[00:00:26] Speaker 03:
The final case for argument this morning is 141487, in-ray NAS, now automation system.

[00:01:07] Speaker 04:
Morning, Your Honors.

[00:01:08] Speaker 04:
Andrew Lake on behalf of the Patent Owner Notification Systems.

[00:01:14] Speaker 04:
This case is here on appeal because after the smoke has cleared in this re-examination proceeding, dealing with multiple grounds of rejection, the case now turns on a fundamental question of whether the combination of references

[00:01:37] Speaker 04:
meets all of the claim elements of claim one.

[00:01:44] Speaker 04:
The references at issue here are Williams and Shanklin, as relevant here for the subject matter were for purposes of this appeal.

[00:01:57] Speaker 04:
And so this case is going to turn on the claim language.

[00:02:01] Speaker 04:
Claim one, which we acknowledge is representative of the subject matter for purposes of this

[00:02:08] Speaker 04:
is directed to a cutter sealer for cutting and sealing layers of polymer film.

[00:02:16] Speaker 04:
The cutter sealer having a blade, having a cutting edge, which is adapted to transfer heat from the blade to the layers of film to soften a portion of the layers of film along the cutting edge.

[00:02:38] Speaker 03:
So what's missing in the references relied on by the patent office?

[00:02:41] Speaker 04:
What is missing is the element of softening a portion of the layers of film along the cutting edge of the blade.

[00:02:52] Speaker 02:
Without liquefying.

[00:02:53] Speaker 04:
Without liquefying.

[00:02:54] Speaker 02:
Now, why isn't it the case that since Shanklin, which does not liquefy, but does have a heating component,

[00:03:06] Speaker 02:
heats to, I think, 270 to 280 degrees Fahrenheit.

[00:03:11] Speaker 02:
Why doesn't that read on the heating aspect of the claim?

[00:03:17] Speaker 02:
Because if I read the specification correctly in your patent, you only heat to about 190 to 200 in, what was it, 220, something like that.

[00:03:28] Speaker 02:
Yes, you're right.

[00:03:28] Speaker 02:
In any event, so Shanklin is even warmer than your patent.

[00:03:35] Speaker 02:
Why doesn't that essentially take care of the problem of the heating, the softening that results from the heating?

[00:03:42] Speaker 04:
Well, there are two critical issues with regard to the heating in these systems.

[00:03:49] Speaker 02:
There is the heating to seal and it heats to soften.

[00:03:52] Speaker 04:
Heat to seal and heat to cut.

[00:03:54] Speaker 02:
Right.

[00:03:55] Speaker 04:
In the melting type systems.

[00:03:57] Speaker 04:
Right.

[00:03:57] Speaker 04:
Shanklin specifically states in their summary of the invention section

[00:04:03] Speaker 04:
that they are only concerned with heating as it relates to the sealing aspect.

[00:04:10] Speaker 02:
Well, it's interesting to me that that's what they say, but that doesn't seem to be consistent with the description of Shacklin in the specification, which as describes a considerable degree of heating.

[00:04:26] Speaker 02:
Isn't that what's going on in Shanklin if you read the specification other than their statements that they aren't concerned with softening?

[00:04:35] Speaker 04:
Shanklin is a mechanical, sharp, serrated blade, guillotine-like cutting apparatus.

[00:04:46] Speaker 04:
The noses of the seal bars come down, press against the film layers, and then the blade comes down

[00:04:55] Speaker 04:
and does a retractable guillotine-like cut with a sharp serrated blade.

[00:05:02] Speaker 04:
Shanklin specifically states that because that cut is made mechanically, they do not soften the film at the cutting edge.

[00:05:17] Speaker 04:
The softening only takes place, if you will, out at the seal bar.

[00:05:24] Speaker 04:
where they are concerned with only the temperature as relates to sealing.

[00:05:32] Speaker 04:
Temperature is irrelevant to how shankling cuts.

[00:05:36] Speaker 04:
Shankling could cut with no heat.

[00:05:39] Speaker 04:
That sharp serrated blade, it would be like with your saran wrap when you rip it off the serrated blade on the edge of the box.

[00:05:46] Speaker 04:
There is no heat required to make that cut, but the sealing in shankling

[00:05:52] Speaker 04:
specifically is directed to the sealing operation.

[00:05:57] Speaker 04:
Shanklin specifically states that because the cut is made mechanically rather than by softening the film, they then are not concerned about getting residue built up on the blade because the sealing is done at a lower temperature.

[00:06:17] Speaker 02:
But the blade in Shanklin is heated, correct?

[00:06:20] Speaker 04:
They say that the blade is trapped between the seal jaws.

[00:06:24] Speaker 02:
And therefore is heated.

[00:06:25] Speaker 04:
And there is heat.

[00:06:27] Speaker 04:
The blade is heated.

[00:06:28] Speaker 02:
And it even goes so far as to say the blade is heated to the previously determined temperature, which I think is higher than the temperature that you heat the blade to.

[00:06:39] Speaker 04:
Well, the fact that the blade has heat is the claimed invention requires that the blade

[00:06:49] Speaker 04:
have a cutting edge which is adapted to transfer that heat from the blade to the layers of film along the cutting edge of the film to soften the layers of film prior to the pass through of the blade through the film.

[00:07:14] Speaker 04:
Shanklin has no teaching whatsoever

[00:07:19] Speaker 04:
that there is any configuration that the blade transfers that heat to the film for purposes of softening the film along the cutting edge.

[00:07:31] Speaker 04:
It is just an instantaneous razor sharp guillotine cut.

[00:07:36] Speaker 04:
There is no recognizable softening stage where the blade will transfer heat to the layers of film

[00:07:48] Speaker 04:
along the cutting edge as claimed.

[00:07:53] Speaker 01:
Mr. Lake, you haven't allowed claims, is that right?

[00:07:57] Speaker 04:
We do have allowed claim for, yes, Your Honor.

[00:07:59] Speaker 01:
And my overall impression, tell me if this is an oversimplification, is that the office was concerned more with the breadth and the absence of limitations in your broader claims that were remedied in that way.

[00:08:17] Speaker 01:
allowed, and the allowed claim looks quite narrowly drawn, but can be read.

[00:08:24] Speaker 01:
It seems to me to be describing what you're telling us is the invention.

[00:08:31] Speaker 01:
Is that accurate?

[00:08:33] Speaker 04:
If I understand your question, correct Judge Newman.

[00:08:39] Speaker 04:
There's never been a discussion during this entire re-examination proceeding about whether or not there was any

[00:08:48] Speaker 04:
over breadth or breadth to the claim language that was ambiguous or amenable to differing interpretations or that was not clear cut.

[00:09:01] Speaker 04:
I would submit with great respect that this claim, claim one, is very clear.

[00:09:09] Speaker 04:
It includes a positive and a negative limitation of that the blade must be adapted

[00:09:18] Speaker 04:
to transfer heat from the blade through the cutting edge of the blade to the layers of film to soften those layers of film or weaken those layers of film, make them less hard.

[00:09:36] Speaker 04:
And then whereby after that softening element has been achieved,

[00:09:46] Speaker 04:
It is only after that element has been achieved in the whereby clause that afterward the blade will then pass through the film, allowing the shoulders of the blade to then seal the film after the tip of the blade has passed through the film.

[00:10:04] Speaker 04:
Shanklin, they seal first and then slice and force the blade through the film.

[00:10:15] Speaker 04:
The claim

[00:10:16] Speaker 04:
system does it the opposite way.

[00:10:19] Speaker 04:
It puts the tip of the blade in contact with the film first, transfers that heat to that portion of the layers of film along that cutting edge, and then after the blade then is able to travel through the film allowing those shoulders to press up against.

[00:10:40] Speaker 04:
So I submit that

[00:10:43] Speaker 04:
Williams, there's no question the board has held, does not meet that limitation of softening the film along the cutting edge without liquefying.

[00:10:56] Speaker 04:
It can be accepted that Shanklin does not liquefy.

[00:11:01] Speaker 04:
We will accept that Shanklin does not liquefy the film.

[00:11:05] Speaker 04:
But they do not, and they specifically state that they do not soften the film.

[00:11:12] Speaker 04:
along the cutting edge.

[00:11:15] Speaker 04:
They actually say that because their cut is made mechanically with the serrated retractable blade, that they do not soften the film along that cutting edge.

[00:11:28] Speaker 04:
That is straight from the description of Shanklin.

[00:11:32] Speaker 04:
So the patent office is relying on Shanklin as teaching a feature, the softening feature,

[00:11:43] Speaker 04:
that Shanklin specifically states that it does not do.

[00:11:49] Speaker 04:
And so we submit that the Patent Office has failed to present references that meet each and every one of the limitations of those claims.

[00:12:02] Speaker 04:
The examiner down below took the position that all of the claim language was merely functional intended use language.

[00:12:10] Speaker 04:
And the examiner down below didn't give any patentable weight to that language whatsoever.

[00:12:16] Speaker 04:
The board, to their credit, determined that that functional language, although functional in nature, was characterizing the invention and imparting structure.

[00:12:29] Speaker 04:
But there was so much time and effort focused on this other Bell reference that the board overturned that

[00:12:40] Speaker 04:
They looked at Shanklin and said, Shanklin doesn't liquefy.

[00:12:44] Speaker 04:
And they jumped to the conclusion that it met all the claim limitations.

[00:12:49] Speaker 04:
But they forgot about the softening limitation, which Shanklin says it specifically does not do.

[00:12:59] Speaker 04:
And I see that I'm into my rebuttal time.

[00:13:01] Speaker 03:
Do you want to stay, but why don't we hear from you?

[00:13:03] Speaker 03:
Yes, thank you.

[00:13:14] Speaker 00:
May it please the court?

[00:13:16] Speaker 00:
Williams teaches almost every element of Representative Claim 1, and Shanklin teaches to cut and seal the polymer at a temperature below its melting point.

[00:13:25] Speaker 00:
Shanklin does teach to soften the film, and it says so in two places in the patent.

[00:13:31] Speaker 00:
It says so at column 2, line 17 to 21.

[00:13:35] Speaker 00:
It says a minimum of softening of the film is encountered, and then it says column 4, softened film in the seal area.

[00:13:44] Speaker 00:
And Judge Bryson, as you said, Shanklin also teaches that column 3, lines 58 to 64, that the cutting knife is heated to essentially the same temperature as the ceiling bars.

[00:13:57] Speaker 00:
And that temperature is between 270 to 280 degrees.

[00:14:02] Speaker 00:
And the examiner found on A809 that heating the blade to 270 to 280 degrees would soften the film.

[00:14:11] Speaker 00:
And that fact-finding is supported by substantial evidence.

[00:14:15] Speaker 00:
I'll just talk briefly.

[00:14:17] Speaker 00:
Well, what about Shanklin's disclaimer?

[00:14:21] Speaker 02:
Maybe that's a term of art, but Shanklin says that it, in fact, does not soften the film, the blade, the cutting is not.

[00:14:28] Speaker 02:
Let me just read it in precise language because it's easy to get it wrong.

[00:14:32] Speaker 02:
The cut is made mechanically in the present image, and this is at the bottom of column three of Shanklin, rather than by softening the film.

[00:14:39] Speaker 02:
So that sounds like what they're saying is we do not

[00:14:44] Speaker 02:
For purposes of cutting, as opposed to for purposes of sealing, we do not soften the film.

[00:14:49] Speaker 00:
So, Shanklin does both.

[00:14:50] Speaker 00:
It cuts mechanically, but it also softens the film because its blade is at 200 degrees.

[00:14:54] Speaker 02:
But that's an odd way to say it when they say we don't soften, to say that we do both.

[00:14:59] Speaker 02:
We cut and soften.

[00:15:00] Speaker 02:
What I would have assumed, without that sentence, I would have assumed that Shanklin would be taking advantage of both the softening, which makes it easier to cut, presumably, and also the cutting, which Shanklin does.

[00:15:13] Speaker 02:
in which case that would be a very strong reference.

[00:15:16] Speaker 02:
But that sentence seems to disclaim the softening aspect of the two elements of the way that the cut is affected.

[00:15:26] Speaker 02:
Why doesn't it?

[00:15:28] Speaker 00:
I do think Shanklin cuts mechanically.

[00:15:30] Speaker 00:
That is what Shanklin says.

[00:15:32] Speaker 02:
Well, so does the invention.

[00:15:35] Speaker 00:
Correct.

[00:15:36] Speaker 00:
And the invention, like you said, Shanklin heats to a higher temperature than even the 473 patent

[00:15:41] Speaker 00:
So it is softening.

[00:15:42] Speaker 00:
Maybe Shanklin's not relying on the softening to do the cutting, but it's still softening.

[00:15:47] Speaker 02:
But what Mr. Lake is saying is that, I believe, is that Shanklin may have a hot blade, but that hot blade comes through the film so quickly that there's no softening effect that is produced by the heat of the blade, the guillotine effect.

[00:16:05] Speaker 00:
But that's just attorney argument, and the examiner made a finding of fact on A809 saying when it's

[00:16:11] Speaker 00:
when the blade is heated to 270 to 280 degrees, it's going to soften the film next to the blade.

[00:16:17] Speaker 00:
And the 473 patent says that it softens the film next to the blade when it's heated to a much lower amount.

[00:16:23] Speaker 00:
So that fact finding is supported by substantial evidence.

[00:16:29] Speaker 00:
If the court has no questions on any other issues?

[00:16:32] Speaker 01:
What troubles me here is that it looks as if with

[00:16:37] Speaker 01:
a bit more specificity in the broader claims.

[00:16:40] Speaker 01:
These objections could have been overcome.

[00:16:42] Speaker 01:
This is an ex-party re-examination.

[00:16:45] Speaker 01:
How does that work in the relationships between the applicant and the examiner?

[00:16:53] Speaker 00:
As far as I know, these were their original claims, which they chose not to amend.

[00:16:58] Speaker 00:
They added some new claims.

[00:17:00] Speaker 00:
They always have the opportunity to amend these claims if they so chose, and I see nothing of that

[00:17:06] Speaker 00:
in the file history.

[00:17:07] Speaker 00:
Like you said, claim four was not rejected, which has further limitation.

[00:17:17] Speaker 00:
The court has no further questions.

[00:17:18] Speaker 00:
I'll yield my time.

[00:17:32] Speaker 04:
Thank you.

[00:17:32] Speaker 04:
The solicitor maintains that there is,

[00:17:36] Speaker 04:
perhaps an inherent softening of the film that is occurring in some instantaneous manner as this Shanklin guillotine blade comes down and cuts the film.

[00:17:48] Speaker 04:
I would submit that that is a unreasonable interpretation of Shanklin.

[00:17:54] Speaker 04:
Shanklin specifically states that he does not have to rely on temperature to cut his temperature

[00:18:04] Speaker 04:
is only if I may cite to column two of Shanklin where Shanklin states in lines 11 through 13 that the present invention is designed to concentrate on only the ceiling temperature.

[00:18:32] Speaker 04:
They concentrate only on the sealing temperature since the cut is accomplished mechanically.

[00:18:38] Speaker 04:
So there is no teaching or disclosure in Shanklin of configuring that blade to transfer heat to the layers of film to soften along the cutting edge.

[00:18:54] Speaker 04:
Shanklin's blade is a serrated blade.

[00:18:57] Speaker 04:
There is no configuration of that blade

[00:19:02] Speaker 04:
to transfer heat through those serrated edges along the cutting edge to facilitate the cut.

[00:19:13] Speaker 01:
So the office tells us that they're entitled to give the references in your claims the broadest reasonable interpretation.

[00:19:22] Speaker 01:
And so you tell us that that's not reasonable.

[00:19:25] Speaker 01:
But they've given it that interpretation.

[00:19:27] Speaker 01:
Don't you have an opportunity to

[00:19:31] Speaker 01:
add limitations to the claim to clarify that you're not reaching or overreaching into the direction that the office has, let's say, unreasonably imparted to the reference?

[00:19:46] Speaker 04:
Well, in this case, Your Honor, it's very interesting.

[00:19:49] Speaker 04:
We interviewed this case with the examiner and the panel several occasions, three times.

[00:19:56] Speaker 04:
After the second interview, it was agreed

[00:19:59] Speaker 04:
that the claims were all going to be allowable with a very small, very small clarifying amendment to claim one, adding the term softened layers of film later on in the claim.

[00:20:12] Speaker 04:
We had agreement.

[00:20:14] Speaker 04:
The examiner then changed his mind and issued a final rejection.

[00:20:20] Speaker 04:
We then posited claim amendments after final.

[00:20:25] Speaker 04:
The examiner refused to enter them.

[00:20:27] Speaker 04:
based on creating a new issue, which was, again, an improper, unfair predicament to put us in in an after-final situation after changing his mind in the interview.

[00:20:42] Speaker 04:
And that is of the record down below.

[00:20:44] Speaker 04:
I wasn't hanging the examiner out to dry for changing his mind because they're entitled to do that.

[00:20:51] Speaker 04:
But it put us behind the eight ball in terms of possibly modifying the claims to address those concerns.

[00:20:58] Speaker 04:
But we went to appeal, most of the argument down below was based on this other Bell reference.

[00:21:09] Speaker 04:
We had declarations, even though we submitted that the Patent Office had not met their prima facie case of obviousness, we submitted substantial evidence of non-obviousness showing that even if you could combine the references to reach all those limitations,

[00:21:28] Speaker 04:
turning the temperature down on the Williams device would render it inoperable.

[00:21:35] Speaker 04:
It would change the whole principle of operation of Williams.

[00:21:39] Speaker 04:
Williams is a melting system.

[00:21:42] Speaker 04:
The blade comes in and melts its way through the film which facilitates the cutting and the sealing of the film.

[00:21:50] Speaker 04:
The film beads up along the edges and it helps facilitate the fusing of the film together.

[00:21:56] Speaker 04:
If you were to just

[00:21:58] Speaker 04:
turn the temperature down so it doesn't liquefy anymore, Williams would not be able to cut.

[00:22:07] Speaker 04:
It would not be able to function the way it was intended.

[00:22:13] Speaker 04:
It would have to turn itself into that retractable blade in order to cut.

[00:22:18] Speaker 04:
And that is not just attorney argument.

[00:22:21] Speaker 04:
That is expert testimony in this case that has been submitted.

[00:22:28] Speaker 02:
find to derive the notion that the blade is a guillotine-type blade that does not have sufficient, is not sufficiently close to the film, or does not otherwise transfer.

[00:22:45] Speaker 04:
Yes, Your Honor.

[00:22:47] Speaker 02:
As opposed to, let's say, the invention, where the blade does transfer heat.

[00:22:53] Speaker 04:
Yes.

[00:22:54] Speaker 04:
In column three, lines 56,

[00:23:00] Speaker 04:
onward.

[00:23:03] Speaker 04:
It talks about that the operation of the retractable blade and how it forces its way through the film.

[00:23:13] Speaker 02:
Yes, but so does yours.

[00:23:15] Speaker 02:
Yours forces its way through the film because it doesn't melt the film, it just makes it easier for the blade to get through.

[00:23:22] Speaker 02:
My question is, where do you derive from Shanklin this notion that

[00:23:26] Speaker 02:
this blade, no matter how hot it is, is coming from way up here and going through the film so fast that the effect, there can be no effect of a heat transfer in any degree in softening the film, which is your argument, as I understand it.

[00:23:42] Speaker 04:
Well, it is based on expert declarations in the case that hold that Shanklin is a mechanical serrated retractable blade

[00:23:56] Speaker 04:
that does not do that.

[00:23:57] Speaker 04:
It is expert declarations in this case, Your Honor, for that proposition.

[00:24:02] Speaker 03:
Let me interrupt.

[00:24:03] Speaker 03:
You're way above your time, and this is a bit irregular, but the Patent Office solicitor's person sat down a bit too quickly.

[00:24:12] Speaker 03:
So we still have a remaining question for her, if you know objection to that.

[00:24:17] Speaker 03:
And then we'll give you a minute to respond, if it's necessary, to anything the Patent Office has to say, if that's okay.

[00:24:24] Speaker 03:
Sometimes you all behave more quickly than we are willing to accept.

[00:24:28] Speaker 03:
So it's a bit unusual, but why don't we ask Ms.

[00:24:31] Speaker 03:
Lynch if she'll approach again?

[00:24:33] Speaker 03:
You had about 10 minutes remaining.

[00:24:35] Speaker 03:
So we've got a lot of time left.

[00:24:37] Speaker 01:
I want to ask you an embarrassing question.

[00:24:41] Speaker 01:
Okay.

[00:24:43] Speaker 01:
Accepting what Mr. Lake has told us that he missed an opportunity to make additional amendments

[00:24:53] Speaker 01:
during the ex parte re-examination for whatever reasons perhaps are irrelevant, but we do know that one of the procedures and advantages of the ex parte re-examination is the opportunity to sharpen your claims one or another.

[00:25:12] Speaker 01:
So if it was accurate that this opportunity was missed and might have clarified things further,

[00:25:21] Speaker 01:
Isn't it appropriate for the office to take the case back and essentially pick up where the re-examination was left off?

[00:25:32] Speaker 00:
I'm not quite prepared to answer that because I don't know the facts of what happened, but my understanding... Well, we don't know.

[00:25:38] Speaker 01:
So let's just accept that something or other happened which prematurely cut off the opportunity to amend and negotiate during the re-examination.

[00:25:50] Speaker 01:
Is an appropriate judicial remedy to send it back to essentially revive that opportunity?

[00:26:02] Speaker 00:
I think not, Your Honor, because I think this did have a full prosecution.

[00:26:07] Speaker 00:
And I think if they were only trying to amend after final, that was too late without having gone back and looked through the record.

[00:26:14] Speaker 00:
But it sounds like from what counsel said, it sounds like they did miss their opportunity to do so.

[00:26:20] Speaker 00:
And we do have procedures in place.

[00:26:25] Speaker 00:
Okay.

[00:26:30] Speaker 03:
Mike, you had exceeded your time, but if you want to respond to the last issue, we'll give you a minute.

[00:26:37] Speaker 04:
Only the last issue, Your Honor.

[00:26:38] Speaker 04:
Okay.

[00:26:39] Speaker 04:
I would feel that it would certainly be within the equitable powers of this court to send the case back down for re-examination.

[00:26:48] Speaker 04:
to continue that proceeding but I respectfully submit that that is not necessary in this case based on the prima facie case of obviousness that has not been made as well as the substantial evidence of non-obviousness that has been submitted in this case.

[00:27:06] Speaker 04:
The solution to a long felt need of keeping a blade sharp which the patent owner has solved in this case which was identified by both Shanklin and by the patent owner

[00:27:19] Speaker 04:
Shanklin talks about the difficulty of keeping blades sharp.

[00:27:23] Speaker 04:
Mr. Nall's patent talks that they can use a blade that is less sharp.

[00:27:27] Speaker 04:
It is more safe.

[00:27:28] Speaker 04:
It doesn't have the maintenance issues related.

[00:27:31] Speaker 04:
And so there is solution to Longfeldt need.

[00:27:33] Speaker 04:
There is commercial success shown in this case.

[00:27:37] Speaker 04:
There is rebuttal evidence that Williams would not function just by turning the temperature down.

[00:27:44] Speaker 04:
And I respectfully lay this case before this court

[00:27:49] Speaker 03:
for a reversal of the board's decision.