[00:00:11] Speaker 04:
The next case is in Ray Gregory Abransky et al.

[00:00:18] Speaker 04:
2015-12-72, Mr. Hall.

[00:00:33] Speaker 01:
Good morning.

[00:00:34] Speaker 01:
If it may please the court, my name is Jonathan Ball.

[00:00:36] Speaker 01:
With me is Jennifer Moore.

[00:00:37] Speaker 01:
We're with the law firm Greenberg-Troy, and we represent the appellant Urbanski and the subpoena from the patent office.

[00:00:44] Speaker 01:
The board below made at least two errors of law in sustaining the rejections of Dr. Urbanski's patent claims under section 103.

[00:00:53] Speaker 01:
The first error of law is that the board relied on a modification of the primary reference, the gross reference.

[00:01:00] Speaker 01:
The board relied on a modification which would render Gross entirely inoperable for his intended purpose of making stable dispersions of fiber in water.

[00:01:12] Speaker 01:
And the second error, the board erred as a matter of law in failing to show that each and every limitation of the claims would have been taught or suggested by the cited references gross and long individually or taken together.

[00:01:26] Speaker 01:
And the board failed to show that there would have been a reasonable expectation of success in view of those references to achieve the claim limitations of the invention.

[00:01:35] Speaker 01:
I'd like to start, if I may, on the inoperability issue.

[00:01:39] Speaker 01:
There's really no dispute here looking at the board's decision.

[00:01:42] Speaker 01:
I think there's agreement that the purpose of the gross reference, the primary reference is to make these stable aqueous dispersions of fiber in water.

[00:01:53] Speaker 01:
It's from that strength to the claims, 30 some odd mentions in gross, identifying that as the very purpose for carrying out his process.

[00:02:01] Speaker 01:
One needs to look at

[00:02:03] Speaker 01:
farther than the summary of the invention, which says the very first sentence, the invention pertains to the discovery that insoluble fibers can be converted into stable homogenous colloidal dispersions.

[00:02:14] Speaker 01:
In other words, what Gross is doing is taking fibers which can't go into water.

[00:02:19] Speaker 04:
Is that part in the claim, stable dispersion?

[00:02:26] Speaker 01:
Is that in Gross's claim?

[00:02:28] Speaker 01:
It is.

[00:02:28] Speaker 01:
The prior art is gross, and it talks about the stable dispersions.

[00:02:31] Speaker 01:
But Mr. Avansky's claim... No, it doesn't, because in fact, Dr. Avansky's claim is the exact opposite.

[00:02:40] Speaker 01:
It's the antithesis of a stable homogenous aqueous dispersion.

[00:02:44] Speaker 01:
Dr. Avansky put in a declaration where he showed through experimental testing that if you took the modification that's proposed here, the Wong modification,

[00:02:53] Speaker 01:
which is taking everything about the gross reference and adjusting it only to reduce the reaction time.

[00:03:00] Speaker 01:
Gross says 5 to 72 hours is the appropriate reaction time, but the board would have us

[00:03:06] Speaker 01:
take from a different reaction, take a two-hour reaction time and use that in the gross reference.

[00:03:13] Speaker 01:
Dr. Avansky tested, he made hydrolysis and he tested those to see could you then therefore go ahead and make stable homogenous dispersions according to the gross reference.

[00:03:25] Speaker 03:
Is there anything in the gross reference that suggests that using a shorter hydrolysis time would result in no benefits?

[00:03:36] Speaker 01:
I think that the answer is yes, there is.

[00:03:39] Speaker 01:
So Gross talks about a degree of hydrolysis.

[00:03:42] Speaker 01:
And he says, what is an appropriate degree of hydrolysis?

[00:03:46] Speaker 03:
I understand that if you use a shorter hydrolysis time, you won't get the dispersion.

[00:03:52] Speaker 03:
You won't get the stable gels.

[00:03:55] Speaker 03:
But the question I'm asking is,

[00:03:59] Speaker 03:
Does Gross say, not only are you going to not get my stable gel, but you're not going to get any benefits.

[00:04:07] Speaker 03:
It won't yield any benefits at all.

[00:04:10] Speaker 01:
So Gross doesn't speak to that point exactly.

[00:04:13] Speaker 01:
What Gross does is he outlines

[00:04:15] Speaker 01:
For my purpose of making stable homogenous gels, this is what you do.

[00:04:20] Speaker 01:
You go from 5 to 72 hours.

[00:04:22] Speaker 04:
But a reference speaks to whatever it discloses, even if one of its aspects isn't utilized in what's claimed.

[00:04:31] Speaker 04:
The rest of it is.

[00:04:34] Speaker 01:
So if I understand the question,

[00:04:40] Speaker 01:
I mean, the simple fact of the matter is, gross is inoperable.

[00:04:43] Speaker 01:
If you take this modification, if you use two hours, and you do it in gross, you simply cannot produce these stable, homogenous, colloidal dispersants.

[00:04:54] Speaker 04:
But that's not in the claim before us.

[00:04:56] Speaker 01:
It's not in the claim before us because we have the exact opposite situation, Your Honor.

[00:05:01] Speaker 01:
We have a process for making a very specific

[00:05:07] Speaker 01:
a very specific process with very narrowly claimed process parameters and to make a very specific product.

[00:05:14] Speaker 01:
That product is defined in terms of certain key characteristics and Dr. Urbanski states in his declaration that those do not make stable homogenous dispersions and the board accepts that as true.

[00:05:26] Speaker 01:
That's one of the board's factual findings is they accept as true the facts stated in the Urbanski declaration including that.

[00:05:34] Speaker 01:
The board acknowledges

[00:05:36] Speaker 01:
elsewhere that practicing the long modification of gross comes at the expense of the very objective.

[00:05:45] Speaker 02:
But if you don't care about having a stable dispersion, you care about other aspects of what gross points you to, why does it matter that you can't get a stable dispersion without the length of hydrolysis that gross suggests?

[00:06:03] Speaker 01:
Because I don't think anyone would ever practice the gross method for any reason other than making a stable homogenous dispersion.

[00:06:11] Speaker 01:
The very first sense of the detailed description says the present invention pertains to a stable homogenous colloidal dispersion.

[00:06:18] Speaker 04:
But the question is what gross features.

[00:06:20] Speaker 04:
We're not talking about the operability of the gross invention.

[00:06:26] Speaker 04:
We're talking about what gross features in relation to what's claimed here.

[00:06:33] Speaker 01:
So I would submit that it's only with hindsight, the only conceivable way that one could take gross, strip out particular reaction parameters, particular enzymes, particular conditions, etc.

[00:06:46] Speaker 01:
from his reaction, which is for this purpose, but do it for a purpose which is mutually exclusive.

[00:06:53] Speaker 01:
And the board said that.

[00:06:54] Speaker 01:
The board said the Wong

[00:06:56] Speaker 01:
reaction may be mutually exclusive to the gross reaction.

[00:07:01] Speaker 01:
The only way someone practices something that says the invention is a stable homogenous colloidal dispersion in a mutually exclusive way is through hindsight.

[00:07:11] Speaker 04:
You said you have a second point too.

[00:07:13] Speaker 01:
Yes, so I'll move on to that.

[00:07:15] Speaker 01:
But if I could very quickly, this court's case law consistently holds in these situations, in the McGinley Franklin sports case, the court articulated the standard that when there's inoperability of the combination, it cannot serve as a predicate.

[00:07:30] Speaker 01:
We looked for every case we could find from this court where there was inoperability for the intended purpose of the priority and could not find one case where there was an obvious misdetermination

[00:07:41] Speaker 01:
even in the face of inoperability.

[00:07:45] Speaker 01:
And the PTO doesn't point to a single case for that.

[00:07:48] Speaker 01:
I think that would be a novel and remarkable proposition if a prior art combination could be completely rendered inoperable, but yet there would still be a finding.

[00:07:58] Speaker 01:
I'll move on to the next.

[00:08:00] Speaker 02:
Let me give you a hypothetical example that strikes me as maybe falling into this category.

[00:08:04] Speaker 02:
Suppose that your invention is a mild, you're looking for a mild explosive, something that will blow rocks off the side of a highway, but not destroy the mountain.

[00:08:18] Speaker 02:
And so you come up with an invention, a chemical formulation, and you say, OK, here's the formulation.

[00:08:24] Speaker 02:
Now, whatever you do, don't add sodium, more than x amount of sodium to this, or it will blow the entire mountain up.

[00:08:33] Speaker 02:
So don't do that.

[00:08:34] Speaker 02:
But the military is interested in something that blows up mountains, so it looks at that and says, terrific.

[00:08:39] Speaker 02:
We've just been taught how to make a terrific explosive.

[00:08:42] Speaker 02:
Why isn't that obvious from your invention, notwithstanding that you were saying, don't add the sodium.

[00:08:47] Speaker 01:
I think in that case, that's a clear teaching away.

[00:08:50] Speaker 02:
You mean there would be no obviousness in my case?

[00:08:54] Speaker 01:
Well, the Inray Gurley case tells us that one must look at the nature of the teaching and that a teaching away is a useful general rule, a reference which teaches away cannot render a claim obvious.

[00:09:06] Speaker 01:
But you need to look at the nature of the teaching.

[00:09:08] Speaker 01:
And if it just teaches that it's inferior or maybe less desirable, then that may not be enough to lead to a finding of non-obviousness.

[00:09:18] Speaker 02:
But where it is- It would be absolutely completely inconsistent with the purpose of the invention, which is this mild exposition.

[00:09:24] Speaker 02:
Nonetheless, it's telling you in so many words explicitly, here's how to make one heck of a bomb.

[00:09:32] Speaker 02:
Why wouldn't that be obvious?

[00:09:34] Speaker 02:
Why wouldn't a bomb be obvious from that?

[00:09:36] Speaker 01:
If the reference itself is leading you away from, leading one skill in the art away from that, and if the reference itself is saying, don't do this, that is the classic example of a teaching away.

[00:09:46] Speaker 02:
So you're saying it would not be obvious in my hypothetical case?

[00:09:49] Speaker 01:
In the case that you presented, I, you know, I, I, I,

[00:09:53] Speaker 01:
I believe it would be non-obvious because it is a teaching away, but that doesn't present the issue of inoperability.

[00:09:59] Speaker 01:
This is an issue of not just the express teaching away or the disclosures of a reference which say that's probably not going to be a useful avenue of research.

[00:10:10] Speaker 01:
Let me move on to the specific limitations of the claims, if I may.

[00:10:16] Speaker 01:
I'll start with the first point that's raised in our brief.

[00:10:22] Speaker 01:
which is the 1% pre-simple sugar content of the claim.

[00:10:28] Speaker 01:
So Dr. Avansky's patent claim requires that when this hydrolysis reaction is carried out, the resulting hydrolysis, the hydrolyzed modified fiber, will have a pre-simple sugar content, such as glucose, of less than 1% of that mixture.

[00:10:48] Speaker 01:
And that's just not in this prior art at all.

[00:10:51] Speaker 01:
The gross reference, the primary reference says 11 to 15 percent is the amount of free simple sugar content.

[00:10:58] Speaker 01:
And that's not just in abstract teaching.

[00:11:02] Speaker 01:
That is the very marker that gross says you look for to know when you've hydrolyzed enough to get these stable homogenous dispersions.

[00:11:13] Speaker 01:
So at 5 to 72 hours, 11 to 15 percent sugar content

[00:11:17] Speaker 01:
Growth says, that's good, you've achieved my invention, you've achieved a stable homogenous dispersion.

[00:11:24] Speaker 01:
So as an initial matter, there's nothing in growth that says get down all the way to less than 1%.

[00:11:30] Speaker 01:
Growth is saying 11 to 15%.

[00:11:35] Speaker 01:
Wong can't cure that because Wong doesn't talk about the sugar content.

[00:11:40] Speaker 01:
It's completely silent.

[00:11:42] Speaker 01:
These facts aren't in dispute.

[00:11:44] Speaker 01:
The board is applying the fact recognizes that growth says 11 to 15 percent and that Wong is silent on the issue.

[00:11:54] Speaker 03:
rejection is that if you use Wong's recommended hydrolysis time, let's say one, one and two thirds hours, you will yield a sugar content that meets your claim sugar content.

[00:12:12] Speaker 01:
I would suggest, Your Honor, that that is the PTO, the solicitor's point in their brief, that it would occur exactly as you're saying.

[00:12:22] Speaker 01:
But that's a newly-minted argument from counsel in their brief, because that's not what the board said.

[00:12:28] Speaker 01:
The board's only discussion of this issue is A10.

[00:12:32] Speaker 01:
It's page 9 of the board's decision, page A10.

[00:12:35] Speaker 01:
And the board simply says that the modification would, quote, result in a lower

[00:12:42] Speaker 01:
pre-simple sugar content.

[00:12:44] Speaker 01:
But that's not what the claim requires.

[00:12:47] Speaker 01:
Lower than 11%... If I may just wrap up that point, the law requires a reasonable expectation of success of the claimed invention.

[00:13:00] Speaker 01:
The Par Pharma case from this court from last year says exactly that.

[00:13:04] Speaker 01:
It's not just whether it would be lower.

[00:13:06] Speaker 01:
It's whether it would be the claimed degree.

[00:13:10] Speaker 01:
So the board here just doesn't address it at all.

[00:13:13] Speaker 01:
There's a single paragraph, and that's it.

[00:13:15] Speaker 01:
I'll leave it at that.

[00:13:16] Speaker 01:
Thank you.

[00:13:19] Speaker 04:
Ms.

[00:13:20] Speaker 04:
Nelson for the PTO.

[00:13:24] Speaker 00:
Thank you, Judge Laurie.

[00:13:26] Speaker 00:
May it please the court?

[00:13:28] Speaker 00:
I'll begin by addressing inoperability, because that seems to be what

[00:13:34] Speaker 00:
what they were focused on in the reply brief.

[00:13:37] Speaker 00:
And I have three points I want to make about inoperability.

[00:13:41] Speaker 00:
The first is that these inoperability cases are a useful construct in analyzing the obviousness of adding a component into a mechanical device, which is what all the cases actually concern.

[00:13:55] Speaker 00:
This inoperability principle has never been applied to analyze the obviousness of varying a parameter

[00:14:04] Speaker 00:
and a chemical method where that parameter is known to be a result-effective variable.

[00:14:12] Speaker 00:
In that context, this Court's cases in Applied Materials and Peterson is a more appropriate way to look at the obviousness analysis.

[00:14:23] Speaker 00:
The second point I'd like to make is I'd like to refer the Court to

[00:14:28] Speaker 00:
the ICON Health case, which I think is useful.

[00:14:31] Speaker 00:
Notably, the ICON Health case is the only case cited in the briefs post-KSR, the presidential case post-KSR.

[00:14:38] Speaker 00:
But nevertheless, it says a couple things that I think is important, and it actually kind of follows through with what you had said, Judge Laurie.

[00:14:47] Speaker 00:
One of the things they say is that the scope of the claim is critical, that when the claim is broad, an ineligibility argument is less persuasive.

[00:14:57] Speaker 00:
And secondly, a related point that they make is when they're looking at the intended purpose, they're looking at the applicant's intended purpose, ICOM's intended purpose.

[00:15:07] Speaker 00:
And I think that's important here because their claims are not limited to producing a stable hydrolysis, but simply to making a fiber hydrolysis.

[00:15:18] Speaker 00:
And if anything, their intended purpose is if you look to their specification, is really about making

[00:15:25] Speaker 00:
getting reduced water holding capacity.

[00:15:35] Speaker 00:
Actually, I think sort of as proof of purpose here, that their view of the intended purpose is overly narrow.

[00:15:45] Speaker 00:
If the examiner were to have flipped the references, which I think they very easily could have done, because Wong in fact in column three teaches

[00:15:53] Speaker 00:
almost all of the claimed method steps, and then simply substitutes in what wasn't on it long from gross, you would not have this inoperability problem.

[00:16:06] Speaker 00:
And the third point I'd like to make is that inoperability is a tool for analyzing teaching away.

[00:16:13] Speaker 00:
And here the board and examiners analysis of teaching away was proper.

[00:16:19] Speaker 00:
They found that Urbanski's arguments were focused entirely on gross, which, as Court has said, is improper when the rejection is based on gross and wrong.

[00:16:32] Speaker 00:
Secondly, like as Judge Chen observed, the board saw that in gross there's nothing that actually disparages or discourages one from using a shorter reaction time.

[00:16:46] Speaker 00:
And finally,

[00:16:49] Speaker 00:
they observed that Wong provides a teaching toward using a shorter reaction time and provides a good reason for doing so.

[00:17:00] Speaker 00:
Finally, I'd just like to finish by saying that this court has, from time to time, cautioned against trying to squeeze factual patterns into pre-established pigeonholes when the ultimate

[00:17:18] Speaker 00:
Analysis is really about obviousness, and I think that's exactly what Urbanski is trying to do here by trying to sort of squeeze this factual pattern into this inoperability rule, where the better rule here is about result-effective variables.

[00:17:35] Speaker 00:
Turning now to his points about the properties that are claimed in the claim, there's the water holding capacity and the simple sugar.

[00:17:44] Speaker 00:
He focuses on the simple sugar.

[00:17:47] Speaker 00:
as the board and the examiner both observed.

[00:17:52] Speaker 00:
If you looked at the claim, it's fairly clear that by practicing the method steps, by the structure of the claim, it indicates that you would achieve these properties.

[00:18:04] Speaker 00:
With respect to the simple sugar content, indeed, as Urbanski says, Grosz teaches 11 to 15 percent

[00:18:13] Speaker 00:
And by shortening the reaction time, one would expect to achieve a shorter, a smaller percentage of simple sugars.

[00:18:24] Speaker 00:
And in fact, growth teaches something important.

[00:18:27] Speaker 00:
Not only do they teach that with 5 to 72 hours that you get a sugar content of about 11 to 15 percent, but actually early on in the specification at A490,

[00:18:43] Speaker 00:
They talk about the prior studies where they actually completely hydrolyzed the cellulose and they end up with a sugar solution.

[00:18:50] Speaker 00:
So it basically sort of teaches that that's really what hydrolysis is all about.

[00:18:55] Speaker 00:
You're basically taking these fiber molecules and you're cutting them up.

[00:18:58] Speaker 00:
And at some point, if you cut enough, you end up with just a sugar solution.

[00:19:03] Speaker 00:
So obviously, if you cut less, you'll end up with a much smaller percentage of simple sugars.

[00:19:11] Speaker 00:
I guess I just want to finish with the last point, although he didn't focus as much on water holding capacity, although he did say that his claims were narrowly drafted to these particular properties.

[00:19:24] Speaker 00:
The water holding capacity is actually worth mentioning that both with respect to simple strippers and water holding capacity, the claimed ranges, there's nothing magic about them.

[00:19:36] Speaker 00:
If you look to the specification, they haven't taught anything special about those ranges

[00:19:41] Speaker 00:
or any way to achieve them that is different than simply just following these methods, steps.

[00:19:48] Speaker 00:
In fact, if you look to their discussion of sort of noting that A40 and 45, when they talk about water holding capacity, they talk basically about achieving water holding capacity of 10%, or at least 10%, at least 15%, at least 20%, and so on, to up to 50%.

[00:20:10] Speaker 00:
And this limitation, 10% to 35%, was brought in in response to the examiner's rejection at A231 of the record, simply as an attempt to overcome, at that time, a rejection based on gross alone.

[00:20:31] Speaker 00:
So it's not really a narrowly drafted range.

[00:20:34] Speaker 00:
It's simply an attempt by Urbanski to try to overcome

[00:20:38] Speaker 00:
the teachings of growth which we submit are clearly rendered the invention obvious.

[00:20:45] Speaker 04:
If there are no further questions.

[00:20:51] Speaker 01:
I'd like to make just three quick points to address what the solicitor said.

[00:21:00] Speaker 01:
One, I heard a statement that allegedly the examiner and the board found that Wong

[00:21:06] Speaker 01:
The secondary reference teaches the steps of Dr. Avansky's claims, and that's just not true.

[00:21:12] Speaker 01:
There's nothing in the record where the examiner ever did a comparison between the Wong reaction and Dr. Avansky's patent claim.

[00:21:21] Speaker 01:
If you look at the board's decision, it's just not there.

[00:21:23] Speaker 01:
The only thing the board says is it refers to a temperature of Wong, but that's it.

[00:21:28] Speaker 01:
None of the important parameters that Dr. Avansky identifies in terms of the enzymes,

[00:21:33] Speaker 01:
the concentration of the enzymes, the concentrations of the fibers, the heating, the temperature, on and on.

[00:21:40] Speaker 01:
The pH, none of that is addressed by the board or the examiner with respect to Wong.

[00:21:45] Speaker 01:
So that's just simply incorrect.

[00:21:47] Speaker 01:
The issue about ICON, and it was said that ICON makes clear that it is the applicant's purpose that matters, not the purpose of the prior ARP for inoperability.

[00:22:01] Speaker 01:
The ICON case is a different type of case.

[00:22:04] Speaker 01:
That's USV Adams.

[00:22:05] Speaker 01:
That's a separate tried and true principle that in inoperable combination for what we're claiming also can't be used to show obviousness or anticipation.

[00:22:17] Speaker 01:
This is an entirely, this is the In re Gordon principle.

[00:22:20] Speaker 01:
It was recently affirmed in PLASPAC earlier this year in the unpublished PLASPAC decision.

[00:22:25] Speaker 01:
And it's where the modification renders the prior art

[00:22:29] Speaker 01:
inoperable for the prior arts purpose.

[00:22:32] Speaker 01:
So for example in Plas-Pak what was that issue was a device for filling a material into a thin crack on the surface.

[00:22:41] Speaker 01:
The modification would have added a spray nozzle to that and what this court said is that that renders that prior art unsuitable for its intended purpose of filling in just a single crack without spraying it everywhere.

[00:22:55] Speaker 01:
So in in-rate boardings, the facts and situations.

[00:22:58] Speaker 03:
In class pack, that was a case where we deferred to the lower tribunal's fact finding on that.

[00:23:06] Speaker 03:
In class pack, there was a...

[00:23:11] Speaker 03:
standard review here.

[00:23:13] Speaker 01:
There's no doubt about that.

[00:23:14] Speaker 01:
The court affirmed the board's finding for failure to open up an IPR, I believe it was, in that case, finding that the references would render it unsuitable.

[00:23:23] Speaker 01:
It's just merely an acknowledgment from this court that that is the standard, and that standard is alive and well post-KSR, certainly on that.

[00:23:33] Speaker 01:
And then I'd just like to say that the solicitor said the structure of the claim,

[00:23:40] Speaker 01:
shows that these properties that Dr. Avansky has claimed somehow naturally result or inherently result from carrying this out.

[00:23:48] Speaker 01:
And that's just not the case.

[00:23:50] Speaker 01:
We know from Gross that his enzymes give you a very large level of simple sugars.

[00:23:58] Speaker 01:
We know it's not the case that it intrinsically produces it.

[00:24:01] Speaker 01:
But more importantly, the board did not make that argument.

[00:24:04] Speaker 01:
That's counsel's argument.

[00:24:05] Speaker 01:
That was not the board's argument.

[00:24:07] Speaker 01:
And the 1% limitation, that was added by amendment.

[00:24:11] Speaker 01:
It previously was 5%.

[00:24:12] Speaker 01:
So it's no more intrinsic or inherent that when you carry it out, you get 5% than it is 1%.

[00:24:20] Speaker 01:
That argument doesn't make sense.

[00:24:22] Speaker 01:
This is a very narrowly defined patent claim with less than 1% pre-simple sugar.

[00:24:27] Speaker 01:
The board doesn't address it.

[00:24:29] Speaker 01:
It just says lower.

[00:24:31] Speaker 04:
Thank you.