[00:00:33] Speaker 00:
Okay.

[00:00:38] Speaker 02:
The next case before the report is Wonderland Nursery Goods versus Thorley Industries LLC.

[00:00:46] Speaker 02:
Mr. Roche, you want four minutes for rebuttal?

[00:00:48] Speaker 00:
Yes, Your Honor.

[00:00:51] Speaker 02:
Okay.

[00:00:51] Speaker 02:
Did I pronounce that correctly?

[00:00:52] Speaker 03:
Roche, R-C-H.

[00:00:53] Speaker 02:
Roche, R-C-H.

[00:00:54] Speaker 02:
Okay.

[00:00:55] Speaker 02:
You may proceed.

[00:00:56] Speaker 03:
Thank you, Your Honor.

[00:00:59] Speaker 03:
My name is David Roach.

[00:01:00] Speaker 03:
I'm representing the plaintiff in this case, excuse me, the patent holder.

[00:01:05] Speaker 03:
This is a re-examination, inter-parties re-exam, one of the last ones I suppose this court may address.

[00:01:17] Speaker 03:
Thoroughly in this case has taken what I think is an extraordinary position that construction of the preamble is not necessary.

[00:01:29] Speaker 03:
Not necessary in an obviousness case when one of the references, the one they call primary reference, meets the preamble, the other one doesn't have to meet the preamble.

[00:01:43] Speaker 02:
Well, I think that's an untenable position because... Well, does it have to meet the preamble to fall within the bounds of relevant prior art?

[00:01:54] Speaker 03:
No, it doesn't.

[00:01:55] Speaker 03:
It doesn't have to meet the preamble.

[00:01:57] Speaker 03:
My position is that in order to engage in a proper analysis of the analogous art tests, you need to understand the invention.

[00:02:09] Speaker 03:
And in order to understand the invention, you need to construe the preamble.

[00:02:14] Speaker 05:
Well, let's assume that the board had construed the preamble.

[00:02:17] Speaker 05:
What difference would it make?

[00:02:19] Speaker 03:
Well, I think that it manifests itself in the way they applied, in particular, the second

[00:02:27] Speaker 03:
They did not affirm the examiner on either count when it comes to following the analogous SART test.

[00:02:37] Speaker 03:
The examiner took the approach of first saying, well, the two references are in the same field.

[00:02:49] Speaker 03:
He didn't say anything about what field the invention was in, okay?

[00:02:53] Speaker 03:
Now, I would acknowledge that Castor is in the same field as the invention.

[00:03:01] Speaker 03:
But he had earlier said that Castor's field was to induce relaxation and sleep in sitting infants.

[00:03:11] Speaker 03:
And then he changed when he applied this albeit erroneous test, first test for a B-shield, saying that Castor and Nordella are in the same field.

[00:03:23] Speaker 03:
So I think the board recognized they couldn't affirm the examiner's application of the first spesio test.

[00:03:29] Speaker 03:
So they went to the second one, which is to look at the problem that the invention addressed.

[00:03:36] Speaker 03:
Again, the examiner had compared the problem addressed in Castor and Nardella.

[00:03:43] Speaker 03:
Never addressed, the examiner didn't, what problem the invention addressed.

[00:03:49] Speaker 03:
Now, this is where I think the real nub of the case went haywire.

[00:03:56] Speaker 03:
The board, unable to really affirm either of the two erroneous applications of the test that the examiner engaged in, went and completely revamped the second test.

[00:04:10] Speaker 03:
And this is where I believe they ignored not only the specification, but the claim as

[00:04:18] Speaker 03:
properly construed because what they said was the problem relates to mechanisms that cause the chair to move up and down and back and forth.

[00:04:31] Speaker 03:
They didn't say anything about what problem our inventor attempted to solve.

[00:04:37] Speaker 03:
They didn't reference the specification at all and they didn't address the claim if they had addressed the claim at least.

[00:04:46] Speaker 03:
as properly construed, they would have understood that the claim is for an infant rocking chair, not for a chair that moves up and down.

[00:04:54] Speaker 05:
Are you trying to tell us that it was improper for the board to go to Nordella at all, or that their reasoning for getting to Nordella was flawed?

[00:05:04] Speaker 03:
Well, I think that you can only get to Nordella if you find that it's analogous art.

[00:05:09] Speaker 02:
But are you saying in order to be analogous, it has to be addressing the comfort of infants

[00:05:16] Speaker 02:
I mean, what if it was addressing the comfort of 10-year-olds?

[00:05:21] Speaker 03:
I don't know, but Nordella certainly wasn't addressing comfort of any kind.

[00:05:26] Speaker 03:
And my point is that the board, if they're going to apply, first of all, they applied a new test entirely.

[00:05:33] Speaker 03:
I mean, a new version of the second physio test.

[00:05:36] Speaker 03:
They didn't follow either of the ones that the examiner did.

[00:05:38] Speaker 03:
That alone, I think,

[00:05:40] Speaker 02:
Well, are you saying that was a new ground of rejection?

[00:05:43] Speaker 02:
Yes.

[00:05:43] Speaker 02:
And one that you didn't have an opportunity to address?

[00:05:45] Speaker 02:
Yes.

[00:05:46] Speaker 02:
But didn't you address Nordella completely?

[00:05:50] Speaker 02:
I mean, I don't understand where the prejudice would be.

[00:05:53] Speaker 03:
Well, we addressed what the examiner said.

[00:05:57] Speaker 03:
The examiner said it's not analogous because, well, it is analogous because it's in the same field of invention.

[00:06:08] Speaker 03:
It didn't say anything about our field of invention.

[00:06:10] Speaker 03:
They said that Castor's field of invention is the same as Nordella's field of invention.

[00:06:15] Speaker 03:
Having earlier said a completely different field for Castor is applicable.

[00:06:18] Speaker 05:
But putting aside all this field of invention, didn't you have the opportunity to explain why the combination of Nordella and Castor didn't disclose all the elements?

[00:06:29] Speaker 05:
And you made arguments as to why Nordella didn't.

[00:06:32] Speaker 05:
How would your argument

[00:06:34] Speaker 05:
have changed if the board or the examiner had, in your view, properly construed this and still gotten a Nordella.

[00:06:41] Speaker 03:
If the examiner had done a proper analogous test, he would have looked at the... Are you saying that if they did the proper test, Nordella would never have been, could properly have been considered analogous?

[00:06:55] Speaker 05:
That's exactly right.

[00:06:55] Speaker 05:
But how is that possible?

[00:06:58] Speaker 05:
Because the problem is, you're solving is,

[00:07:01] Speaker 05:
a chair for infants that moves around to comfort them.

[00:07:06] Speaker 03:
Right?

[00:07:06] Speaker 03:
Right.

[00:07:06] Speaker 03:
Moves smoothly in a rocking fashion.

[00:07:09] Speaker 05:
And Nordella talks about how a chair moves around in a bunch of different directions.

[00:07:15] Speaker 05:
It's true.

[00:07:16] Speaker 05:
If you're working on an infant chair, and you don't have any guidance on how to do it for an infant chair, but you see, oh, here's this adult chair.

[00:07:24] Speaker 05:
It moves this way.

[00:07:25] Speaker 05:
We can adapt that to an infant chair.

[00:07:27] Speaker 05:
Why isn't that completely analogous?

[00:07:29] Speaker 03:
I think that this is

[00:07:31] Speaker 03:
I mean, this court hears allegations of hindsight all the time.

[00:07:36] Speaker 05:
But I think this is... Well, that's pretty... I mean, if you're working on a movable chair for little kids and you see out there a patent on movable chairs for big kids, how would you not, how would a not a person of ordinary skill think to look at those teachings?

[00:07:51] Speaker 03:
Well, I'm saying if you're looking at infant products and infant soothers, are you really gonna look

[00:07:59] Speaker 03:
at devices for entertaining and training adults.

[00:08:04] Speaker 05:
But you're reframing the question as infant suitors instead of chairs that move.

[00:08:09] Speaker 05:
Well, exactly, which is why I think the preamble is important.

[00:08:13] Speaker 03:
But your invention is on a chair that moves.

[00:08:17] Speaker 03:
I would say if you look at the invention, you look at the specification in this case.

[00:08:23] Speaker 03:
the claim, and Judge Fischer looked at this.

[00:08:26] Speaker 05:
Let me get back to the question, because I'm not buying this, but let's assume that the board properly looked to Nordella as prior art.

[00:08:35] Speaker 05:
Did you have every opportunity to address why it didn't, it with the combination of Castor, didn't meet all the limitations?

[00:08:42] Speaker 03:
Yes, and there are a number of reasons.

[00:08:44] Speaker 03:
I mean, I don't think that Nordella should be applied at all, but if you assume that the preamble is not limiting,

[00:08:52] Speaker 03:
and or that Nordella is somehow deemed to be analogous art.

[00:08:57] Speaker 03:
All of the claims in this case have a term that's called bottom seat.

[00:09:02] Speaker 03:
Now, bottom seat is not a term that has an ordinary meaning, and that's not uncommon.

[00:09:08] Speaker 03:
A lot of patents use terms that you have to really look at the specification to understand.

[00:09:13] Speaker 03:
Now, I understand that this court uses the broadest reasonable construction and would do so in this case, and the board should have too.

[00:09:23] Speaker 03:
But the fact that a term like bottom seat is a unique term to this patent doesn't mean that it should mean anything.

[00:09:30] Speaker 02:
Well, where does it say in the written description that it's the bottom-most structure?

[00:09:34] Speaker 03:
Well, it's clearly shown that way.

[00:09:38] Speaker 03:
It doesn't say.

[00:09:39] Speaker 03:
I mean, the figures speak volumes.

[00:09:42] Speaker 02:
Right, but the figures are only illustrative.

[00:09:43] Speaker 02:
They're not.

[00:09:45] Speaker 02:
That's true.

[00:09:45] Speaker 02:
They don't define.

[00:09:46] Speaker 02:
So is there anything in the written description that actually says it's the bottom-most element?

[00:09:51] Speaker 03:
I don't believe there is, although I think the use of the term bottom and the showing of it as being the lowest, most supporting component in the device is enough to lead a person of ordinary skill to conclude that it's the bottom supporting piece.

[00:10:06] Speaker 03:
And bottom seat, the word seat is used, I acknowledge, in an unusual way here, but a seat for something is, in effect, a platform for something that has got some surface, some breadth,

[00:10:21] Speaker 03:
We tried to solve this problem by submitting new claims, 21 through 24.

[00:10:29] Speaker 03:
And the board found a way to reject those claims, I guess in a pattern similar to what we see throughout Enterprise Review now.

[00:10:44] Speaker 03:
They don't like amendments for some reason.

[00:10:46] Speaker 03:
But we tried to address this by submitting new claims.

[00:10:51] Speaker 03:
21 through 24.

[00:10:52] Speaker 03:
And I think the only basis for rejecting claim 24 is this indefiniteness of the word broad.

[00:11:01] Speaker 03:
I mean, I can't believe that this court would want to send a message that use of the word broad in a claim is indefinite.

[00:11:11] Speaker 03:
I mean, given what we show as our bottom seat.

[00:11:14] Speaker 02:
It wouldn't be sending a message that use of the word broad

[00:11:17] Speaker 02:
always renders the claim indefinite, it would be sending a message that the use of the word broad in this claim.

[00:11:23] Speaker 03:
But bear in mind, this court, the examiner in this case, had found in connection with an argument that the term broad was lacking in written description, said that one may easily determine that the bottom seat of the invention is wide relative to other elements.

[00:11:43] Speaker 03:
So wide relative to other elements is a

[00:11:47] Speaker 03:
is a plausible construction for what broad should mean.

[00:11:51] Speaker 03:
It's broader than everything else.

[00:11:53] Speaker 03:
It's wider than everything else.

[00:11:55] Speaker 03:
And yet, despite that finding, the board goes on to say, well, we don't know when something ceases to be broad.

[00:12:04] Speaker 03:
They know perfectly well when something's broad, but we can't tell when it stops being broad.

[00:12:11] Speaker 03:
I just don't think that that pulls water, frankly.

[00:12:14] Speaker 02:
But wasn't that claim also rejected for obviousness

[00:12:16] Speaker 03:
It was, but the board never mentioned anything about generally flat plate-like structure, which was in Claim 24.

[00:12:27] Speaker 03:
They rejected that without addressing why Nordella has a generally flat plate-like structure.

[00:12:35] Speaker 03:
It doesn't.

[00:12:36] Speaker 03:
It's got a frame that they're calling, open frame that they're calling the bottom seat in Nordella.

[00:12:42] Speaker 03:
So I think that Claim 24, at least,

[00:12:45] Speaker 03:
Assuming that you don't agree that the use of the term broad in that context is indefinite, the claim 24, I believe, there's no basis.

[00:12:53] Speaker 03:
There's not one bit of evidence to support the rejection of claim 24 on the basis of Nordella.

[00:13:02] Speaker 03:
The claim 12 also was rejected on the basis of Nordella, but in that case,

[00:13:12] Speaker 03:
Claim 12, and this is a limitation unique to claim 12, not in claim 19 or 21.

[00:13:17] Speaker 03:
The second motion mechanism is disposed between a supporting element and a bottom seat.

[00:13:24] Speaker 03:
Now, it used, I'm not sure what, it used between as meaning an elevational, a difference in elevation.

[00:13:37] Speaker 03:
In other words, my hand is between

[00:13:40] Speaker 03:
the top of that flagpole and the base of it, because it's higher in elevation than the bottom and lower in elevation than the top.

[00:13:48] Speaker 03:
That's the standard that it used for meaning for between when it looked at claim one in the context of NAFTE.

[00:13:57] Speaker 03:
In claim 12, the second motion mechanism, which is the hydraulic cylinder that moves the chair up and down in Ordol, has to be between

[00:14:09] Speaker 03:
the supporting element, which is the frame that surrounds it, and the bottom seat, which is this frame 64.

[00:14:17] Speaker 03:
It doesn't meet its own elevational definition, and it doesn't meet the more standard definition in the space that separates.

[00:14:25] Speaker 03:
So I don't think claim 12 has all of the limitations of Nardella.

[00:14:32] Speaker 03:
And I think that that's a problem.

[00:14:36] Speaker 03:
And Claim 23 also.

[00:14:38] Speaker 03:
Claim 23 calls for guiding services.

[00:14:40] Speaker 03:
Now, we have talked at considerable length about the absence of guiding services.

[00:14:48] Speaker 03:
There's just nothing shown in our DELVA to meet Claim 23.

[00:14:52] Speaker 03:
So I think, and I don't want to neglect Claims 1 and 2 because they're based on a different combination of references.

[00:15:00] Speaker 03:
But again, we have bottom seat construed essentially to mean anything.

[00:15:05] Speaker 03:
And I don't think, even under the broadest reasonable construction, you can take a term like bottom seat that doesn't have an ordinary meaning and simply apply any definition, which is essentially what the board did here.

[00:15:21] Speaker 03:
And again, the between limitation is just simply not met, not even close in the NAFTA reference.

[00:15:30] Speaker 03:
So I see I'm...

[00:15:32] Speaker 03:
Almost out of time.

[00:15:33] Speaker 02:
We'll restore your three minutes for rebuttal.

[00:15:37] Speaker 05:
Thank you.

[00:15:44] Speaker 02:
Just why don't we wait for a second.

[00:16:37] Speaker 02:
You're the most important person on this panel.

[00:16:45] Speaker 02:
Okay, you can begin.

[00:16:47] Speaker 01:
Thank you, and may it please the court.

[00:16:48] Speaker 01:
My name's Daniel Green.

[00:16:49] Speaker 01:
I'm counsel for Thoroughly Industries.

[00:16:51] Speaker 01:
The judgment of the board in this instance should be affirmed.

[00:16:53] Speaker 01:
It was based on reasonable claim constructions.

[00:16:56] Speaker 01:
It was based on substantial, in fact, ample evidence before the board.

[00:16:59] Speaker 01:
Essentially, these claims are very broadly drafted.

[00:17:02] Speaker 01:
They require no more than a generically recited seat body,

[00:17:06] Speaker 01:
and a base and a bottom seat, and the motion of those elements is characterized in the claims only as, quote, movable, forward and backward, driven by a, quote, motion mechanism with no additional structure.

[00:17:18] Speaker 05:
Are you going to meet how Nordella meets the dispose between elements of claim 12?

[00:17:26] Speaker 05:
I find that drawing, I'm looking at this drawing, a little pathway to decipher.

[00:17:32] Speaker 01:
Sure, Your Honor.

[00:17:32] Speaker 01:
I believe that's figure two of Nordella.

[00:17:36] Speaker 01:
So for the disposed between element, if you look at figure two, which is at page A1258, essentially there's an upper frame, which is element 54, and it's separated from the lower frame, element 64, and extending vertically between those two elements is the cylinder, which is element 166, and it's that hydraulic cylinder that is the second motion mechanism within Nordella.

[00:18:02] Speaker 01:
So what Wonderland's essential complaint is that they believe that the board

[00:18:06] Speaker 01:
created a quote definition of disposed between as meaning strictly elevational and the fact that a portion of that cylinder is co-elevational with the upper frame excludes it from being quote disposed between at all.

[00:18:20] Speaker 01:
But in fact what the board did is they simply said that disposed between being very broad language doesn't exclude an elevational meaning but it's certainly not limited to an elevational meaning.

[00:18:29] Speaker 01:
So in the broadest reasonable construction they concluded that that is between the upper and lower frames.

[00:18:36] Speaker 01:
So these claims, again, they're just movable by, quote, motion mechanisms.

[00:18:41] Speaker 01:
And so given such a generic, broad language, it can come as no surprise that identical structure in the prior art was found by the board to meet each and every element.

[00:18:51] Speaker 01:
And importantly, Wonderland doesn't actually argue in its briefing at all that any particular claimed structure in its claims is missing from these prior art teachings.

[00:18:59] Speaker 01:
What they do instead, they try to read their claims around those prior art teachings

[00:19:04] Speaker 01:
by importing limitations from the specification.

[00:19:06] Speaker 02:
At least at the claim 19, I'm having a hard time understanding how the preamble is not limiting.

[00:19:21] Speaker 01:
If I could just for a moment, our position is that the preamble wasn't reached by the board and for good reason because it wasn't necessary, it wouldn't be despotitive either way.

[00:19:29] Speaker 01:
If the preamble is limiting, all it means is that it's a limitation that has to be taught, which is undisputedly is by the primary reference, the Castor reference.

[00:19:38] Speaker 01:
If the preamble is not limiting, then it just broadens out the scope of analogous art even further and would include things like Nordella.

[00:19:47] Speaker 01:
On the merits about whether the preamble should be limiting,

[00:19:49] Speaker 01:
I mean, the words infant and rocking don't actually help to define any structure or color, the meaning of any structure in the claims.

[00:19:58] Speaker 01:
Again, even within claim 19 your honor was referring to, even within claim 19, there's nothing, for example, about say the seat body that discusses structure that would be necessary to accommodate an infant.

[00:20:12] Speaker 01:
There's nothing about the motion mechanism that has a particular soothing efficacy, a particular noise level.

[00:20:18] Speaker 01:
None of the things that Wonderland repeatedly brings up as supposedly distinguishing aspects of its claims just aren't in those claims.

[00:20:25] Speaker 01:
But if there was something in there that suggested a particular sizing, a particular cushioning, a particular movement profile for the claims.

[00:20:33] Speaker 02:
But it's the seat body in the bottom seat that's the antecedent basis for their references in Claim 19, is it not?

[00:20:44] Speaker 01:
Yes, there is some antecedent basis, but I think as we pointed out in our briefing that although there are two reasons why nonetheless these claims should not have the preamble imported.

[00:20:52] Speaker 01:
One is that although the seat body and bottom seat were providing antecedent basis, we cited two cases showing that at least when the remainder of the preamble does not provide antecedent basis but is only a statement of intended use,

[00:21:07] Speaker 01:
There's no reason to import a preamble wholesale when the other language stating that simply this device is intended for infant rocking purposes, that should not also be brought in.

[00:21:16] Speaker 02:
But doesn't infant rocking chair provide structure for the seat body and bottom seat?

[00:21:22] Speaker 01:
No, I don't believe it does, Your Honor.

[00:21:24] Speaker 01:
The seat body is claimed very generically.

[00:21:26] Speaker 01:
At most, I think what the examiner and the board did is the only weight that really that carries it all is that the seat

[00:21:32] Speaker 01:
as a whole in the seat body must at least be capable of holding an infant, which Nordella and any of the other prior artists are certainly capable of doing that.

[00:21:39] Speaker 01:
It wasn't limited to devices that are specifically designed for holding infants, but when you include in your claim body just a seat body without any other defining characteristics, the word infant doesn't actually add anything to it other than to indicate that a seat that couldn't possibly accommodate an infant would not be within the scope of the claim.

[00:21:58] Speaker 01:
but nobody disputes that Nordell is capable of holding an infant just like it's capable of holding a child or an adult.

[00:22:07] Speaker 01:
So, as I mentioned, most of what Wonderland is arguing that distinguishes their claims are things that are not recited, such as the curved motion, the soothing efficacy.

[00:22:16] Speaker 01:
Had they wanted such limitations to be in their claims and meaningful, they had the opportunity in the re-exam proceeding to make those changes, but they tried to have their cake and eat it too, and they just can't have it

[00:22:26] Speaker 01:
both ways to try to read their claims in such an unreasonable and limiting manner.

[00:22:31] Speaker 01:
But in fact, I think it's telling that Claim 24, which was added, does add additional structure.

[00:22:37] Speaker 01:
So at least with respect to what Claim 24 adds, for example, the broad plate like any of that language that they say is also

[00:22:45] Speaker 01:
connoted by just the word bottom seat, that can't be the case because if it were they wouldn't have had to add Claim 24 to make that distinction.

[00:22:52] Speaker 02:
Why isn't it enough if you could understand broad meaning broad as in relation to the other portions of the structure?

[00:23:01] Speaker 01:
Why isn't it enough for what?

[00:23:03] Speaker 02:
For purposes of rendering it sufficiently definite.

[00:23:06] Speaker 01:
For definiteness?

[00:23:07] Speaker 01:
Well, so I think the problem with the definiteness of the term broad in the context of this

[00:23:13] Speaker 01:
As the board said, it's not whether it's unclear whether something can be broad in relation to other elements.

[00:23:19] Speaker 01:
The question is, at some point, there's a threshold where it becomes very highly subjective.

[00:23:25] Speaker 01:
This podium might be considered broad relative to me, but as I shrink it down and make it smaller and smaller, at some point, it's going to cease to be what someone might consider broad, but somebody else might think it still is broad.

[00:23:36] Speaker 01:
So there's a threshold there, and likewise, if it was a very small podium, at some point, it would become broad if it got larger.

[00:23:42] Speaker 01:
So it's not just the issue that broads somehow.

[00:23:45] Speaker 01:
You can't see that something is broad relative to other elements in something like Nordella or in the NAFTA reference.

[00:23:51] Speaker 01:
The issue is whether the public would be on fair notice when a structure becomes so small that it no longer at that boundary.

[00:23:59] Speaker 02:
Wasn't there a bit of an inconsistency though in the board being able to define it for written description purposes and then saying it can't be defined for definite.

[00:24:07] Speaker 01:
Well, I think that the board harmonized those two decisions quite correctly when they set a page A11.

[00:24:13] Speaker 01:
It's not the issue that the claim is indefinite because it's unclear what can be broad.

[00:24:18] Speaker 01:
It's only an issue that there's no way to determine when something ceases to be broad.

[00:24:23] Speaker 01:
So in the context of the Nordella frame, the board had no trouble seeing that relative to many elements, including the cylinder and the chair, that element was in a sense broad and would meet the claim language for that reason.

[00:24:35] Speaker 01:
looking more generally in terms of what might otherwise be broad, a slightly different structure.

[00:24:40] Speaker 01:
They said, well, at some point that language breaks down.

[00:24:43] Speaker 01:
It's unclear in the context of this patent, especially because broad is a term of degree.

[00:24:49] Speaker 01:
It's a term that was introduced for the very first time in the re-examination.

[00:24:52] Speaker 01:
And there's not only no definition in the specification of what broad might mean.

[00:24:57] Speaker 01:
There's not even an indication that what is in the specification is considered to be broad.

[00:25:01] Speaker 01:
by the patentee.

[00:25:02] Speaker 01:
So in that situation, I think the board was well within its discretion to say that this is not sufficiently clear to advise a person's skill in the art what it might mean.

[00:25:10] Speaker 02:
Do you agree that the board used a different portion of the BCO test than the examiner did?

[00:25:17] Speaker 01:
No, I disagree with that completely, and this goes to the new ground of rejection argument.

[00:25:22] Speaker 01:
I think to show that this was not a new ground of rejection in any sense, this court need look no further than Wonderland's brief before the board at page 8428 where they argued, quote,

[00:25:32] Speaker 01:
The patent owner believes that Nordella cannot possibly be considered reasonably pertinent to the invention of the claims at issue in this appeal.

[00:25:40] Speaker 01:
So they were affirmatively arguing to the board that Vigio Prong 2 was not met.

[00:25:44] Speaker 01:
So how could the board then have made this brand new rejection?

[00:25:46] Speaker 01:
Well, the answer is they didn't because it was there all along.

[00:25:49] Speaker 01:
If we look back to the very first office action of page 8, 1089, we see that the substance of the Vigio Prong 2 was there through the right of appeal notice.

[00:25:59] Speaker 01:
This is page 8, 763 through 64.

[00:26:02] Speaker 01:
talking about what Nordella and Castor were concerned with.

[00:26:05] Speaker 01:
What were the problems that they were trying to solve before the examiner there concluded that a person of skill in the art would look to Nordella's teachings when seeking to improve the device of Castor.

[00:26:16] Speaker 01:
So it was there all along and that's exactly why Wonderland argued it to the board.

[00:26:20] Speaker 01:
So there was no unfair surprise, anything like that under the Rambas test from this court.

[00:26:25] Speaker 01:
There was certainly a fair opportunity to react to that thrust of that rejection.

[00:26:29] Speaker 01:
I think just suggesting that Nordella is analogous art at all is incumbent upon any patent donor to argue against both prongs one and prong two, but regardless, here they actually did respond to both prongs one and prong two.

[00:26:42] Speaker 01:
We have a lot in the record arguing against each one, but certainly the one that the board actually did rely on in this case.

[00:26:50] Speaker 01:
A couple things I'd just like to note.

[00:26:54] Speaker 01:
Wonderland never argued to the board that a lot of the features that it argues in its brief that are allegedly lacking, even if they are in fact somehow lacking under the claim constructions of Wonderland advances, that those features were nonetheless obvious.

[00:27:09] Speaker 01:
All of the arguments were sounding in anticipation all along and we think it's incumbent upon Wonderland to demonstrate to the board and to this court the features that it believes are not only novel but go above and beyond and are also demonstrative of non-obviousness

[00:27:23] Speaker 01:
But because they didn't do that, Wonderland failed to rebut the prima facie case.

[00:27:27] Speaker 01:
And many of these aspects, whether it's the bottom seat or whether the second motion mechanism in Nordella is between the upper frame and the lower frame, these are issues that were argued solely as supposedly being novel features.

[00:27:42] Speaker 01:
But to fail to argue any of those features as going to that next threshold and exceeding the obviousness standard,

[00:27:48] Speaker 01:
We think that's problematic.

[00:27:50] Speaker 01:
We think that's why what they briefed to this court is largely waived.

[00:27:54] Speaker 01:
They did not argue that any of those aspects of these claims were in any way inventive.

[00:28:00] Speaker 01:
So in this situation, we don't see any reason to disturb the board's judgment.

[00:28:03] Speaker 01:
If Wonderland didn't separately argue that these features are inventive, to do so for the first time before this court is improper and shouldn't be any basis to revisit what the board has already found.

[00:28:17] Speaker 01:
As to the actual merits of the analogous arc determination, we think there's no question here that Nordella is at least reasonably pertinent to the problem that was faced by the inventor.

[00:28:28] Speaker 01:
If we look at the 609 patent, the board noted that at column one, lines 21 through 22 and following, the 609 patent is saying the problem we're trying to solve is to create motion in two directions.

[00:28:41] Speaker 01:
at the same time, we want forward, backward, we want upward and downward.

[00:28:44] Speaker 01:
So when the board saw that and also considered the Nordella, this was at page A1263 in the record, discloses rolling, quote, forward and backward, as well as quote, upward and downward.

[00:28:55] Speaker 01:
So the structure that the patent owner was specifically looking for to accomplish the motion that it wanted was expressly taught in the motion mechanisms within the Nordella reference.

[00:29:06] Speaker 01:
And with analogous art determinations being a question of fact, there's no reason to disturb

[00:29:10] Speaker 01:
that ruling either.

[00:29:14] Speaker 01:
If the court has no further questions.

[00:29:15] Speaker 04:
Isn't there any focus of attention either by the examiner or the board solely on 103 purposes on caster and modifying caster?

[00:29:26] Speaker 01:
I'm sorry, Your Honor.

[00:29:27] Speaker 04:
I think caster is a child seat, right?

[00:29:30] Speaker 04:
Yes, Your Honor.

[00:29:31] Speaker 04:
And it rocks in three directions, right?

[00:29:33] Speaker 01:
Yes, I believe that's right.

[00:29:35] Speaker 04:
And the mechanism that's being claimed and being claimed even at the baby seat by the patentee is the same art as Castor, right?

[00:29:44] Speaker 01:
Yes, sir.

[00:29:44] Speaker 04:
And it's just got a slightly different kind of motion.

[00:29:48] Speaker 01:
That's right, your honor.

[00:29:49] Speaker 04:
It seemed to me like this is one of those fields like in KSR there aren't very many parameters in how you can make an adjustment so you could tweak Castor in an afternoon.

[00:30:03] Speaker 04:
But that analysis is nowhere in the record.

[00:30:07] Speaker 01:
That particular analysis, I think it is in the record in the sense that if you look at the 609 patent, they actually discuss in the, I believe it's in paragraph, I'm sorry, in column one, they actually talk about what the prior art infant rocking chairs were and they only describe

[00:30:26] Speaker 01:
They describe the rocking chairs could move forward and backward.

[00:30:29] Speaker 01:
That was one way of rocking.

[00:30:30] Speaker 01:
They describe rocking chairs that could go upward and downward.

[00:30:32] Speaker 01:
That was another.

[00:30:33] Speaker 01:
If we look at the caster reference, we see that there's rocking that goes back and forward.

[00:30:38] Speaker 01:
And actually the NAFTE reference, you can see not only goes backward and forward, but there's sort of a pitch tilting mechanism there.

[00:30:45] Speaker 01:
So I agree.

[00:30:46] Speaker 01:
There are only so many degrees of freedom to rock a baby.

[00:30:48] Speaker 01:
And anyone who's raised an infant knows that you're going to try a bunch of those in order to calm a child that's distressed.

[00:30:55] Speaker 01:
I do think it's reflected in the record that there are only a certain number of motions that could be employed in an infant rocking setting.

[00:31:07] Speaker 00:
Okay.

[00:31:07] Speaker 01:
Thank you.

[00:31:22] Speaker 03:
Just a couple of points.

[00:31:24] Speaker 03:
This court in Henry Clay urged that you look specifically at the specific problem addressed by the inventor.

[00:31:38] Speaker 03:
And the MPEP suggests that you look at the specification to identify the problem.

[00:31:47] Speaker 03:
The board did not do that.

[00:31:49] Speaker 03:
The board walked away from what the examiner had done.

[00:31:52] Speaker 03:
which is to identify multiple degrees of freedom in both Nordella and Castor, said nothing about what our invention was or what our specification said.

[00:32:05] Speaker 03:
I think that's a problem.

[00:32:06] Speaker 03:
The board then identifies.

[00:32:10] Speaker 02:
Well, how specific does the problem have to be?

[00:32:13] Speaker 03:
Well, the MPEP recognizes that you can define it a couple of different ways.

[00:32:18] Speaker 03:
And this court's cases say when it's defined

[00:32:23] Speaker 03:
Too broadly, it's a problem.

[00:32:26] Speaker 03:
It opens up everything under the sun to be applied as prior art.

[00:32:31] Speaker 03:
I agree with you, Judge Clevenger.

[00:32:34] Speaker 03:
Castor isn't that different, I mean, as baby soothers go.

[00:32:38] Speaker 03:
But that's not what either the board or the examiner did.

[00:32:42] Speaker 03:
They took the seat off of Castor and put it in place of the Nordella seat.

[00:32:47] Speaker 03:
Or they took the guts of the Nordella device and said, we're going to put that into Castor.

[00:32:53] Speaker 03:
That's what they said.

[00:32:54] Speaker 03:
And I believe that the only way you can identify the problem for purposes of the algosar test is to ignore the preamble and pay no attention to the specification.

[00:33:08] Speaker 03:
And I think that's what they did.

[00:33:10] Speaker 03:
And I think that's the error.

[00:33:11] Speaker 04:
So what do you have to prevail here?

[00:33:12] Speaker 04:
You don't get your patent.

[00:33:13] Speaker 04:
You get to go back, and they have a do-over?

[00:33:16] Speaker 03:
Well, if we did, I think we could show that hydraulics

[00:33:20] Speaker 03:
of Nordella are incapable of doing a rocking motion.

[00:33:26] Speaker 03:
You can't change direction.

[00:33:28] Speaker 03:
I mean, I would have thought the examiners knew that.

[00:33:30] Speaker 04:
You're showing under KSR that one skill in the art wouldn't understand that this is a mechanical field and there are a finite number of solutions to the problem and it takes not very long to come up with them?

[00:33:42] Speaker 03:
That can be said about any mechanical invention.

[00:33:47] Speaker 03:
You can say,

[00:33:48] Speaker 03:
there's a finite number of ways to do everything.

[00:33:50] Speaker 03:
There always is.

[00:33:51] Speaker 03:
I mean, every patent that's granted is made up of bits and pieces of the prior art.

[00:33:56] Speaker 04:
We wrote the ones that said it.

[00:33:57] Speaker 03:
Yeah.

[00:33:57] Speaker 03:
So, I mean, I don't think that that really gets anywhere because the... Well, it's been getting people lots of places.

[00:34:05] Speaker 03:
Well, it's gotten me in a pickle here.

[00:34:08] Speaker 03:
But I believe that the test that you have to do identifying the problem, you look at the specification.

[00:34:18] Speaker 03:
You look at the claim as fully construed.

[00:34:20] Speaker 03:
And Judge Fisher construed this preamble and had no hesitation.

[00:34:24] Speaker 03:
She looked at it.

[00:34:25] Speaker 03:
She listened to complete oral argument on Markman.

[00:34:30] Speaker 03:
And I don't think that the determination of whether the preamble is limiting is subject to the broadest reasonable standard.

[00:34:37] Speaker 03:
Maybe I'm wrong about that.

[00:34:38] Speaker 03:
But I think once it's in as a limitation, then it gets broadest reasonable treatment.

[00:34:44] Speaker 03:
But I don't think the determination of whether the preamble is limiting

[00:34:47] Speaker 03:
is subject to the broadest reasonable standard.

[00:34:50] Speaker 03:
And Judge Fisher called it as she saw it.

[00:34:52] Speaker 03:
She's an experienced judge.

[00:34:54] Speaker 03:
She said, these preambles breathe life and meaning, and especially Claim 19, it meets all of this court's requirements for a preamble to be limiting.

[00:35:04] Speaker 03:
And I believe that the preamble led, this board's ignoring the preamble and ignoring the specification too, led to this identification of,

[00:35:17] Speaker 03:
essentially the only common denominator.

[00:35:20] Speaker 03:
I mean, I don't think you can identify the problem by simply saying what a piece of prior art has in common with the invention.

[00:35:29] Speaker 03:
That's what they did here.

[00:35:30] Speaker 03:
They simply have said, we see a common denominator here, moving chairs.

[00:35:36] Speaker 03:
Well, that ignores rocking.

[00:35:38] Speaker 03:
I mean, I don't think Nordella could rock.

[00:35:40] Speaker 03:
A hydraulic system can't change immediately the way you'd have to get

[00:35:46] Speaker 03:
to get a smooth motion.

[00:35:48] Speaker 03:
And my deposit counsel pointed out, well, we don't have curved motion in the claim.

[00:35:55] Speaker 03:
We do.

[00:35:56] Speaker 03:
We put it into claim 21 expressly to try and obviate some of the applicability, if you will, of Nordella.

[00:36:06] Speaker 03:
We tried to put it in, and we put it in claim 21.

[00:36:09] Speaker 03:
So it's adapted to engage in curved motion.

[00:36:12] Speaker 03:
So I don't know that,

[00:36:16] Speaker 03:
I think that the preamble is the nub of it, and that's a de novo issue on clean construction.

[00:36:27] Speaker 03:
That led to the erroneous application of the second VGO test, and that's where Nordella came in as analogous art, and I don't think it should have.

[00:36:37] Speaker 02:
All right, thank you.

[00:36:39] Speaker 02:
The cases will all be submitted.