:
You acknowledge it's not as strong if it were from a disinterested source.

[00:13:57] Speaker 03:
Yes.

[00:13:59] Speaker 03:
Yeah, we wouldn't dispute that.

[00:14:00] Speaker 03:
Now, let me just echo a little bit further the point on obviousness to Troy, and I take your honors to the in-ray cycle benzoprene hydrochloride case 676F3 at 1070, 1071, 72, and 73.

[00:14:14] Speaker 03:
where this court said where the prior art at best gives only a general guidance as the particular form of the claimed invention or how to achieve it, or merely if it's a promising field to experiment, an obvious to try theory is impermissible.

[00:14:31] Speaker 03:
And that's what we have here.

[00:14:33] Speaker 03:
We have a generalized isolated teaching that might stir up some interest to experiment with no expectation that one would arrive at these particular

[00:14:43] Speaker 03:
claimed ratios, which are associated with a particular end product.

[00:14:50] Speaker 03:
And there also are an enormous number of choices of what hydrophobic material, acid-based material, hydroxylated material, surfactants, amounts of water, and just the comment on the amount of water.

[00:15:02] Speaker 03:
There's no teaching that the PCO points to as to the claimed amount of water.

[00:15:06] Speaker 03:
They just say, oh, there's a wide range in Magnus.

[00:15:10] Speaker 03:
And if you look at Magnus,

[00:15:12] Speaker 03:
column 13, line 58, the range is zero to 20 weight percent.

[00:15:16] Speaker 03:
That's not teaching the specific water limitation of the claim.

[00:15:21] Speaker 03:
And that point is just to emphasize that what we have here is a case of obviousness to experiment, whether it would be obvious to experiment.

[00:15:30] Speaker 03:
And again, you need a finite number of identified, predictable solutions.

[00:15:34] Speaker 03:
And the evidence in this case is that you have none.

[00:15:37] Speaker 03:
You have none of those three requirements satisfied.

[00:15:40] Speaker 03:
You don't have predictable solutions.

[00:15:42] Speaker 03:
And for that reason, there's no result effective variables.

[00:15:45] Speaker 03:
The optimization test is unsupported.

[00:15:48] Speaker 03:
And one last count.

[00:15:50] Speaker 02:
Yes.

[00:15:51] Speaker 02:
We'll restore your rebuttal time.

[00:15:52] Speaker 02:
Very good.

[00:15:53] Speaker 02:
Thank you, Ron.

[00:15:54] Speaker 02:
We'll give you three minutes.

[00:15:55] Speaker 02:
We'll give the government three more minutes if it's necessary.

[00:16:02] Speaker 01:
Good morning.

[00:16:03] Speaker 01:
Good morning.

[00:16:04] Speaker 01:
May it please the court?

[00:16:06] Speaker 01:
I think this case really boils down to the reasonable expectation of success.

[00:16:10] Speaker 01:
And that is a question of fact to which we're entitled to deference on.

[00:16:14] Speaker 01:
So I'd like to just go through what the basis is to show that there was a reasonable expectation of success.

[00:16:20] Speaker 01:
Van der Wouden teaches that you could substitute pentane for CFC in a polyester polyol.

[00:16:27] Speaker 01:
Van der Wouden also teaches that solubility depends on polarity.

[00:16:33] Speaker 01:
Magnus teaches that if you take a non-ionic surfactant and you add it to the hydrophobic component,

[00:16:39] Speaker 01:
you get surprisingly compatible, compatibilizing a blowing agent.

[00:16:44] Speaker 01:
It's a CFC blowing agent, but it shows the surprising compatibilization.

[00:16:49] Speaker 01:
Magnus also teaches the starting point for the concentration of the blowing agent.

[00:16:54] Speaker 01:
Magnus specifically, in one of his examples, teaches 33% freon.

[00:16:59] Speaker 01:
And finally, Hickey simply substituted

[00:17:04] Speaker 01:
an amount of a different blowing agent into the Magnus composition and got the same results.

[00:17:11] Speaker 02:
The key point here though is whether or not you can get to the optimization level using pentane.

[00:17:23] Speaker 02:
The government seems to concede that a multiplication is a key issue, right?

[00:17:28] Speaker 01:
Emulsification is an alternative that the boards look to, because there's also a teaching in Van der Wooten that you can emulsify.

[00:17:35] Speaker 01:
But it's not our only way of getting there.

[00:17:38] Speaker 01:
So actually, a simple substitution would get you there.

[00:17:41] Speaker 01:
Because if you look at Magnus, and I think it's example 16.

[00:17:49] Speaker 01:
It's example 16 in column 22.

[00:17:51] Speaker 01:
That has 33% free on.

[00:17:54] Speaker 01:
So if you just put in 33%

[00:17:57] Speaker 01:
of pentane into that, you would fall within Hickey's claims.

[00:18:02] Speaker 01:
But even if you didn't do a simple substitution, van der Wooten teaches you that you can change hydrophobicity, you can change polarity, and that will change solubility.

[00:18:14] Speaker 01:
And Magnus teaches you that hydrophobicity isn't the only thing.

[00:18:18] Speaker 01:
A non-ionic surfactant, in addition to hydrophobicity, can compatibilize surprisingly.

[00:18:25] Speaker 02:
Do you see that there's any kind of distinction between a polyester and a polyether?

[00:18:33] Speaker 01:
Well, Vander Wooten tested polyester-polyether blends, and he did find differences between them to some extent.

[00:18:39] Speaker 02:
Right, but in Vander Wooten, in order to deal with what he was talking about for purposes of a multiplication, he required the presence of a dimmer acid, right?

[00:18:54] Speaker 01:
So van der Wouden is only this dimer acid, so it is a different system than the magma system.

[00:19:03] Speaker 01:
But I think if you look at his emulsification teaching, which is at 289, the first two sentences under compatibility in column one, he says, pentane, however, is barely soluble in these formulations and must be emulsified in the creep line.

[00:19:18] Speaker 01:
I actually think it's unclear whether he's just talking about the polyether polyol.

[00:19:23] Speaker 01:
or the ones that also have polyesters that mixed in.

[00:19:28] Speaker 01:
But emulsification is just vigorous shaking, and I don't think there's any reason to believe that vigorous shaking wouldn't work with a polyester as well as a polyether.

[00:19:39] Speaker 01:
Finally, we don't think that this is an obvious tricase.

[00:19:42] Speaker 01:
To the contrary, we think it's a simple substitution.

[00:19:44] Speaker 01:
If you take every element of magnus and just substitute in pentane

[00:19:49] Speaker 01:
for a fluorofluorocarbon, which the market demand was that you needed to do so, according to the Montreal Protocol, you think that's a claimed invention.

[00:19:57] Speaker 02:
Not that you necessarily needed to substitute a pentane, but you needed to substitute something.

[00:20:01] Speaker 02:
Right.

[00:20:01] Speaker 02:
Well, hydrocarbon.

[00:20:02] Speaker 02:
Right.

[00:20:02] Speaker 02:
Right.

[00:20:03] Speaker 02:
So hydrocarbon.

[00:20:04] Speaker 02:
But I guess I'm still struggling with how we get within the ranges claimed.

[00:20:11] Speaker 01:
Like I said, I think you could do a simple substitution, because Magnus tells you to use 33% freon, so if you use 33% pentane, that would fall within the claim calls for 14 to 35%, I believe.

[00:20:25] Speaker 02:
Now, but this is assuming that we now accept your attack on Hickey's methodology for his calculations, right?

[00:20:35] Speaker 01:
So what Hickey does is he takes this one example, and he figures out that it has 68% of a hydrophobic component.

[00:20:43] Speaker 01:
And then he seems to say that because this dimer acid-based polyester polyol has 68% of a hydrophobic component, you would necessarily need 68% in the MAGNUS system.

[00:20:56] Speaker 01:
But that doesn't take into account that MAGNUS also uses a non-ionic surfactant.

[00:21:01] Speaker 01:
And Magnus is over and over, actually that seems to be what Magnus' invention is, that you get surprising results for compatibilization when you add a non-ionic surfactant to a hydrophobic component.

[00:21:13] Speaker 01:
So we don't believe that Hickey took that into account in his declaration and that you wouldn't necessarily take the same amount from a dimer acid, which actually he's excluded from his claim, from a dimer acid, polyester, polyol, into the Magnus.

[00:21:28] Speaker 01:
Why wouldn't you start with Magnus' starting point?

[00:21:31] Speaker 01:
Did you attack his methodology though before this proceeding?

[00:21:37] Speaker 01:
Well, the board basically just says that, I can point to it.

[00:21:43] Speaker 01:
So the board says that it finds it not persuasive because it's based on, and this is A7 to A8.

[00:21:51] Speaker 01:
So it says, it talks about the Hickey Declaration and that

[00:22:00] Speaker 01:
Van der Wooten's polyol has an amount of hydrophobic material outside the claim hydrophobic amount.

[00:22:08] Speaker 01:
But the board finds that not persuasive because we're relying on Magnus as our primary reference, not Van der Wooten.

[00:22:17] Speaker 01:
What Hickey does is he starts with Van der Wooten and then he makes all his assumptions from Van der Wooten and then he just says, well, this would apply to Magnus too.

[00:22:25] Speaker 01:
But he gives no reasoning or analysis.

[00:22:28] Speaker 01:
The office's rejection starts with magnus, because that teaches all the elements of the claim, and then just substitutes in the pentane.

[00:22:42] Speaker 01:
If the court has no further questions, I'll yield my time and ask if you're referring the court's decision.

[00:22:48] Speaker 01:
All right.

[00:22:48] Speaker 01:
Thank you.

[00:22:55] Speaker 03:
I'll try to make a couple of quick points.

[00:22:58] Speaker 03:
I think there's a bit of a misstatement.

[00:23:00] Speaker 03:
Mr. Hickey looked at all three examples of the polyol from the Van Der Wooden reference.

[00:23:09] Speaker 03:
Second.

[00:23:11] Speaker 02:
What's your response, though?

[00:23:13] Speaker 02:
Because this did seem to be like we had two ships passing in the night a little bit.

[00:23:17] Speaker 02:
You start with Van Der Wooden.

[00:23:18] Speaker 02:
The government starts with Magnus.

[00:23:23] Speaker 02:
you know, look at the closest reference, start there.

[00:23:26] Speaker 02:
I mean, the closest reference really is Magnus.

[00:23:27] Speaker 02:
You admit that only one claim limitation is missing.

[00:23:30] Speaker 03:
Let me say it this way.

[00:23:32] Speaker 03:
Mr. Hickey looked at Magnus, and he looked at combining pentane with Magnus.

[00:23:36] Speaker 03:
And if you read the declaration, he says, reading the prior art as a whole, you would expect to need over 50% of hydrophobic material using the Magnus polyol, using the Magnus polyol.

[00:23:50] Speaker 03:
So he therefore concludes pretty readily

[00:23:53] Speaker 03:
that you're outside of the claims, the reasonable expectation is I can't satisfy the claimed ratios using the magnus polyol with pentane.

[00:24:01] Speaker 03:
And that's why there's no reasonable expectation of success.

[00:24:04] Speaker 03:
And that's using, again, the magnus polyol.

[00:24:07] Speaker 03:
And if I could back up for a second, I think the board's whole notion of what success should be measured against environmental reasons is legally erroneous.

[00:24:17] Speaker 03:
You've got to look at

[00:24:18] Speaker 03:
success in terms of what's claimed.

[00:24:20] Speaker 03:
The claims are directed to a rigid polyol for making rigid foam in the desired range, and the spec tells you you have phase stability problems.

[00:24:29] Speaker 03:
That's the context of success.

[00:24:31] Speaker 02:
I think I understood the government to simply say that the environmental reason is the motivation, but then you have to have a reasonable expectation of success for the workability of the product.

[00:24:42] Speaker 02:
for given intended uses.

[00:24:44] Speaker 03:
I think I can accept that.

[00:24:46] Speaker 03:
And let me highlight what I heard counsel say.

[00:24:49] Speaker 03:
You could try.

[00:24:50] Speaker 03:
I think I heard it more than once.

[00:24:52] Speaker 03:
You could try to use the 33% number from the Magnus polyol.

[00:24:56] Speaker 03:
You could try this.

[00:24:57] Speaker 03:
You could try that.

[00:24:58] Speaker 03:
You could try a lot of things.

[00:25:00] Speaker 03:
But as we briefed it, there are an enormous number of things you could try, enormous number of decisions to make.

[00:25:05] Speaker 03:
And to say you could try when there is not a finite number of identified predictable solutions

[00:25:11] Speaker 03:
you by definition have presented an unsupported obviousness to try argument.

[00:25:16] Speaker 03:
This case is not sufficient under 103 to say I could try using a certain weight percent number and satisfy the claim.

[00:25:26] Speaker 03:
The issue is whether there's an adequate teaching looking at the references as a whole to arrive at the claimed ratios.

[00:25:34] Speaker 03:
The evidence is not there.

[00:25:36] Speaker 03:
Mr. Hickey's declaration is valid, it's unrebutted.

[00:25:40] Speaker 03:
It was simply ignored.

[00:25:41] Speaker 03:
And if you read it, the brief, the PTO's position is that we're entitled to ignore the Hickey Declaration.

[00:25:47] Speaker 03:
And then they still try to attack it.

[00:25:48] Speaker 03:
But their first-tier argument is, we can ignore it again.

[00:25:52] Speaker 03:
Pardon me?

[00:25:52] Speaker 03:
It's not ignored.

[00:25:53] Speaker 03:
Well, their first-level argument is, I don't need to consider the Hickey Declaration because I can legitimately take pen paint from vandalism.

[00:26:01] Speaker 03:
But they do go on to then argue against it.

[00:26:05] Speaker 03:
No question there, Your Honor.

[00:26:07] Speaker 03:
So we would submit that,

[00:26:09] Speaker 03:
The Patent Office has failed to establish a showing of reasonable expectation of success.

[00:26:16] Speaker 03:
The applicant is entitled to a patent and we respectfully request a reversal of the Board's decision.

[00:26:22] Speaker 03:
Thank you.