[00:00:00] Speaker 04: Inray Peach State Lab. [00:00:38] Speaker 04: Ms. [00:00:38] Speaker 04: Blackburn, please proceed. [00:00:52] Speaker 03: Good morning. [00:00:52] Speaker 03: May it please the court? [00:00:53] Speaker 03: My name is Jennifer Blackburn. [00:00:54] Speaker 03: I'm here on behalf of Peach State Labs. [00:00:57] Speaker 03: Peach State is appealing the rejection of claims as obvious in a re-examination. [00:01:02] Speaker 03: There are three main issues on appeal. [00:01:05] Speaker 03: The first two are the patent trial and appeal board's erroneous interpretation of two key claim terms. [00:01:11] Speaker 03: The board's failure to give the proper construction led the board to affirm an improper obviousness rejection. [00:01:18] Speaker 03: In both cases, the board failed to consider and give the proper weight to disclosure and the specification that required a broader construction. [00:01:28] Speaker 03: In the first case, [00:01:29] Speaker 03: The board read in a distinction into the specification between methods of removing calcium carbonate, concluding that solid dispersions were not covered by claim one. [00:01:42] Speaker 03: The specification, in fact, includes no distinction, but discloses overlapping methods that are used in conjunction. [00:01:52] Speaker 03: In the second case, the board failed to give the proper weight to the examples in the specification. [00:01:59] Speaker 03: which describe applying urea hydrochloride to solid calcium carbonate. [00:02:04] Speaker 03: The board found that this creates an aqueous suspension of calcium carbonate. [00:02:10] Speaker 03: The examples illustrate an embodiment of peach state's construction of the term adding. [00:02:16] Speaker 01: Yes? [00:02:20] Speaker 01: Let's assume that we agree that the specification is patent. [00:02:25] Speaker 01: It has enough details to support claims that cover both solubilizing in an aqueous solution, the calcium carbonate, but also for removing, dissolving solid forms of calcium carbonate. [00:02:45] Speaker 01: But then it's really the prosecution history that we look to and conclude that what happened was a retrenchment in the scope of the claim during the original prosecution, where perhaps the originally filed claim covered both kinds of embodiments. [00:03:02] Speaker 01: But then through amendment, it's quite clear through the dialogue with the Patent Examiner that the claim now as issued was scaled back and restricted to just [00:03:13] Speaker 01: solubilizing calcium carbonate in aqueous solutions, whether it's a suspension or dispersion. [00:03:21] Speaker 01: I think that's the heart of the case for me, is what happened in the prosecution history. [00:03:28] Speaker 03: Well, the board did not find a clear disclaimer in the prosecution history. [00:03:34] Speaker 03: They pointed to some instances in the prosecution history where there might be some [00:03:43] Speaker 03: There might be some uncertainty as to what happened but I think we pointed to some other places in the prosecution history where it's not clear but they did not find a disclaimer and in fact they pointed to the district court's opinion in the concurrent litigation where the district court also found no disclaimer and they did not fault that. [00:04:04] Speaker 03: They pointed to an amendment in the prosecution history where the entire term, calcium carbonate in aqueous suspensions and dispersions of calcium carbonate, the entire term was added. [00:04:16] Speaker 03: And that doesn't limit the term at all because the entire term was added. [00:04:20] Speaker 03: There was also an amendment to delete some claims, but along with that amendment, the applicant said that the amendment should not be construed to [00:04:34] Speaker 03: disclaim anything and that they may pursue that in a later application. [00:04:40] Speaker 01: A prior art reference that was relied upon for the initial rejection of the originally filed claim which was then amended. [00:04:47] Speaker 03: Are you talking about the Young reference? [00:04:50] Speaker 01: Yeah, I think so. [00:04:51] Speaker 01: What Young and Sargent, were they for removing solid forms? [00:04:58] Speaker 03: The Young reference was related to removing obstructions from conduits. [00:05:04] Speaker 03: It talked about organic obstructions. [00:05:08] Speaker 03: Really it related to pipes and sort of cleaning out more or less, like unclogging your pipes in your bathroom, that type of thing. [00:05:20] Speaker 03: And using urea sulfate to do that. [00:05:25] Speaker 01: And so, I guess it's your position that the claim was initially written broadly to cover both removal of calcium carbonate, whether it's in a solid form or in some liquid form, and then what happened through amendment didn't alter that fact. [00:05:47] Speaker 03: The claim was originally written to remove undesirable solids. [00:05:52] Speaker 03: The specification talks about suspensions and dispersions and deposits. [00:05:58] Speaker 03: And the claim was written broadly to talk about undesirable solids. [00:06:01] Speaker 03: And the examiner issued a rejection under 112 to clarify what those solids were. [00:06:06] Speaker 03: And that's what the amendment was made for, to respond to that 112 rejection. [00:06:12] Speaker 03: And the claim was clarified to say, calcium carbonate and aqueous suspension, and then the dispersions of calcium carbonate. [00:06:21] Speaker 03: The 102 or 103 rejection at that point, I can't remember what it was at the first office action, was a separate rejection. [00:06:29] Speaker 03: And the rejection young that I think you're talking about was actually a rejection of other claims, claims 14 through 20-something, which were eventually canceled. [00:06:42] Speaker 04: respond, I'm following up on Judge Chen's question and for me also, I think the difficulty I'm having is with the prosecution history and how I ought to interpret it as impacting the construction that you seek. [00:06:58] Speaker 04: And what about on A2281, give me some context similar to what you just provided to Judge Chen about why I shouldn't interpret the language here [00:07:10] Speaker 04: And these subsequent, I'll let you find it first before I go on. [00:07:17] Speaker 04: Okay, go ahead. [00:07:19] Speaker 04: Okay, so on 2281, what we have here is a rejection, and you have the examiner rejecting a bunch of dependent claims, and he says that he's rejecting the dependent claims because it's submitted that claims 1 and 14, the independent claims, are now drawn to aqueous suspensions and dispersions of cap and carbonate which do not appear to be on the surfaces of the above claims. [00:07:43] Speaker 04: So we have these dependent claims which were clearly surface claims by their express language. [00:07:49] Speaker 04: The examiners rejected them on the basis that he understands the independent claims to no longer apply to surfaces. [00:07:57] Speaker 04: And then he says, so he rejects them. [00:07:59] Speaker 04: And then without correcting any of this, the applicant simply then [00:08:05] Speaker 04: pulls out, withdraws all those dependent claims and that ends their inclusion in this prosecution. [00:08:11] Speaker 04: So I guess why isn't this a clear signal to the outside world that the examiner understood the independent claims which came through and are the ones at issue now to not include services and be limited to aqueous suspensions and aqueous dispersion [00:08:28] Speaker 04: and that he said that pretty clearly and that's why he rejected the subsequent defendant claims as not having antecedent basis in the independent claim and that the applicant acquiesced whether you agree with it or not, whether they had to or not, they acquiesced and withdrew those claims. [00:08:43] Speaker 04: Why isn't that tantamount to a disclaimer? [00:08:47] Speaker 03: Well it's not a disclaimer for one thing because in the response where they cancelled the claim [00:08:52] Speaker 03: They asked that the claims be canceled without prejudice or disclaimer to the subject matter claim therein. [00:08:58] Speaker 03: So they expressly stated that they were not disclaiming the subject matter claims therein. [00:09:03] Speaker 04: uh... there's a case that uh... i'm pretty well or play it language right examiner gave up really clear indication of his view of the scope of claim one in fourteen that not including a quick dispersion right after he comes in acquiescence cancels all the claims that but but don't it don't accept that i mean that's boilerplate language i see that all the time don't accept anything about what we're doing here is meaning anything at all [00:09:27] Speaker 03: Right, and there's a case cited in our brief that I'm sorry that I can't give you the exact site right now but I will find it and give it to you if not now in rebuttal that says that it is not enough that you cannot base a disclaimer on an argument that the patent or that the applicant did not make. [00:09:48] Speaker 03: There's a case that the PTO tried to cite to say that because we rejected those claims that you can. [00:09:55] Speaker 03: infer that we are agreeing with the examiner, that case is not on point because in that case the applicant actually took the language that the examiner used and incorporated it into their claim by amendment. [00:10:08] Speaker 04: So is your argument that disclaimer is a really high standard, it requires clear and unmistakable action by the applicant and the examiner can say whatever he wants and the applicant's silence can never be tantamount to disclaimer? [00:10:23] Speaker 04: You like what you set up until that last part. [00:10:25] Speaker 03: I like what you set up until that last part. [00:10:27] Speaker 03: I don't like the word never. [00:10:28] Speaker 03: In this case, I don't think it goes that far. [00:10:33] Speaker 03: We did say no disclaimer. [00:10:34] Speaker 03: We did also, in our next response, we did talk about the moss declaration. [00:10:39] Speaker 03: I think there is some disagreement there, but our position is that we submitted the moss declaration. [00:10:44] Speaker 03: The moss declaration talks a lot about fuming. [00:10:47] Speaker 03: It also talks about cleaning solids off of surfaces. [00:10:50] Speaker 03: It never talks about solubilizing calcium carbonate in a suspension or in anything aqueous, particles in solution, in effluent, anything that is the other embodiment of dissolving calcium carbonate. [00:11:03] Speaker 03: But it does talk about dissolving calcium carbonate on surfaces. [00:11:08] Speaker 01: The concern I have is we don't have just a standalone statement from the examiner. [00:11:15] Speaker 01: What we have instead appears is more of a meeting of the minds between the examiner and the applicant because the examiner was responding to [00:11:27] Speaker 01: your prior office action response, which is where the amendment occurred, where, you know, there were some narrowing in the claim. [00:11:36] Speaker 01: However, you know, that's the debate. [00:11:38] Speaker 01: To what degree did you narrow it? [00:11:40] Speaker 01: But at 2277, A2277, this is where the applicant does the amendment, and then in the remarks section, they [00:11:52] Speaker 01: The invention is now claimed provides a method to lower the solids content of industrial liquids that contain calcium carbonate. [00:12:02] Speaker 01: and to treat the effluent from paper manufacturing and recycling processes. [00:12:06] Speaker 01: I understand the term effluent to refer to some kind of liquid. [00:12:11] Speaker 01: So, you know, we see a statement like that. [00:12:13] Speaker 01: You make your amendments, you know, you're debating what the meaning of the amendment means. [00:12:19] Speaker 01: I think it's clear here that the invention has now claimed through the amendment is really talking about removing these kinds of undesirable solids from liquids [00:12:31] Speaker 01: And then we go to 8.281, which is where we started off with Judge Moore, where she points to where the examiner says, okay, now it is now submitted that these claims as amended are drawn to aqueous solutions. [00:12:50] Speaker 01: And then that's where the story ends. [00:12:52] Speaker 01: So, do you understand why, I guess from this perspective it looks like, aha, originally the claim meant something broader, but now there's a conversation going on, and through amendments and conversation, we now understand that the claim doesn't mean what the scope of the claim originally was in the first instance. [00:13:15] Speaker 03: I understand where you're coming from, but I disagree that's where the story ends. [00:13:19] Speaker 03: I think there's more to the story, there's more in the prosecution history. [00:13:22] Speaker 03: There's more in the response that we filed after that where we said there's no disclaimer. [00:13:26] Speaker 03: There's more in our response where we filed the more, or the... Moss. [00:13:31] Speaker 03: Moss declaration, thank you. [00:13:32] Speaker 03: And I think that there is no disclaimer, and we absolutely are required to have some disclaimer. [00:13:39] Speaker 03: And I see that I'm in my rebuttal time, so I'm going to sit down. [00:13:42] Speaker 04: Okay, save the remaining time. [00:13:46] Speaker 04: We'll restore your call for a minute. [00:13:48] Speaker 04: Ms. [00:13:48] Speaker 04: Unce, please proceed. [00:13:56] Speaker 02: What's at issue here is fundamentally a strong and simple obviousness to rejection. [00:14:02] Speaker 02: There is a known compound and a substitution of a known compound in a known process. [00:14:07] Speaker 02: The motivation to make that substitution is the reduced fuming and noxious and corrosive fumes from the prior compound, hydrochloric acid. [00:14:18] Speaker 02: Here, the claims for its claim construction was correct. [00:14:22] Speaker 02: It was supported by the intrinsic evidence, particularly the prosecution history, but our view is also the claims and the specification. [00:14:29] Speaker 02: Moreover, although we didn't get to the artist's analogous here, based on, among other things, the clear statement in the 279 patent that acidizing wells [00:14:38] Speaker 02: is relevant to the invention. [00:14:40] Speaker 01: Is that using the patent owner's own statements against it? [00:14:45] Speaker 01: I mean, maybe patent owners, what they disclose in their patents is providing some kind of inventor-centric insights. [00:14:56] Speaker 01: And now here you're using that against the inventor as a basis to say, well, it would be obvious to look at all these other areas. [00:15:07] Speaker 02: Well, Your Honor, that's fair given the public notice function of patents. [00:15:10] Speaker 02: In trying to figure out what's analogous to the claimed invention and what's relevant, there's a lengthy statement in this specification about all the different areas in which this invention is relevant and can be used, and in which urea hydrochloride is relevant and can be used. [00:15:28] Speaker 02: So to the extent of whether or not a particular problem, whether or not an inventor would look to [00:15:35] Speaker 02: an art to solve a particular problem, it's very fair to use the inventor's own statement to try to find the answer to that question. [00:15:45] Speaker 00: Do you agree that in order to affirm, we have to agree with the court's claim construction, if only because that claim construction affects the evaluation of the objective edition? [00:15:58] Speaker 02: No, Your Honor. [00:15:59] Speaker 02: We do think it's a proper claim construction and that the court should confirm under it. [00:16:05] Speaker 02: But even under Peach State's claim construction, the board found that, for example, the Dexter and the Williams declarations were not sufficient evidence of commercial success, that the secondary considerations did not outweigh the strong case of obviousness here. [00:16:21] Speaker 00: Wasn't the evaluation of the success, and in particular, what the success was attributable to, dependent on the scope of the claim? [00:16:33] Speaker 02: it was and at the initial boards discussion spent a lot of time on nexus saying that a fair amount of what is asserted is outside the board's claim construction but then the board goes on to say even if and that's on page pages 824 and 825 of the board's decision even if even if this is the case that there is some conversion of [00:17:01] Speaker 02: of calcium carbonate that would be claimed here. [00:17:04] Speaker 02: It goes on to say that both the Williams and Dexter declarations show that the product is successful, but it's hard to judge the level of success. [00:17:14] Speaker 02: So we only have from Dexter and Williams the amount of pounds that were sold. [00:17:19] Speaker 02: We don't have a discussion of what the relevant markets are. [00:17:23] Speaker 02: We don't know how much those towns constitute in which markets. [00:17:27] Speaker 02: This urea hydrochloride appears to be sold for processes in cleaning lines, in dissolving concrete, many different applications, and we don't know what the different products in those markets are and whether or not [00:17:39] Speaker 02: the million pounds from the Dexter Declaration or the 64 million pounds from the Williams Declarations are significant. [00:17:48] Speaker 02: Furthermore, on the price of hydrochloric acid, that's something that also doesn't necessarily depend on the scope of the claims. [00:17:55] Speaker 02: There's no evidence as to why the price was higher here or that it affected a significant market. [00:18:02] Speaker 01: So just assume for a second that the claim construction is wrong and Peep State is right. [00:18:08] Speaker 01: What kind of declaration would you want to see that would then, you know, make the PTO give it much more persuasive way? [00:18:21] Speaker 02: I think there are many that could suffice here. [00:18:23] Speaker 02: For example, one that showed what markets are affected and what the size of sales in that market is would be suffice if it is significant. [00:18:33] Speaker 02: For example, if it said we sold [00:18:36] Speaker 02: 64, they could put another declaration in, or they could have put another declaration that said, well, the market in, there's five relevant markets, line cleaner, concrete, water processing, and paper manufacturing, and what's those three? [00:18:55] Speaker 02: However many there might be. [00:18:56] Speaker 02: And in that case, 64 million is divided up this way. [00:19:02] Speaker 02: We have 25 million in line cleaners, and that's 50% of the market, and we got that quickly. [00:19:09] Speaker 02: And 35% is in concrete, and that's significant in that market. [00:19:15] Speaker 02: And 75% is in water processing. [00:19:20] Speaker 02: So that type of evidence would suffice. [00:19:22] Speaker 04: It would have also been sufficient if they had come in with just evidence that showed prior to their invention they were selling only 20 million tons or pounds or whatever it is of this stuff and that after their invention they were selling 64 with the hint being because everybody is buying it now for this additional use which we have. [00:19:41] Speaker 04: I mean, any context at all, any context at all would have helped. [00:19:47] Speaker 02: Yes, Your Honor. [00:19:47] Speaker 02: I think that could be sufficient. [00:19:50] Speaker 02: Evidence of switching, firm evidence of switching can be sufficient, that if you have enough customers switching from a prior art product to your [00:19:57] Speaker 02: new product absent, of course, evidence that there's some other thought you'd like more to do. [00:20:02] Speaker 04: Well, going into the claim construction argument, though, I mean, it took me a while to wrap my head around the idea that you were arguing a narrower construction was the broadest reasonable construction. [00:20:10] Speaker 04: I'm sure that caused you a little internal conflict as well. [00:20:14] Speaker 04: I don't know if I've ever seen you guys stand up and argue that you want a narrower construction and Pat Dean wants a broader one and you're saying yours is the broadest reasonable one. [00:20:23] Speaker 04: Suppose that this was the universe I'm in, I'm not saying this, but suppose that I actually thought your construction is the right one. [00:20:30] Speaker 04: But that this disclaimer question is in fact really close for all of the reasons that the patentee has presented and that I actually think if the analysis is broadest reasonable as opposed to asking me to come up with the definitive one, then theirs in light of the close call on the disclaimer question and in light of the fact that the spec clearly articulated embodiments that involved solids [00:20:56] Speaker 04: Why doesn't she have the better of the argument at this stage, which is broadest reasonable construction? [00:21:03] Speaker 02: Well, I guess I want to try to break that question down. [00:21:06] Speaker 02: I mean, on the generally speaking, it isn't that unusual for us to be arguing a narrow construction. [00:21:12] Speaker 02: The record here, especially the prosecution history and the specification, I think the board [00:21:19] Speaker 02: mandates that result here. [00:21:22] Speaker 04: What about the specification? [00:21:24] Speaker 04: I just didn't see anything in the specification that did anything but hurt or quite frankly cut against your construction. [00:21:30] Speaker 02: Well, there is a distinguishment between dispersions and dissolving residues from surfaces. [00:21:37] Speaker 02: So they're all treated as two separate facts, two separate actions. [00:21:41] Speaker 02: And then in the specifications, lowering industrial [00:21:46] Speaker 02: the solid contents of industrial liquid, it's treated interchangeably with dissolving suspensions and suspensions. [00:21:53] Speaker 02: So if you go through the abstract, in fact, it talks about removing buildup, surface buildup residues, or lowering the solids content of industrial liquids. [00:22:03] Speaker 02: Certainly there are some unclaimed embodiments here, which would be the moving residues from surfaces, but there are other unclaimed embodiments in the specification. [00:22:13] Speaker 02: For example, lowering pH. [00:22:15] Speaker 04: Here's the bottom line. [00:22:17] Speaker 04: The whole question is, it's an aqueous adjective. [00:22:22] Speaker 04: Aqueous solutions or dispersion. [00:22:24] Speaker 04: The whole question comes down to does it mean aqueous solutions and any kind of dispersion or aqueous solutions and aqueous dispersion. [00:22:33] Speaker 04: Oh my gosh, flip a coin. [00:22:34] Speaker 04: I mean, you know, that can logically, in a plain meaning way, mean either thing. [00:22:40] Speaker 02: And where it's ambiguous genre, as you're saying, the appropriate thing to do is to look to the intrinsic evidence, the specification. [00:22:47] Speaker 02: And here the file history, because it's a re-examine, the original file history is relevant. [00:22:52] Speaker 02: Because the file history particularly is so clear, especially page 2277 and 2278, [00:22:59] Speaker 02: Again, based on the public notice function and of how the public should read this claim, it should be considered to be obvious here and the board's claim construction should prevail. [00:23:15] Speaker 02: For example, some of the detailed issues that I'd like to respond to. [00:23:21] Speaker 02: to the extent that the statements on page 227 and 2278 were made in response to 112, they were also made in response to the 102, 103 rejections. [00:23:32] Speaker 02: For example, on page 2278, there's a statement saying, not only is the method not disclosed by Young, it is not even obvious in view of Young. [00:23:40] Speaker 02: So it's clear that they're responding also to the substance of rejections in their arguments in the record. [00:23:46] Speaker 02: As for Young, Young does disclose [00:23:49] Speaker 02: cleaning pipes and cleaning obstructions from pipes, but it defines that very broadly. [00:23:56] Speaker 02: It talks about fouling, not necessarily complete obstructions, and it defines conduits very broadly, including screens, filters, nozzles, etc. [00:24:07] Speaker 02: So when the applicant here was distinguishing its invention, it's fairly clear that it's saying, look, Young was addressed to [00:24:15] Speaker 02: problems associated with precipitated salts, salts that are no longer in a solution or a dispersion. [00:24:21] Speaker 02: Here, dispersions and suspensions of these salts cause different problems, as discussed in the specification, which also talks about the differences between those two problems. [00:24:30] Speaker 02: For example, if the effluent of the plant contains dispersions or suspensions of calcium carbonate, it can't be disposed in publicly owned waste treatment facilities. [00:24:42] Speaker 02: And to the extent that there are arguments made for 112, there's still binding in the prosecution history. [00:24:46] Speaker 02: If there's an argument, whether or not it's for an amendment or an argument, whether or not it's for 112 or 103 or 102, it still is binding on the applicant. [00:24:56] Speaker 02: And then there's the dependent claims issue, Your Honor, that you brought up. [00:25:00] Speaker 02: It's not just this, but the prosecution history is consistent throughout. [00:25:05] Speaker 02: After this was told to the examiner, a reasonable examiner would understand, okay, we're not trying to claim services anymore. [00:25:12] Speaker 02: We tried to claim that before, and we're not claiming it anymore. [00:25:15] Speaker 02: So what did the examiner do? [00:25:16] Speaker 02: Well, the examiner came back and said, okay, look, you've got these dependent claims, and these dependent claims [00:25:22] Speaker 02: look like they are directed to removing buildup. [00:25:25] Speaker 04: But the claimers have to be clear and unmistakable. [00:25:27] Speaker 04: Suppose in response to the examiner's statement about, I now understand claim 1 and 14 to apply only to aqueous solutions and aqueous dispersion. [00:25:37] Speaker 04: What is the response to that? [00:25:39] Speaker 04: In order to garner allowance, we will relinquish the dependent claims, we intend to bring them into continuation, and we want to be clear, we are not disclaiming the fact that Claim 1 and Claim 14 cover both aqueous solutions and dispersions of all kinds. [00:25:58] Speaker 04: Suppose they were really crystal clear about all of it in their response. [00:26:03] Speaker 04: Under those circumstances, would you still argue that this prosecution creates a clear disclaimer? [00:26:08] Speaker 04: I think you're an unmistakable disclaimer. [00:26:10] Speaker 02: Well, two parts to your question. [00:26:12] Speaker 02: One is I don't think there needs to be a clear and unmistakable disclaimer here because the claim is vague. [00:26:17] Speaker 02: As you mentioned, it's a toss-up whether or not it's aqueous. [00:26:20] Speaker 04: But assume that I don't buy any of your arguments about the specification. [00:26:24] Speaker 04: The claim is vague, and you've got to choose broadest reasonable construction. [00:26:28] Speaker 04: You're not in my shoes. [00:26:29] Speaker 04: You don't get to choose the exactly right one. [00:26:31] Speaker 04: You have to take the broadest reasonable one. [00:26:33] Speaker 04: You've chosen the narrower of the two. [00:26:35] Speaker 04: So under those circumstances, say your whole case hinges on prosecution history, now go to MyFacts. [00:26:41] Speaker 04: Suppose they had unequivocally disclaimed any disclaimer. [00:26:45] Speaker 02: If they had, then I don't think it would be present here. [00:26:48] Speaker 02: I mean, then you would have to read the two, all the prosecution history together. [00:26:52] Speaker 02: And if they said, look, by the way, in our response at 2278, [00:26:58] Speaker 02: it may have sounded like we were trying to only claim liquids here, but we are actually not. [00:27:05] Speaker 02: We want to claim the solid residues. [00:27:08] Speaker 02: And if they've made that clear, then if you look at the prosecution history as a whole, they would be saying, well, we did not just claim this. [00:27:14] Speaker 04: We're not intending to... And so your point would be the boiler, because they did say after the examiner's statement, [00:27:23] Speaker 04: We're going to withdraw those claims, but nothing in this course of this action should be construed as a disclaimer. [00:27:31] Speaker 04: You think that boilerplate language isn't enough to call into question what the rest of the prosecution history demonstrated they did? [00:27:38] Speaker 02: Not where it doesn't specifically address all the other things that they did, which were many other things. [00:27:43] Speaker 02: So it doesn't address, they're fairly clear and fairly lengthy distinguishing [00:27:47] Speaker 02: of the prior art and their statement of what is intended to be covered in light of the obvious misrejections and the 112 rejections and the 102 rejections just immediately prior. [00:27:56] Speaker 02: It doesn't address the examiner's misunderstanding or understanding, if it's their case it's misunderstanding, of what the claims are. [00:28:02] Speaker 02: The examiner understood and made very clear that the examiner believed that he thought that the claims were limited to surfaces at that point. [00:28:11] Speaker 02: and believe that they needed to cancel the dependent claims. [00:28:14] Speaker 02: And then if you look at their response even to that, that perpetuates this understanding. [00:28:21] Speaker 02: Your Honor, that's at claim, excuse me, appendix claim 2288, where they say, okay, we're canceling the claims because the examiner submits they are now drawn to aqueous suspensions and dispersions. [00:28:36] Speaker 02: And then they say, by the way, there's one other claim, it was claim 18, that actually wasn't drawn to surfaces, it was drawn to being in liquids. [00:28:44] Speaker 02: They say, by the way, I think that was a mistake, examiner. [00:28:47] Speaker 02: because claim 18 is drawn to solubilizing aqueous suspensions, just plain old aqueous suspensions. [00:28:53] Speaker 02: The claim actually is a dependent claim that depended from 14, which is aqueous suspensions and dispersions. [00:28:59] Speaker 02: Again, they're treating aqueous suspensions as coextensive or synonymously with dispersions. [00:29:07] Speaker 02: They say just as a claim from which it depends, claim 14, which is [00:29:10] Speaker 02: Again, an independent claim with the same limitations as claim one. [00:29:15] Speaker 02: So rather than all these actions together make it hard to avoid, at least from the board's perspective, which I think is correct, the conclusion that the claims do not cover the removing of residues from services. [00:29:34] Speaker 02: Okay. [00:29:34] Speaker 02: Thank you, Ms. [00:29:35] Speaker 02: Dunn. [00:29:36] Speaker 04: This is Blackbird. [00:29:37] Speaker 04: You have three minutes for rebuttal time. [00:29:47] Speaker 03: Okay, the first thing that I want to address is I don't want it to get lost in this discussion of prosecution history disclaimer and I'll be brief on this. [00:29:55] Speaker 03: is that Ms. [00:29:57] Speaker 03: Hunt said that even under Peach State's construction that there wasn't sufficient evidence of commercial success. [00:30:03] Speaker 00: And I'm going to go back and address that point because we think there most certainly was enough evidence of commercial success and we... I'm sorry, I don't think she quite said that there wasn't enough evidence, but rather that the board said even under [00:30:19] Speaker 00: a narrower construction, we find that there wasn't enough evidence. [00:30:23] Speaker 00: So maybe it could have found either way. [00:30:25] Speaker 00: The question is what it did find. [00:30:28] Speaker 03: It did, okay. [00:30:31] Speaker 03: So our position is that under Peach State's broader construction that the evidence that we presented would be sufficient to find secondary considerations would outweigh any prima facie case of obviousness. [00:30:48] Speaker 03: What the board did was that they first they addressed the sales data alone and they cited a case in support of this in Ray Wong where the applicant only presented sales data alone and said that sales data alone is insufficient and then they omitted the sales data without considering it along with any other evidence. [00:31:09] Speaker 03: That was error because you're supposed to weigh the evidence all together. [00:31:13] Speaker 03: And they went through some of our other evidence. [00:31:15] Speaker 01: Did you supply any market share evidence? [00:31:18] Speaker 03: We did not supply any market share evidence. [00:31:19] Speaker 03: No market share evidence was available. [00:31:21] Speaker 03: There are some cases that say that sales data without market share evidence, but combined with other evidence of secondary considerations could be part of a case that's sufficient. [00:31:33] Speaker 01: Case law says you should connect your secondary consideration evidence, objective evidence, with the merits of the claimed invention. [00:31:43] Speaker 01: Would it be fair to characterize the merits of this claimed invention as the addition of urea to the prior art hydrochloride when forming these cleaning methods? [00:31:54] Speaker 03: The marketing materials describe it as safer and effective for removing calcium carbonate. [00:32:03] Speaker 03: It describes it as safe on skin, non-corrosive when it's in contact with metal. [00:32:07] Speaker 03: One thing the patent office has said is that DIL discloses the benefits of the invention. [00:32:13] Speaker 03: But DIL really only talks about fuming. [00:32:15] Speaker 03: It only talks about the fumes that are released from a well bore when the urea hydrochloride is at the bottom of a well. [00:32:23] Speaker 03: It definitely doesn't talk about being safe on skin, doesn't talk about it in contact, the way the marketing materials and the way that the invention is demonstrated to customers, actually holding it in your hand, sticking your finger in it. [00:32:39] Speaker 03: So yeah, I think there's definitely a nexus with the properties of urea hydrochloride and the way it's used and the way it's marketed to customers. [00:32:48] Speaker 03: And then I want to address something that Ms. [00:32:50] Speaker 03: Unst said right at the end of her argument. [00:32:52] Speaker 03: talking about whether or not there was a disclaimer in the prosecution history. [00:32:59] Speaker 03: The prosecution history, there must be a clear and unmistakable disclaimer in the prosecution history. [00:33:04] Speaker 03: The applicants are not required to contest the examiner. [00:33:10] Speaker 03: Maybe we should have said something more clearly in the prosecution history than we did, but it's not the lack of a disclaimer that's required. [00:33:19] Speaker 03: to be clear and unmistakable. [00:33:20] Speaker 03: It is the disclaimer that's required to be clear and unmistakable. [00:33:22] Speaker 03: And there simply is no clear and unmistakable disclaimer in the prosecution history. [00:33:28] Speaker 03: Two tribunals have looked at the prosecution history and found that. [00:33:32] Speaker 03: The district court in the copending litigation looked at the prosecution history, found no clear disclaimer. [00:33:37] Speaker 03: The board looked at the prosecution history. [00:33:39] Speaker 03: They didn't find a clear and unmistakable disclaimer. [00:33:42] Speaker 04: Does that just report litigation ongoing at the present time? [00:33:44] Speaker 03: It's stayed at the present time pending this re-exam. [00:33:48] Speaker 03: So I think I'm over my time.