[00:00:00] Speaker 01:
Good morning, Your Honors.

[00:00:02] Speaker 01:
May it please the Court, Kevin Zeck, associate with Perkins-Cooey, on behalf of Appellant Procop Labs LLC.

[00:00:09] Speaker 05:
Mr. Zeck, where in the record does it show that the level of skill in the art was in dispute?

[00:00:18] Speaker 01:
Your Honor, that would be in a Procop Labs appeal brief.

[00:00:25] Speaker 01:
And it was, for example, at Joint Appendix

[00:00:28] Speaker 01:
page 204 through 206, and then during appendix page 218, where procop lab challenges the articulation of a reason to combine for one of skill in the art at the time of the invention.

[00:00:43] Speaker 04:
Do you propose a certain level of ordinary skill in the art?

[00:00:50] Speaker 01:
Your Honor, no.

[00:00:53] Speaker 01:
Well, that was my question.

[00:00:54] Speaker 01:
Your Honor, the government has failed to even define the art in the beginning.

[00:01:01] Speaker 01:
The art here is the art of wrist rest.

[00:01:03] Speaker 01:
And inventor David Prokop obtained a patent on a simply elegant wrist rest in 1995.

[00:01:11] Speaker 01:
He assigned it to his company, ProCop Labs, in 2007, asserted it, and has been involved in serial ex parte re-examination.

[00:01:18] Speaker 04:
Is there a law that says the level of ordinary steel in the yard, although it's not expressly stated, can be understood based on the content of the prior art references that are submitted and considered in the record?

[00:01:31] Speaker 01:
Yes, Your Honor.

[00:01:31] Speaker 04:
And to that point, then... And then there's other case law that says... Well, the only... I guess a legal error, a reversible error,

[00:01:41] Speaker 04:
for failure to state a level of ordinary skill, there has to be some reason why the failure to identify the level of skill led us all down the wrong path.

[00:01:54] Speaker 01:
And Your Honor, I believe there is in this case.

[00:01:56] Speaker 01:
And to go back, the pertinent art here is the art of wrist stress.

[00:02:02] Speaker 01:
And the government has only shown that the prior wrist stress disclosed or focused on

[00:02:10] Speaker 01:
wrist angulation or positioning and wrist support.

[00:02:15] Speaker 01:
They have not shown, in fact, they can see that pirate wrist rests do not look towards thermal therapy, towards other alternative strategies for preventing repetitive motion strain injuries while working on a computer.

[00:02:28] Speaker 04:
If they did that, they'd have a 102, right?

[00:02:32] Speaker 04:
Yes, Your Honor, but the larger thing here... Wrists rest with a composition of some kind of silicone gel that you heat up.

[00:02:40] Speaker 04:
That would be your claim.

[00:02:43] Speaker 01:
Your honor, the skill here in the art shows that the prior art focuses on one zone, wrist support, wrist angulation.

[00:02:52] Speaker 01:
The prior art wrist stress don't identify that there's a problem with that.

[00:02:56] Speaker 01:
David Prokop in 1995 has this aha moment.

[00:02:59] Speaker 01:
He realizes that the prior art has oversimplified the pathological cause or the physiopathological cause of repetitive motion strain injuries

[00:03:10] Speaker 01:
at least in terms of risk rest.

[00:03:13] Speaker 01:
And based on that, it comes up with a simply elegant invention to incorporate alternative strategies into risk rest.

[00:03:23] Speaker 01:
And this court, even after KSR, has identified that the patentable contribution can lie in defining the problem, in seeing that there is a non-obvious problem.

[00:03:35] Speaker 01:
And the PTO, or the government, has not shown

[00:03:39] Speaker 01:
that the problem David identified was obvious.

[00:03:43] Speaker 02:
Is it the same thing you just said to say that there is nothing in the identified prior art that identifies the process of sitting at a computer with your wrist and typing as an opportunity for heat therapy?

[00:04:10] Speaker 01:
I don't know if I fully understand your question.

[00:04:13] Speaker 02:
It's perfectly clear from the wrist band art, I forget which, whether that's Gibbs or Given or something.

[00:04:19] Speaker 01:
Denshoir.

[00:04:20] Speaker 02:
Denshoir is the wrist band.

[00:04:22] Speaker 02:
That heat therapy for the wrist is in the prior art.

[00:04:28] Speaker 02:
It's perfectly clear that the wrist rests prior art talks about what you call angulation.

[00:04:38] Speaker 02:
What's not at least

[00:04:40] Speaker 02:
perfectly clear, and I take it as I'm understanding the argument, was the idea that while people are sitting there with their hands out on the keyboard, that that's an opportunity for applying the heat therapy to the wrist and using, in fact, the very thing that is providing the better angle.

[00:05:03] Speaker 02:
Your honor, I think of this as a

[00:05:09] Speaker 02:
at least to my mind, a helpful point.

[00:05:11] Speaker 02:
What am I missing?

[00:05:13] Speaker 01:
Well, I agree with you that the prior art doesn't describe the opportunity for using alternative strategies.

[00:05:20] Speaker 01:
With the prior art, as the PTO has brought to art, or the government has shown in this record, discloses only risk angulation and support.

[00:05:29] Speaker 01:
It focuses on it.

[00:05:30] Speaker 01:
It teaches, one, a skill in the art at the time to go down that line.

[00:05:34] Speaker 01:
And that, if you look at the disclosure in ProCops patent itself,

[00:05:39] Speaker 01:
He shows that every single prior art reference that he describes in his patent in terms of wrist rest focuses on this wrist angulation.

[00:05:48] Speaker 01:
Everyone is focused on wrist support, wrist angulation.

[00:05:52] Speaker 01:
He's seeing this as this aha moment.

[00:05:55] Speaker 01:
They've missed it.

[00:05:57] Speaker 01:
He's defined the problem in a new way.

[00:06:00] Speaker 01:
He said they've gone after the pathophysiological cause as a mechanical cause, as a mechanical failure.

[00:06:06] Speaker 01:
Just this.

[00:06:07] Speaker 01:
This is all that matters when you're dealing with a wrist rest.

[00:06:09] Speaker 01:
And he says, well, no, there's more to it.

[00:06:12] Speaker 01:
And yes, once you realize that there's more to it, and you're fucking the conventional teachings of the prior art, then perhaps this is a simple, just familiar known art and elements in the art that are combined together.

[00:06:24] Speaker 01:
And yes, that may be the case.

[00:06:28] Speaker 01:
But no one in the risk-rest prior art, prior to David, as the government has been unable to show, focused on anything other than risk angulation and support.

[00:06:38] Speaker 01:
David defined the problem.

[00:06:39] Speaker 04:
I understand the agency's position on this.

[00:06:45] Speaker 04:
The real way to define the issue is trying to understand how to address carpal tunnel syndrome, how to deal with that problem, how to alleviate that problem.

[00:06:57] Speaker 04:
And when you're typing on a keyboard, there was this Danish var solution of having a wrist pad while you're typing.

[00:07:08] Speaker 04:
And inside that is some kind of silicone gel, some kind of gel.

[00:07:13] Speaker 04:
And right, that's what it discloses.

[00:07:16] Speaker 04:
Then there's Gibbs.

[00:07:19] Speaker 04:
Gibbs talks about how do you deal with carpal tunnel syndrome and a bunch of other related injuries.

[00:07:24] Speaker 04:
Well, you have some heating pad or cooling pad, right?

[00:07:31] Speaker 04:
And also likewise, that material inside that pad is

[00:07:36] Speaker 04:
something that you can heat or cool.

[00:07:39] Speaker 04:
It's a gel just like the gel of Danushvar is a gel.

[00:07:43] Speaker 04:
So what we have here are two different teachings to deal with carpal tunnel syndrome.

[00:07:48] Speaker 04:
One is a wrist rest pad made of gel.

[00:07:51] Speaker 04:
Another one is a wrist pad made of gel that you can heat and cool.

[00:07:59] Speaker 04:
And so they're both directed to dealing with the same overall issue.

[00:08:06] Speaker 04:
to help someone with carpal tunnel syndrome.

[00:08:08] Speaker 05:
Your Honor, before you answer, my brother, it might be a good idea for you to listen and wait until the court stops talking before you start talking.

[00:08:21] Speaker 04:
Yes, Your Honor.

[00:08:22] Speaker 04:
And sometimes that talks slowly, so I understand.

[00:08:26] Speaker 01:
Well, as a sort of a backdrop to my answer here, this court in Mint v. Deaton Watson has said that

[00:08:33] Speaker 01:
Objective consideration of simple technology is often the most difficult, because once the problem and the solution appear together in the patent disclosure, the advance seems self-evident.

[00:08:45] Speaker 01:
And what we have is we've got to step back in time to 1995, before the problem David identified was known.

[00:08:52] Speaker 01:
And you have to define what that problem is.

[00:08:56] Speaker 01:
But the problem, as shown in the prior

[00:09:00] Speaker 01:
is wrist angulation and support as solving carpal tunnel syndrome.

[00:09:05] Speaker 01:
On a broader level, yes, there are disclosures of heat therapy, of teaching reduced inflammation or pain relief for carpal tunnel syndrome or for other types of injuries in, for example, Gibbs.

[00:09:19] Speaker 04:
I suppose you could technically use the Gibbs wrist pad device, wear it around your wrists while you're typing.

[00:09:27] Speaker 01:
Well, the government hasn't shown that, first and foremost.

[00:09:31] Speaker 01:
Gibbs in and of itself is a stretcher on her.

[00:09:33] Speaker 01:
It is a temperature thermal control pack meant to fit in a suitcase according to Gibbs.

[00:09:39] Speaker 01:
A small suitcase.

[00:09:41] Speaker 01:
It mentions only in passing a gel layer that is thermally conductive and it is an outer layer.

[00:09:46] Speaker 04:
There's a figure that shows a pad that wraps around your wrist.

[00:09:49] Speaker 04:
And that's all it shows, a couple of lines on a piece of paper.

[00:09:53] Speaker 04:
I could probably fit that in my coat pocket.

[00:09:56] Speaker 04:
I wouldn't need a suitcase for that.

[00:10:00] Speaker 01:
temperature, the main cause of a temperature application there is the temperature controlled liquid, not the gel.

[00:10:06] Speaker 01:
Yes, there's technically a thermally conductive gel, but above and beyond that, Gibbs doesn't disclose microwavability.

[00:10:14] Speaker 01:
It only discloses, and then you have to go out and get a third reference for this seemingly simple invention.

[00:10:20] Speaker 01:
So the government's really stretching here.

[00:10:21] Speaker 01:
It's pulling whatever it can together to try to invalidate these claims with a microwavable limitation.

[00:10:27] Speaker 01:
And in the past re-examination, the government conceded

[00:10:30] Speaker 01:
that Denechoir and Gibbs did not render obvious claims with a microwavable, gelatinous, resilient member, or me.

[00:10:37] Speaker 05:
While it's busy pulling all those things together, who's the person of skill in the art?

[00:10:45] Speaker 01:
The person, an appellant would contend that the person of skill in the art is one who's designing wrist rest as of 1995, Your Honor.

[00:10:54] Speaker 01:
And that person, based on... That could be anybody, as long as they have a pencil on.

[00:10:59] Speaker 01:
And the people who were doing that focused on wrist angulation and support the government has not shown otherwise.

[00:11:07] Speaker 01:
David again had this aha moment.

[00:11:09] Speaker 01:
He realized that they got it wrong.

[00:11:11] Speaker 01:
They've oversimplified the pathophysiological cause of repetitive motion strain injuries while you're working on a computer just to be in comfort and angulation.

[00:11:20] Speaker 01:
And he incorporated alternative strategies.

[00:11:22] Speaker 01:
And the government stretches to try to invalidate this and uses hindsight.

[00:11:27] Speaker 01:
In fact, the government hasn't conducted

[00:11:29] Speaker 01:
more than a cursory analysis in its most recent re-examination decision.

[00:11:34] Speaker 01:
And you see that's evident in its discussion of Danish-Parr gives and given, which is no more than a page and a half in Joint Appendix pages 5 and 6.

[00:11:42] Speaker 01:
And it's less than two paragraphs of consideration at pages 11 and 12 of Danish-Parr and Francis Junior.

[00:11:48] Speaker 04:
What if we determine that the second board decision incorporated by reference all of the analysis and findings in the first board decision?

[00:11:56] Speaker 01:
Your Honor, it still is an insufficient analysis.

[00:12:00] Speaker 01:
They have not articulated a sufficient reason to combine these references.

[00:12:03] Speaker 01:
They've merely said it's obvious to take an advantage from one prior element that's out here and combine it with others.

[00:12:10] Speaker 01:
But the mere identification in the prior art of the elements of the claims invention is insufficient to defeat patentability.

[00:12:16] Speaker 01:
And that's something that's been stated in KSR and in other precedents that your court has issued, Your Honor.

[00:12:23] Speaker 04:
So then, just curious.

[00:12:24] Speaker 04:
What would the PTO have needed to have found to make your invention obvious?

[00:12:31] Speaker 01:
They would have needed to have found that one of the skill in the art of wrist rest at that time would have realized that the problem David identified was obvious.

[00:12:44] Speaker 01:
And they have not done so.

[00:12:45] Speaker 01:
They have not shown that, Your Honor.

[00:12:47] Speaker 01:
David has this

[00:12:48] Speaker 01:
simple yet elegant invention and again we have to step backwards in time.

[00:12:52] Speaker 04:
You're saying there's a hole in the evidence and I'm just trying to ask you what if that piece of evidence existed what would that piece of evidence look like?

[00:13:02] Speaker 01:
That piece of evidence it would look like a disclosure in a wrist rest stating more broadly that

[00:13:17] Speaker 01:
something beyond angulation and support could be usable to correct the problems of repetitive motion strain injuries while working at a computing device.

[00:13:30] Speaker 02:
When you say competitive motion strain injuries, do you absolutely equate to that with carpal tunnel syndrome?

[00:13:38] Speaker 02:
I guess the question is, was there anything in any prior art, forget about whether it's wrist rest or not, that said,

[00:13:47] Speaker 02:
heat therapy to the wrist can help carpal tunnel syndrome.

[00:13:54] Speaker 01:
I believe that there is nothing in the record, Your Honor, except for what Mr. Prokop said about relief of pain, specifically related to repetitive motion strain injuries.

[00:14:03] Speaker 01:
I believe that the passing reference in Gibbs only concerns putting on the pad for treatment of carpal tunnel syndrome.

[00:14:12] Speaker 01:
I think it's only a couple of sentences and refers to figure 10.

[00:14:15] Speaker 01:
And there's nothing in Given that directly talks about the usage.

[00:14:19] Speaker 02:
But Gibbs does talk about using the pad in Figure 10 for this problem.

[00:14:26] Speaker 01:
For carpal tunnel syndrome.

[00:14:27] Speaker 01:
But it refers to it along the lines of also athletic injuries.

[00:14:31] Speaker 01:
It's not discussing it in the context of wrist rest.

[00:14:34] Speaker 01:
And the government hasn't contended that Gibbs is a wrist rest.

[00:14:39] Speaker 01:
And your honor.

[00:14:41] Speaker 05:
Your time's just about up.

[00:14:42] Speaker 01:
Yes.

[00:14:44] Speaker 01:
The other point here that I have not yet made is that the PTAB has failed to conduct the proper analysis, the required analysis, and that this court, and that's an independent grounds for reversal, the government should not be allowed to pull out required procedures and KSR holds that the analysis of the grant factors and specific articulation of a reason to combine is necessary to ensure fair consideration of patentability under Section 103.

[00:15:13] Speaker 01:
Your Honors, ProCop Labs respects the request that either the court remand the P-Tab to allow the P-Tab to correct its error, or if remand is not necessary, to reverse.

[00:15:22] Speaker 00:
Thank you.

[00:15:31] Speaker 00:
Good morning, Your Honors.

[00:15:32] Speaker 00:
May it please the court?

[00:15:33] Speaker 00:
I'd like to begin by addressing a few of the points my friend across the aisle has tried to raise.

[00:15:40] Speaker 00:
The first thing I'd like to do is respond to the arguments regarding the level of skill in the art.

[00:15:45] Speaker 00:
I think this court has recognized that Mr. Prokop has not made an issue of what the level of skill in the art is.

[00:15:56] Speaker 00:
And in that circumstance, the court is, I'm sorry, the tribunal, the board is not required to make findings on the level of skill in the art if it's not an issue.

[00:16:09] Speaker 03:
But he did make it an issue, right?

[00:16:11] Speaker 03:
He raised it in his appeal brief.

[00:16:13] Speaker 00:
Not to the board.

[00:16:15] Speaker 00:
No, Your Honor.

[00:16:16] Speaker 00:
He raised it before this court.

[00:16:19] Speaker 00:
He made an issue before.

[00:16:20] Speaker 00:
He attempted to make it an issue before this court, but it wasn't raised as an issue before the examiner or before the board.

[00:16:29] Speaker 00:
Additionally, some of his level of skill in the art argument sounds in analogous art theory.

[00:16:38] Speaker 00:
And to the extent that it does, how other people would have or were treating carpal tunnel syndrome and other wrist injuries is reasonably pertinent.

[00:16:51] Speaker 00:
And in that circumstance, Gibbs, Francis, Gibbon are all reasonably pertinent, all analogous art.

[00:17:00] Speaker 02:
Can I ask, I guess it's, I actually took my question to

[00:17:06] Speaker 02:
Mr. Zek to be saying something quite like what I take what to my mind is his core point about the aha moment recognizing a problem and maybe I'm not articulating it well but the whole in the board's analysis and let's assume full incorporation and all of that that I'm having some trouble with is I don't see anything

[00:17:35] Speaker 02:
that says, you know, the opportunity presented by somebody sitting at a computer hours on end to get heat therapy that would be, that we know is beneficial for carpal tunnel syndrome syndrome.

[00:17:56] Speaker 02:
So we have Gibbs saying some, you know, the wristband for that works, but there's this opportunity for

[00:18:04] Speaker 02:
providing that therapy sitting right in front of the person, in fact, directly under his wrist or her wrist.

[00:18:14] Speaker 02:
Why is that not, in Mr. Zek's language, an aha moment or in, I guess, more traditional language?

[00:18:22] Speaker 02:
Isn't that a significant gap that the board and the examiner simply have not filled by saying, here's why somebody, a relevant, ordinary skilled artisan,

[00:18:33] Speaker 02:
would have seen that opportunity.

[00:18:35] Speaker 02:
I tend to agree, once you see the opportunity, everything else is there.

[00:18:40] Speaker 02:
But nobody seems to have seen the opportunity.

[00:18:45] Speaker 00:
Your Honor, it's the way that patent law works.

[00:18:49] Speaker 00:
The Supreme Court said in KSR that if you merely combine familiar elements, and here we have familiar elements for the treatment and prevention of carpal tunnel syndrome.

[00:19:00] Speaker 02:
One is... I'm sorry.

[00:19:02] Speaker 02:
The Supreme Court did not say if you merely combine... I'm sorry, I didn't finish.

[00:19:06] Speaker 02:
You have to have a reason, a reason that an ordinarily skilled artisan would want to combine those, would see the benefit of combining them.

[00:19:17] Speaker 00:
Yes, Your Honor.

[00:19:18] Speaker 00:
I guess I would like to get to that.

[00:19:21] Speaker 00:
I think there's sort of two points in there.

[00:19:23] Speaker 00:
To fully express what the Supreme Court said, if you take familiar prior elements, and that's what we have here,

[00:19:32] Speaker 00:
to combine them to get merely predictable results, which we don't have any evidence of any unexpectedly superior results here, that that is obvious.

[00:19:42] Speaker 00:
And the reason that one-off ordinary skills would have wanted to combine these... That just cannot be right.

[00:19:52] Speaker 02:
Most mechanical things are made of off-the-shelf components, and once you see that you are to combine them in this particular way, you can predict the results.

[00:20:02] Speaker 02:
It's the seeing of the way, the seeing of the benefit of the combination that distinguishes one thing from the other.

[00:20:11] Speaker 00:
And the seeing of the benefit, the examiner made findings would have been obvious.

[00:20:18] Speaker 00:
And the reason for that is, is that even if we accept the sort of narrow interpretation of who a person of ordinary skill in the art is, a person designing risk-threat,

[00:20:30] Speaker 00:
And this person is looking to treat or prevent carpal tunnel syndrome.

[00:20:35] Speaker 00:
That person, if they were just confining themselves to the wrist rest world, I suppose that person to that same field, that person would say, oh, angulation of the wrist is better.

[00:20:48] Speaker 00:
Maybe I'll just improve angulation.

[00:20:51] Speaker 00:
But the reality is that if you're working in a field of developing wrist rest,

[00:20:58] Speaker 00:
to prevent or treat carpal tunnel syndrome, you would logically say, well, how are other people outside the wrist rest community treating or preventing carpal tunnel syndrome?

[00:21:09] Speaker 00:
And how they're doing that is with heat.

[00:21:11] Speaker 02:
So I'll apply that.

[00:21:12] Speaker 02:
Where are the best places in either the examiners' rulings or either the 2014 or 2011 board rulings that focus specifically on that?

[00:21:27] Speaker 00:
I'm going to break that into two parts.

[00:21:29] Speaker 00:
In the board's earlier decision, they talked about the need to just, sorry, the motivation to combine heat and risk regulation.

[00:21:42] Speaker 00:
And if we look to the early decision at A249,

[00:22:05] Speaker 00:
We see the board talks about all the advantages on page 249.

[00:22:10] Speaker 00:
We see the board discussing all the advantages that Gibbs lays out or evidences of that it was notoriously well known to use hot heat, heating pads, ice packs, and frozen gels, and cold to treat carpal tunnel syndrome.

[00:22:29] Speaker 00:
Then if you follow the board's analysis over to A250, you'll see

[00:22:35] Speaker 00:
that a person of ordinary skill in the R would have been recently expected this modification would provide Dineshwar's PAD with an enhanced capability of preventing or alleviating the symptoms of carpal tunnel syndrome, i.e., not only provide proper alignment of the wrist during typing, but also provide the PAD with the additional capability of being used as a PAD for heating or cooling the injury, as it was notoriously well known in the R.

[00:23:05] Speaker 00:
both before that board in that earlier proceeding and before the board in this proceeding.

[00:23:14] Speaker 00:
Procop's only argument was this cursory three-line argument that they presented in their appeal brief to the board, which you can see at page

[00:23:33] Speaker 00:
as it relates to Dineshwar and Gibbs, and page 219 as it relates to Dineshwar, Gibbs, and Gibbett.

[00:23:42] Speaker 00:
And what they say here is that the problem, they just assert that the problem with this shared analysis, shared advantage rather, analysis that the board uses is that it wouldn't work under KSR, that inventions will always

[00:24:01] Speaker 00:
and necessarily those that share the same advantages will be obvious.

[00:24:06] Speaker 00:
Well, in fact, that is the law.

[00:24:09] Speaker 00:
The Supreme Court said when you have two things that are very well known in the art and you combine them to get only predictable results, that's obvious.

[00:24:17] Speaker 00:
That's what the Supreme Court has said.

[00:24:19] Speaker 00:
And if you want to, the way that you make it unobvious is you show secondary considerations of non-obviousness.

[00:24:29] Speaker 00:
such as unexpectedly superior results.

[00:24:32] Speaker 00:
There is no evidence of unexpectedly superior results here.

[00:24:36] Speaker 00:
And this was the criticism that was made before the board in this resamination.

[00:24:43] Speaker 00:
And the court answered that in its earlier decision when it discussed the motivation to combine.

[00:24:49] Speaker 00:
And it laid out that test that appears in KSR.

[00:24:58] Speaker 00:
Procop has done nothing to disturb that.

[00:25:03] Speaker 00:
I mean, even if we were to just, it's not as if Gibbs just cites something that every person probably in this room doesn't know.

[00:25:15] Speaker 00:
People have been using hot and cold to treat and prevent injuries for millennia.

[00:25:22] Speaker 02:
Can I ask you, is this patent expired in five months?

[00:25:27] Speaker 00:
You know, I haven't done the math on that.

[00:25:30] Speaker 02:
It expires shortly, Your Honor, and I can determine that.

[00:25:33] Speaker 02:
20 years from May 31st, 1995.

[00:25:34] Speaker 02:
That's correct.

[00:25:38] Speaker 00:
Importantly, this patent issue before KSR.

[00:25:44] Speaker 00:
Really, to just reiterate, ProCrop's wrist rest is a very simple invention that at core combines two known ways of treating and preventing carpal tunnel syndrome.

[00:25:56] Speaker 00:
Dineshwar does it by promoting proper wrist alignment.

[00:25:59] Speaker 00:
Gibbs does it by applying hot and cold.

[00:26:03] Speaker 00:
In the early proceeding, the board made the very unremarkable finding that both the film and the art would have been motivated to combine these two elements to reap the shared advantages, I mean, their shared advantages they have in treating carpal tunnel syndrome.

[00:26:19] Speaker 00:
In the present re-examination, the issue is whether those of ordinary skill and art would have been further motivated

[00:26:26] Speaker 00:
to incorporate the electromagnetic additives of Gibbon or Francis into Dinesh Bhar's wrist rest, which the board found was identical to the claimed wrist rest except for the application of heat and cold.

[00:26:45] Speaker 00:
And the examiner found that they would be motivated and the board agreed.

[00:26:52] Speaker 00:
And the examiner's reasoning

[00:26:56] Speaker 00:
can be found in the final office section at page A-130, and again at A-140 and 134, which is simply that both Gibbon and Francis disclose that prior art ways of heating silicone gel for the use of the compress are cumbersome,

[00:27:25] Speaker 00:
dangerous, they present hazards with spilling, that there are all these assorted problems with those prior art ways, and that heating the gel by microwaving is the best way to go.

[00:27:40] Speaker 00:
In fact, these sorts of gels have been around since 1975.

[00:27:43] Speaker 00:
If your honors have no further questions,

[00:27:52] Speaker 00:
I would like to end with by saying that PROCOP hasn't shown no reversible error in the board's decision.

[00:28:02] Speaker 00:
The findings that are required under KSR are all there in the examiner's decision and in the board's decision.

[00:28:13] Speaker 00:
If there are no more questions, I'll end here.

[00:28:19] Speaker 05:
which is that you used up all your time.

[00:28:21] Speaker 05:
I'm going to give you one minute.

[00:28:25] Speaker 01:
The government has flipped the obviousness analysis on its head.

[00:28:29] Speaker 01:
It is looking to identify the claimed elements in the prior art, the advantages associated with that, and then using those to provide the motivation to combine.

[00:28:38] Speaker 01:
This is impermissible under the law.

[00:28:39] Speaker 01:
And this court has held in Bens v. Deason Watson that notwithstanding KSR,

[00:28:49] Speaker 01:
you can have a patentable contribution in the definition of the invention, even if it leads to no more, I'm sorry?

[00:28:56] Speaker 01:
Of the problem.

[00:28:57] Speaker 01:
Of the problem, sorry.

[00:28:59] Speaker 01:
Even if it leads only to the combination of familiar elements in known ways, we need to know more than predictable results.

[00:29:08] Speaker 01:
And above and beyond that, Your Honor, Your Honors, the government has just failed to do any sort of analysis with Dinesh Bhar and Francis Jr.

[00:29:20] Speaker 01:
It should not be allowed to just issue opinions deciding rights without following required procedures meant to ensure a fair consideration of obviousness under Section 103.

[00:29:32] Speaker 01:
Thank you, Your Honors.