[00:00:00] Speaker 02:
Our next case is Wright Manufacturing versus the Toro Company.

[00:00:41] Speaker 02:
Mr. Rhodes, is that correct?

[00:00:43] Speaker 01:
Yes, your honor.

[00:00:44] Speaker 01:
All right.

[00:00:44] Speaker 02:
You got five minutes for rebuttal?

[00:00:46] Speaker 01:
Yes, your honor.

[00:00:47] Speaker 01:
May I please the court?

[00:00:48] Speaker 01:
You may proceed.

[00:00:50] Speaker 01:
When we perform an obviousness analysis, it's not simply a matter of trying to figure out whether each of the elements is somewhere in the prior.

[00:01:02] Speaker 01:
There's got to be some reason to combine them.

[00:01:06] Speaker 01:
They actually have to work in the proposed combination.

[00:01:10] Speaker 01:
You can't have art that teaches a way.

[00:01:12] Speaker 01:
You have to look at these issues when you're determining whether something is obvious or not.

[00:01:17] Speaker 01:
You have to take a look at whether, well, would this alleged combination, would it work?

[00:01:23] Speaker 01:
Would one of these key components that I had to get in here?

[00:01:27] Speaker 04:
Does your theory combine two pieces of prior art that every element in one has to work in every element of two?

[00:01:34] Speaker 04:
Or is it just that you can look to the second piece of prior art and say,

[00:01:39] Speaker 04:
here are some good things that it's obvious to use in this piece.

[00:01:42] Speaker 04:
Some of them we won't use.

[00:01:45] Speaker 01:
In this particular case, the rejection and what the PTAB affirmed was taking Busboom's HOC system, which I think was like five elements, and said it would have been obvious to put that in the base references modified by Cox or Musgrave.

[00:02:05] Speaker 01:
Those five elements, including the most important one, the control arm,

[00:02:09] Speaker 01:
Those five elements pretty much need to be able to work and be operative in there.

[00:02:13] Speaker 01:
The control arm, especially, because that's a key element in the claim.

[00:02:19] Speaker 01:
Here, it is important whether elements would work in the proposed combination, especially a key element in the claim.

[00:02:28] Speaker 01:
It's important whether there's a reason to make the combination.

[00:02:32] Speaker 01:
It's important whether a particular element performs its intended art-recognized function in the combination.

[00:02:39] Speaker 01:
The PTAB didn't do all these things.

[00:02:43] Speaker 02:
So the prior arc here, the way I read this, is the Wright 138 patent and the Velke 031 patent, which were both Wright inventions or Wright patents.

[00:02:56] Speaker 02:
So that's something that Mr. Wright had in his possession.

[00:03:03] Speaker 02:
And then to use the height adjustment, the HOC height adjustment of the bush booms.

[00:03:09] Speaker 02:
the 03 pen, the 033 pen.

[00:03:13] Speaker 02:
It seems to me that making that combination is not too big of a leap.

[00:03:19] Speaker 01:
Well, all three of those references were discussed in the background section of the specification of our Pat.

[00:03:26] Speaker 01:
And it's not just that combination.

[00:03:29] Speaker 01:
That's what Torjo is saying.

[00:03:32] Speaker 01:
Oh, it's just that combination.

[00:03:33] Speaker 01:
That's not true.

[00:03:35] Speaker 01:
What happens here is there are six references that were used in this combination.

[00:03:40] Speaker 01:
Not two, six.

[00:03:42] Speaker 01:
Six-way 103 we're dealing with here.

[00:03:45] Speaker 01:
So what happens?

[00:03:46] Speaker 01:
The examiner and the board, you have a base reference.

[00:03:48] Speaker 01:
Let's take Belki 031 or Wright 138, doesn't matter.

[00:03:51] Speaker 01:
You have a base reference.

[00:03:53] Speaker 01:
The claim requires that you have a specific, very unusual type of deck lift system.

[00:04:01] Speaker 01:
And that's a deck lift system where the cutter deck

[00:04:04] Speaker 01:
The engine deck and the engine all go up and down together as a unit.

[00:04:08] Speaker 01:
That's a very unusual deck lift system.

[00:04:11] Speaker 01:
At the time of this invention, the usual deck lift systems didn't do that.

[00:04:17] Speaker 01:
The typical deck lift systems were like in Bus Boom where the engine and the engine deck were stationary and the cutter deck would move up and down.

[00:04:27] Speaker 01:
That was the typical deck lift system.

[00:04:30] Speaker 01:
So the claim requires a very unusual specific type of deck lift system.

[00:04:36] Speaker 01:
Cutter deck, engine deck, and engine all move up and down together as a unit.

[00:04:40] Speaker 01:
The base references don't have that.

[00:04:42] Speaker 01:
So the first thing the examiner in the board has to do.

[00:04:45] Speaker 02:
So why isn't adding the HOC adjustment of the 033 pattern with the right 138 and the bell key 031 pattern, why wouldn't that achieve what you're saying?

[00:04:57] Speaker 02:
the deck, the cutter deck and the engine moving up and down at the same time.

[00:05:03] Speaker 01:
Because in the bus boom reference, the engine deck and the engine are stationary and there are, the mower deck moves up and down and it's dangling loosely by change.

[00:05:18] Speaker 01:
It swings all over the place.

[00:05:20] Speaker 01:
If you take the HOC system.

[00:05:23] Speaker 02:
But why can't you just get the bolts that are holding the chains and move the

[00:05:27] Speaker 02:
the cutter deck up and just bolt that on and you're good to go.

[00:05:34] Speaker 01:
If you took that system and put it in the right 3A, there'd be nothing to hang the mower deck from.

[00:05:42] Speaker 01:
You have to have something to suspend the chains from.

[00:05:48] Speaker 01:
In Busboom, Busboom has stationary engine deck stationary engine.

[00:05:53] Speaker 01:
It's hanging the mower deck below that with the chains.

[00:05:56] Speaker 01:
And that's why you need the control arm, because the mower deck is hung loosely down there with these chains.

[00:06:05] Speaker 01:
In right, there's no lift system.

[00:06:09] Speaker 01:
There's no way to lift anything up and down relative to one another.

[00:06:13] Speaker 01:
If you're going to take the HOC system from Busboom and put it right, you're going to do what Busboom did, which is use that lever to lift the cutter deck relative to the engine and the engine deck.

[00:06:25] Speaker 01:
That's what Busboom did.

[00:06:26] Speaker 01:
If you're going to do a combination, that's what you're going to do.

[00:06:29] Speaker 01:
The examiner and the board recognized you can't just do that.

[00:06:32] Speaker 01:
You need some teaching that gives you this.

[00:06:37] Speaker 01:
You have to lift them all up and down together at one time.

[00:06:40] Speaker 01:
The engine deck, the engine, and the cutter deck.

[00:06:42] Speaker 01:
That's why they cited Cox and Musgrave.

[00:06:45] Speaker 01:
That's why the examiner did.

[00:06:46] Speaker 01:
That's why the board did.

[00:06:47] Speaker 01:
They had to.

[00:06:49] Speaker 01:
So they take the base reference, say, it would have been obvious to move all three up and down together.

[00:06:55] Speaker 01:
like in Cox and Musgrave.

[00:06:57] Speaker 01:
Again, that's an unusual feature.

[00:06:59] Speaker 01:
And then they had to say, well, let's take the HOC system from Busboom and put it in there.

[00:07:08] Speaker 01:
Well, the problem is the HOC system of Busboom won't work.

[00:07:14] Speaker 01:
It will perform no function at all if you put it in the system of the base reference modified by Cox or Musgrave.

[00:07:23] Speaker 01:
Because in Cox and Musgrave,

[00:07:25] Speaker 01:
the whole system that enables the three to move up and down together as a unit, affixes the cutter deck to the frame and the engine deck.

[00:07:37] Speaker 01:
There's nothing to stabilize.

[00:07:39] Speaker 01:
There's nothing hanging loosely to stabilize.

[00:07:42] Speaker 01:
There's nothing that needs stabilization.

[00:07:44] Speaker 01:
To put a control arm between two rigidly attached pieces makes no sense.

[00:07:51] Speaker 01:
There's nothing to stabilize.

[00:07:52] Speaker 01:
That control arm would serve absolutely no function at all in the alleged combination.

[00:08:00] Speaker 01:
We argued this till we were blue in the face below, and the board didn't address or explain what function that could possibly perform in this alleged combination.

[00:08:11] Speaker 01:
So there's error simply because there are two levels of error here.

[00:08:18] Speaker 01:
One level of error is

[00:08:20] Speaker 01:
the invention would not have been obvious because you wouldn't add something into a proposed combination where it would serve no purpose, it would perform no function, it wouldn't be operable.

[00:08:32] Speaker 03:
Your point Mr. Rowe is that the control arm of Busboom wouldn't work in the combination you've described right with Cox and Musgrave added on because of the fact that the whole

[00:08:48] Speaker 03:
unit would move up and down, you wouldn't have changed.

[00:08:50] Speaker 03:
Is that the point?

[00:08:52] Speaker 01:
In both, if you modify the base reference so that all three move up and down together, as in Cox or Musgrave, which is what the rejection is, then there's no uncontrolled movement of the mower deck.

[00:09:08] Speaker 03:
Because you don't have to change suspending the cutting piece.

[00:09:11] Speaker 01:
Right.

[00:09:11] Speaker 01:
There's nothing loosely dangling there.

[00:09:13] Speaker 01:
They're connected by bolts.

[00:09:16] Speaker 01:
In Cox,

[00:09:18] Speaker 01:
The deck that goes up and down is affixed to the rear axle.

[00:09:23] Speaker 01:
It's impossible for it to move forward or rearward.

[00:09:26] Speaker 01:
There's absolutely no reason why you would ever put a control arm in there to control that movement where such movement is impossible.

[00:09:34] Speaker 01:
In Musgrave, it's got bolts in the slots that we have in the pictures in the brief.

[00:09:41] Speaker 01:
Those bolts in those slots specifically address that movement.

[00:09:48] Speaker 01:
The control arm wouldn't do anything.

[00:09:50] Speaker 01:
It's impossible for the control arm to perform any function if you put it in either of those alleged modifications.

[00:10:00] Speaker 01:
First level of error here is the invention would not have been obvious because there's simply no reason to do it for the reasons we discussed.

[00:10:08] Speaker 02:
You seem to be arguing that a personal skill in the art is limited in how they view

[00:10:15] Speaker 02:
the prior art, that you must have a perfect fit.

[00:10:19] Speaker 02:
You know, get A, B, and C, and you perfectly end up with D. And it seems to me you're skipping that a person with skill in the art is permitted to combine and add elements that are practical in order to make things fit.

[00:10:35] Speaker 01:
There's no question, Your Honor, that a person of skill in the art doesn't have his or her hand in time.

[00:10:41] Speaker 02:
So why wouldn't a person with skill in the art take Bush Boom,

[00:10:45] Speaker 02:
and combine it with Wright and Belki and simply add a structure for which to hang the HOC adjustment mechanism?

[00:10:56] Speaker 01:
That's not what the rejection is.

[00:10:57] Speaker 01:
The rejection is you modify the base reference, as in Cox or Musgrave, to get all three to move up together, up and down together.

[00:11:04] Speaker 01:
And then you put Busboom's HOC system in there.

[00:11:07] Speaker 01:
That's what we dealt with below.

[00:11:09] Speaker 01:
That was the rejection.

[00:11:11] Speaker 01:
I think there were proposed rejections

[00:11:13] Speaker 01:
of right, just in view of Busboom, the examiner did not adopt them.

[00:11:17] Speaker 01:
The PTO did not use those rejections.

[00:11:20] Speaker 01:
I think that was in the original re-exam request.

[00:11:25] Speaker 01:
And the other error here, Your Honor, is the PTAB could not have conducted a proper and obviousness analysis without dealing with these issues that we raised.

[00:11:37] Speaker 01:
I believe I'm in my rebuttal time.

[00:11:39] Speaker 02:
Yes, you've got nine seconds, but I think you're good.

[00:11:43] Speaker 00:
I'd like to start by responding to the first question that Judge Hughes raised.

[00:12:03] Speaker 00:
The test is well settled.

[00:12:04] Speaker 00:
The test is not whether the features of a secondary reference must be bodily incorporated into the first reference.

[00:12:09] Speaker 00:
That was, as one example, the Keller case we cited in our brief.

[00:12:13] Speaker 00:
And the references do not have to be combinable without change.

[00:12:15] Speaker 00:
That's, again, the Snead case we decided.

[00:12:18] Speaker 00:
And indeed, the number of references is irrelevant.

[00:12:20] Speaker 00:
Again, those are the Gorman and Kansas Jack cases we cited.

[00:12:23] Speaker 00:
What the court looks at, and what I think the panel has already recognized, is what would a person of ordinary skill in the art know?

[00:12:29] Speaker 00:
And here, the examiner and the board were correct that the re-examined patents ensued were obvious in view of rights-owned... Counselor, before you go further in, I want you to come back to that point.

[00:12:41] Speaker 02:
You raise an argument of jurisdiction.

[00:12:44] Speaker 02:
Are you rejecting that at this point?

[00:12:46] Speaker 00:
No, we think there is a potential jurisdictional defect in this case.

[00:12:50] Speaker 04:
What's the basis for that?

[00:12:51] Speaker 04:
I mean, I looked into that, and the type of appeal for the board decision seems very unusual to me in that it seems to give the director the power to control with the floor of when the appeal can be filed and how it can be filed.

[00:13:10] Speaker ?:
Yes.

[00:13:11] Speaker 00:
In normal, I'm going to call them normal, probably what we've seen more traditionally, civil appeals, federal appellate procedure four, controlled 60 days, filed in the district court.

[00:13:23] Speaker 00:
For appeals from agency decisions, you have federal appellate procedure 15, or for PTO decisions, federal circuit rule 15.

[00:13:33] Speaker 00:
And they basically say, do what the director says to do.

[00:13:36] Speaker 00:
They don't give a time limit.

[00:13:37] Speaker 04:
That rule doesn't come from, I mean, that's not

[00:13:41] Speaker 04:
The FRAP isn't the rule that provides for the right of appeal, it's the statute.

[00:13:46] Speaker 00:
Exactly, exactly.

[00:13:47] Speaker 04:
But when you're looking at... But the statute gives the director fairly broad discretion.

[00:13:53] Speaker 04:
I mean, just to cut to the chase, it seems to me you're arguing that they didn't comply with the regulations that the director promulgated, but the director wasn't required to promulgate those regulations.

[00:14:04] Speaker 04:
I mean, in that certain aspect.

[00:14:06] Speaker 04:
And so all that really matters for the director is

[00:14:09] Speaker 04:
that it thinks it got the appeal in a timely fashion, isn't it?

[00:14:13] Speaker 00:
I would agree with you that the director didn't have to promulgate the regulations, but once it did, those are the rules that need to be followed.

[00:14:18] Speaker 04:
And so what happened here is... But there's all kinds of provisions in the regulations that allow the director to waive the time limit for good cause and the like.

[00:14:27] Speaker 04:
So at the end of the day, if the director thought this appeal is timely filed,

[00:14:32] Speaker 00:
under the package which seems like a very unique it seems like you give the director of the authority to make that call so i don't know why we would ever second-guess that sure and and i think that all very good point the concern of course is if the rules say and i think he'll have to be filed in sixty-three days which is what the cfr said and someone filed it in eighty days and the director said whatever that that's a jurisdictional defect that occurred in this court not necessarily i mean the regulations say the director can say there's good cause for

[00:15:02] Speaker 04:
for allowing this late filing, and then we'd be done, right?

[00:15:06] Speaker 00:
That's a good point.

[00:15:07] Speaker 02:
If the director had said... Well, what about as in this situation where the PTO confirmed that Wright's notices were properly filed?

[00:15:15] Speaker 00:
Sure.

[00:15:15] Speaker 00:
Well, we know what happened in that case.

[00:15:17] Speaker 00:
We know that Wright did file electronically in the PTO ESS.

[00:15:21] Speaker 02:
We know that there were... The point is that the PTO has acknowledged that the procedures were followed, and there's jurisdiction here as far as the PTO is concerned.

[00:15:32] Speaker 02:
timely filing before this court, that happens.

[00:15:35] Speaker 02:
And you still raise the appeal in your red brief.

[00:15:38] Speaker 02:
And it's a little bit troubling to get it at that point and to have it on the basis that you make it.

[00:15:47] Speaker 02:
I mean, you want to supply an argument that's not accepted by the PTO, and it's contrary to our own filing requirements.

[00:15:56] Speaker 00:
So we actually raise it in a motion.

[00:15:59] Speaker 00:
right away.

[00:16:00] Speaker 00:
We knew there was a potential jurisdictional defect.

[00:16:02] Speaker 02:
And we reserved it until this panel was completed.

[00:16:05] Speaker 00:
That's right.

[00:16:05] Speaker 02:
All right.

[00:16:05] Speaker 02:
Why don't you get back to the merits then.

[00:16:07] Speaker 00:
OK.

[00:16:07] Speaker 00:
Well, thank you, Your Honor.

[00:16:09] Speaker 00:
Yeah.

[00:16:09] Speaker 00:
So the board and the examiner in this case properly found that the re-examined patents in Sioux were obvious based on the Wright's own mower patents to Velke or Wright in combination with the height of cut adjustment mechanism in Busboom.

[00:16:24] Speaker 00:
And the reality here is that Wright doesn't really challenge the

[00:16:29] Speaker 00:
board or examiner's factual findings regarding the scope and content of the prior art or offer any secondary considerations.

[00:16:34] Speaker 00:
Instead, Wright's appeal here is a very narrow one based on a purposeful misapprehension of the actual rejection.

[00:16:44] Speaker 00:
Keep in mind, the examiner and the board did not find that the combination was obvious because of that control arm alone.

[00:16:51] Speaker 00:
What the examiner found and the board affirmed was that the combination of that entire height of cut adjustment mechanism in Busboom

[00:16:57] Speaker 00:
would have been obvious when you put it in those standing mowers.

[00:17:01] Speaker 03:
What's your response to Mr. Rowe's argument that the bus boom control arm would not work when you add on to the right base, if you will, the attachment of the motor and the cutting platform together?

[00:17:22] Speaker 00:
Sure.

[00:17:25] Speaker 00:
That's a suggestion that the control arm alone is a disembodied separate from the rest of the height of cut adjustment mechanism.

[00:17:32] Speaker 00:
But as the examiner said and the board affirmed, the height of cut adjustment mechanism includes chains.

[00:17:37] Speaker 00:
So when you would take the entire height of cut adjustment mechanism, that concept, chains, control arm, the, I forget what they're called, the things that move it.

[00:17:49] Speaker 00:
I'm having a moment where I'm blanking on it.

[00:17:55] Speaker 00:
the belt cranks, the deck suspension chains, the springs, the adjustment handle, the height control pin, you'd move all of that over.

[00:18:03] Speaker 00:
And then you would have uncontrolled movement because you have chains.

[00:18:08] Speaker 00:
And then you would have a control arm.

[00:18:09] Speaker 00:
So the suggestion that the control arm would serve no purpose is if you didn't have the entire height of cut adjustment mechanism, which is not an accurate depiction of what actually occurred below.

[00:18:26] Speaker 00:
Right's challenge to the board's obviousness determination is based on a straw man.

[00:18:30] Speaker 00:
When the actual record is reviewed, you can see that the board and the examiner were correct.

[00:18:35] Speaker 00:
Their findings were not only supported by substantial evidence, but are absolutely correct.

[00:18:39] Speaker 00:
And we think this court should affirm the obviousness determination.

[00:18:42] Speaker 00:
Are there any further questions?

[00:18:44] Speaker 02:
No, that's fine.

[00:18:45] Speaker 02:
Thank you.

[00:18:51] Speaker 02:
Mr. O'Reilly, you have five minutes.

[00:18:59] Speaker 01:
Your honor asked earlier, what about this combination of just Wright with Busboom and not worrying about Cox and Hale?

[00:19:08] Speaker 01:
And if you look at A143, Toro, that was their first grounds proposed for re-examination at A143.

[00:19:21] Speaker 01:
It was Wright 138 in view of Busboom.

[00:19:24] Speaker 01:
In adding the hail references to change the length of the control arm, the examiner did not adopt that proposed projection.

[00:19:33] Speaker 02:
How about Belki?

[00:19:36] Speaker 02:
That's what I was talking about.

[00:19:42] Speaker 03:
Belki's that one where you can raise and lower, but it's very cumbersome to do so.

[00:19:48] Speaker 01:
Belki's the one where the engine deck is bolted to the cutter deck and there's no frame.

[00:19:53] Speaker 01:
So there's actually, it would be pretty much impossible to combine bus boom with Velki, because in Velki, it's required that the cutter deck be bolted to the engine deck.

[00:20:04] Speaker 01:
There is no separate frame.

[00:20:06] Speaker 01:
The engine deck functions as the frame.

[00:20:08] Speaker 02:
Why wouldn't a Placido say, look, all I need to do here is just add a frame or a brace and bolt this on?

[00:20:17] Speaker 01:
Add a frame?

[00:20:18] Speaker 01:
Yes.

[00:20:20] Speaker 01:
Velkie 031 says that the engine deck is the frame.

[00:20:23] Speaker 01:
Velkie already has a frame.

[00:20:24] Speaker 01:
You wouldn't add a frame to Velkie.

[00:20:26] Speaker 02:
You're saying that you can't move a bus boom up because there's nothing there to connect it to.

[00:20:33] Speaker 01:
I'm saying in Velkie 031, Your Honor, there already is a frame.

[00:20:37] Speaker 01:
It's called a tractor frame.

[00:20:38] Speaker 01:
It's part of the engine deck structure.

[00:20:40] Speaker 01:
You would not add another, there's no reason to add yet another frame to Velkie 031.

[00:20:47] Speaker 02:
What can't you then connect the height adjustment to that frame?

[00:20:53] Speaker 01:
Because in Busboom, the height adjustment takes a frame and an engine deck and an engine and then lifts the mower deck relative to them.

[00:21:03] Speaker 01:
There's chains that loosely dangle the engine deck.

[00:21:07] Speaker 01:
You have the springs, the chains, the control arm.

[00:21:11] Speaker 01:
None of them would work when in the base reference felki there's a rigid

[00:21:15] Speaker 01:
bolted connection between the frame, engine deck, and cutter deck.

[00:21:21] Speaker 01:
There's no possible movement between any of those things.

[00:21:26] Speaker 01:
The wheels in Velke are connected to the engine deck.

[00:21:31] Speaker 01:
You cannot simply add a frame over that and lift everything up and down because the wheels would be moving up and down if it wouldn't work.

[00:21:42] Speaker 01:
That's all I have, Your Honor.

[00:21:43] Speaker 02:
Okay, thank you very much.