[00:00:04] Speaker 01:
Mr. Cushing, is there something you thought you needed to tell us?

[00:00:07] Speaker 00:
We just realized that the 2 to 10 hours in the figure that he just pointed to, I had to do this correctly.

[00:00:14] Speaker 01:
If you need to provide a supplemental statement in writing to which we can have a response, we will receive it.

[00:00:23] Speaker 02:
Thank you.

[00:01:22] Speaker 01:
The next argued case is number 161182, Henry Shore.

[00:01:27] Speaker 01:
Mr. Simmons.

[00:01:28] Speaker 00:
Good morning, Your Honor.

[00:01:29] Speaker 00:
May it please the court.

[00:01:31] Speaker 00:
I am John Simmons, and I represent the patent applicants, Michael Shore and Stuart Dwork.

[00:01:38] Speaker 00:
One of the main issues is, throughout this prosecution, the oversimplification of our claim versus the bolstering of the prior references.

[00:01:47] Speaker 00:
None of the prior references, taken alone or in combination,

[00:01:51] Speaker 00:
cited by the United States Patent and Trademark Office include the following element.

[00:01:55] Speaker 00:
And this is the element that gets boiled down by all the Patent Office.

[00:02:00] Speaker 00:
A written instrument associating ownership rights in a portion of the power received from the alternative energy power generator with ownership of at least one of the real estate properties.

[00:02:12] Speaker 00:
That claims it A549 in the Joint Appendix.

[00:02:17] Speaker 00:
The examiner, the board, and now the director

[00:02:20] Speaker 00:
have all oversimplified this claim element, ignoring words of the claim in order to apply the prior references.

[00:02:26] Speaker 00:
In other words, they're picking words out in isolation instead of reading the claim as a whole.

[00:02:31] Speaker 00:
For example, the examiner's office action at 694 states, although Rassler does not expressly show a written instrument associating partial ownership rights in the received power, however, Trico shows the real estate property owners who are members of the utility cooperative

[00:02:47] Speaker 00:
and are no written agreements where they would own the power generated by the cooperative as well as its assets.

[00:02:53] Speaker 03:
How can printed matter, a written instrument, create non-obviousness when the other components are well known?

[00:03:04] Speaker 00:
OK, so that's part of the second argument I have, but I'll jump to that to place the court.

[00:03:11] Speaker 00:
In this alternative argument,

[00:03:13] Speaker 00:
So the board and the director have both raised that for the first time.

[00:03:17] Speaker 00:
That wasn't raised by the examiner in seven years of prosecution.

[00:03:20] Speaker 00:
When they raise this issue, they rely on the conclusion that in no way does the written instrument depend on the generator, the distribution station, or the residential properties.

[00:03:31] Speaker 00:
And these elements do not rely on the written instrument.

[00:03:34] Speaker 00:
So the printed limitation, limitation should not be afforded a patent will wait.

[00:03:38] Speaker 00:
But this court is held in Gulaq.

[00:03:40] Speaker 00:
which is also cited in the case relied upon, King Pharma, by the director.

[00:03:44] Speaker 00:
Under section 103, the board cannot dissect the claim, excise the printed matter from it, and declare the remaining portion of the mutilated claim to be unpatentable.

[00:03:53] Speaker 03:
The claim must be read as a whole.

[00:03:54] Speaker 03:
You're emphasizing the patentable importance of the printed matter.

[00:04:00] Speaker 00:
But it's the actual tying of the ownership rights in the power generated by the alternative energy source with the ownership rights in the property.

[00:04:08] Speaker 00:
which is different than the prior art.

[00:04:11] Speaker 00:
In the cases where they found that the printed matter had no patentable weight, they acknowledged that everything else was already known and obvious.

[00:04:22] Speaker 00:
In this case, none of the prior references show tying of the power generated by an alternative power generator with the ownership rights in the property.

[00:04:31] Speaker 00:
So the two go hand in hand.

[00:04:32] Speaker 03:
That's a pretty trivial difference, isn't it?

[00:04:34] Speaker 03:
Tying it to the property versus tying it to the owner of the property?

[00:04:40] Speaker 00:
Well, it's not a trivial difference in this way, Your Honor, is that when the property conveys, the ownership rights in this alternative power generator go with the ownership rights in the property as compared to simply signing up for power from PEPCO or Virginia Power and Electric.

[00:04:55] Speaker 00:
So in this case, different than the King Pharma case.

[00:04:59] Speaker 00:
In the King Pharma case, all they said in the printed matter, which were instructions,

[00:05:03] Speaker 00:
Look, just take this with food, and it's going to make it more bioreactive.

[00:05:08] Speaker 00:
In this case, we're not saying something that was already known 30 years ago.

[00:05:12] Speaker 00:
We're saying we're tying ownership rights in this alternative energy power generation with the property itself.

[00:05:18] Speaker 00:
So that if you have, say, a subdivision with 10 houses, the power generator as part of the subdivision is tied to the properties.

[00:05:26] Speaker 00:
So that's why it's different than the instructions in King Pharma, for example.

[00:05:29] Speaker 00:
And that's why we believe it's nontrivial.

[00:05:33] Speaker 00:
Can I continue?

[00:05:34] Speaker 02:
The question, if you're trying to decide whether or not the printed matter gets patentable weight, yes or no, is that a fact question?

[00:05:46] Speaker 00:
I think it is.

[00:05:47] Speaker 00:
It probably makes the question a fact in law, but I'm not positive because I'm not sure that the case is up.

[00:05:52] Speaker 02:
It's sort of important because we have a standard review here.

[00:05:55] Speaker 00:
Right.

[00:05:55] Speaker 00:
So in the case in Gulak, I believe that the court was the one that found that it could be,

[00:06:03] Speaker 00:
important to the claim, so I think it's more of a matter of law.

[00:06:07] Speaker 00:
But I don't know the precise answer, because Gulak, King Pharma, and Nagai, which are the three main cases cited, none of them actually discuss that particular issue to my knowledge.

[00:06:19] Speaker 02:
It's an important point, because if it were a fact question, we'd be reviewing it for substantial evidence coming from the PTO.

[00:06:29] Speaker 00:
Right.

[00:06:30] Speaker 00:
And as the PTO never addressed it in the underlying case, prior to the board, there was no... Are you arguing that that's a procedural flaw that's reversible?

[00:06:39] Speaker 00:
Not that the examiner didn't raise this issue, but... It was raised at the board level, not the examiner level.

[00:06:47] Speaker 00:
So there was never any finding of fact by the examiner.

[00:06:51] Speaker 00:
So I would have to say that they're making it a matter of law.

[00:06:55] Speaker 03:
Well, it wasn't waived by the PTO because we're reviewing a board decision, right?

[00:07:01] Speaker 00:
Correct.

[00:07:02] Speaker 00:
We didn't argue that.

[00:07:07] Speaker 00:
So moving on.

[00:07:08] Speaker 03:
So the fact that it wasn't raised below is irrelevant.

[00:07:12] Speaker 00:
It was.

[00:07:14] Speaker 00:
I'm sorry.

[00:07:14] Speaker 00:
Can you say it?

[00:07:14] Speaker 03:
If it wasn't raised at the examiner level, that's irrelevant.

[00:07:18] Speaker 00:
Right.

[00:07:18] Speaker 00:
Because at the board level, they didn't do any finding of fact.

[00:07:21] Speaker 00:
They just reviewed the examiner's documents.

[00:07:26] Speaker 00:
So back with respect to the prior references, again, because we believe that the written instrument limitation should be given patentable weight because it does, in fact, tie the ownership of the real estate property with the alternative power generator and the portion of power being generated, which is new and non-obvious, not shown in the prior references.

[00:07:52] Speaker 00:
Going back to the prior references, the examiner relied on Rassler

[00:07:56] Speaker 00:
And RASLR is, if you refer to pages A763 and 764, it's a fairly enabled one and a half page article about a pilot program for alternative power generation through a fuel cell.

[00:08:10] Speaker 02:
The fact that it may pass written muster under the written description issue doesn't necessarily mean that it's new and non-obvious in patentability terms.

[00:08:19] Speaker 02:
Right, but what the- You just suggested that a moment ago.

[00:08:22] Speaker 00:
Well, I'm suggesting it because of this reason, Your Honor.

[00:08:24] Speaker 00:
Because what the examiner relied on, what the board relied on, and what the directors adopted, is that Rassler shows that there's ownership of these alternative power sources.

[00:08:34] Speaker 00:
And in fact, when you read the reference.

[00:08:36] Speaker 02:
The board said that conventional contract terms between suppliers of electricity and purchasers meet this limitation.

[00:08:45] Speaker 00:
Because a conventional contract between a supplier like PEPCO, a power company, and a customer does not convey ownership.

[00:08:53] Speaker 00:
The power company could cancel the power rights at any time.

[00:08:56] Speaker 00:
You're paying for a service.

[00:08:57] Speaker 00:
You don't actually own that right.

[00:08:59] Speaker 00:
And that's what we're saying.

[00:09:00] Speaker 02:
It really depends on the terms of the contract.

[00:09:03] Speaker 00:
Well, the terms of a conventional contract are what distinguished in the specification of this application.

[00:09:08] Speaker 00:
So what the point of this application is that there's actually ownership rights in the power, in the power source, in the power being generated from the power source with the property ownership so that it conveys with the property.

[00:09:20] Speaker 00:
And that's supported in the specification as outlined in our opening brief at pages 18 and 19.

[00:09:32] Speaker 00:
It shows all the specification support for that concept.

[00:09:35] Speaker 00:
And the actual article by Rassler does not mention who owns the pilot plants.

[00:09:43] Speaker 00:
The pilot plants actually says the furnacized units, which can produce three to seven kilowatts of electricity,

[00:09:50] Speaker 00:
could become a practical reality within about two years.

[00:09:53] Speaker 00:
And this is by the author, Dan Rassler, of a third party.

[00:09:56] Speaker 00:
So we don't know from this article whether the co-op owns the power generator, whether the property owner owns the power generator, or more likely, based on this article, that a third party was piloted.

[00:10:08] Speaker 02:
Do you know what ownership means?

[00:10:11] Speaker 02:
Yes, of what?

[00:10:13] Speaker 00:
As ownership is right in light of the specification.

[00:10:16] Speaker 02:
But the way I read the board was saying ownership has very, very broad concept.

[00:10:21] Speaker 02:
And ownership that purchases the user of the electric power has an ownership interest when the utility promises to give you the power.

[00:10:30] Speaker 00:
And we dispute that.

[00:10:32] Speaker 02:
I understand that.

[00:10:33] Speaker 02:
But again, you're coming down to a standard of review.

[00:10:37] Speaker 00:
Right.

[00:10:37] Speaker 00:
And so in the brief, we outline the fact that even

[00:10:42] Speaker 00:
has brought us interpretation, the claim elements must be read in light of the specification.

[00:10:47] Speaker 00:
And in the specification, that actually is criticized.

[00:10:50] Speaker 00:
So the fact that the contractual relationship between a power supplier, like a PEPCO or another utility, is criticized in the specification as not being a good thing.

[00:11:01] Speaker 00:
We want the power to be conveyed with the property ownership.

[00:11:07] Speaker 00:
And that's what's suggested in the specification.

[00:11:08] Speaker 00:
And the claim element should be read in light of the specification.

[00:11:12] Speaker 00:
even given its broadest possible interpretation.

[00:11:15] Speaker 00:
And we've argued that throughout the last seven years of prosecution consistently.

[00:11:19] Speaker 01:
So to try and focus the argument then, it is that the unobvious element is that the power is conveyed with the property, however we get there, whatever written instruments or whatever.

[00:11:30] Speaker 00:
That's correct, Your Honor.

[00:11:32] Speaker 00:
And that's been consistently argued throughout the entire seven years of prosecution.

[00:11:38] Speaker 00:
Then with respect to how they say that

[00:11:40] Speaker 00:
The examiner acknowledges that the Rassler one and a half page article does not.

[00:11:47] Speaker 00:
And the examiner's answer at A532 states, however, since no written agreement is expressly shown by Rassler, which none is, the cooperative agreement of Trico is only used to show a written agreement.

[00:12:01] Speaker 00:
And then at A533, however, Trico shows that the real estate property owners who are members of utility cooperatives

[00:12:08] Speaker 00:
enter into written agreements where they would own the power generated by the cooperative as well as its assets.

[00:12:14] Speaker 00:
TRECO does not say that.

[00:12:16] Speaker 00:
In fact, the examiner at the office action at A694 and A617 and the board at A5 rely on TRECO paragraph 213G.

[00:12:27] Speaker 00:
And if I could refer you in the joint appendix to page A737, this is all that 213G says.

[00:12:36] Speaker 00:
So TRECO was a specification.

[00:12:38] Speaker 00:
for a cooperative's line extension program.

[00:12:41] Speaker 00:
Because cooperatives originally were for rural areas.

[00:12:43] Speaker 00:
They weren't generating power.

[00:12:45] Speaker 00:
They were trying to get infrastructure out to rural areas.

[00:12:48] Speaker 00:
So this whole specification is more about the actual line and distribution system.

[00:12:54] Speaker 00:
So 213G at page A737 simply says, ownership of facilities.

[00:13:00] Speaker 00:
Underground facilities shall be installed, owned, operated, and maintained as provided in sections 158

[00:13:06] Speaker 00:
159 and 160 of this line extension policy.

[00:13:10] Speaker 00:
If you refer back to those paragraphs, they only describe rates of way for line extensions and facility relocation.

[00:13:17] Speaker 00:
So this terse disclosure in TRECO is really not directed to ownership of the power or the power generator.

[00:13:23] Speaker 00:
It's directed to ownership of the lines, so the distribution lines.

[00:13:28] Speaker 00:
So this really doesn't enhance the rest or the base reference.

[00:13:32] Speaker 00:
by saying that it's a written agreement that shows ownership of the power generator, or ownership of the property for that matter.

[00:13:37] Speaker 00:
So this combination of Rassler and Troiko, and even the Rassler, Troiko, and Carroll, which is used for claim 14, is lacking an element of the claim.

[00:13:47] Speaker 00:
So if this claim is given patentable weight, which we argue it should be, because it's more like the gulag reference,

[00:13:59] Speaker 01:
All right, let's hear from the other side.

[00:14:02] Speaker 01:
Yes, Your Honor.

[00:14:02] Speaker 01:
We have your rebuttal time.

[00:14:04] Speaker 00:
Thank you, Your Honor.

[00:14:10] Speaker 01:
Ms.

[00:14:10] Speaker 01:
Stewart.

[00:14:11] Speaker 04:
May it please the court.

[00:14:13] Speaker 04:
What Sure is arguing is that the words of the claim require an interpretation of permanency.

[00:14:23] Speaker 04:
And they even go so far to say, really, that the instrument has to be incorporated into the deed.

[00:14:28] Speaker 04:
And these kinds of limitations are not found in the claim language.

[00:14:32] Speaker 04:
And while they are discussed in some ways in the specification, different embodiments are discussed which contemplate a more flexible arrangement.

[00:14:43] Speaker 04:
So the classic problem we have here with the patent holder is that they're trying to make the claims more rigid than either the words of the claims allow or the specification allows.

[00:14:54] Speaker 01:
Was the objection that

[00:14:57] Speaker 01:
The claims were too broad.

[00:14:59] Speaker 01:
There are some specific claims that appear to solve the objection you've just raised.

[00:15:08] Speaker 04:
Well, I'm not sure what Your Honor is referring to.

[00:15:12] Speaker 04:
There are some dependent claims that talk about the optional feature.

[00:15:17] Speaker 04:
But starting with the independent claims, the question is, does it require a permanent relationship and common ownership

[00:15:26] Speaker 04:
And those concepts are not included in the specific language of the claim.

[00:15:30] Speaker 04:
So we have to look at the specification to see, is the applicant his own lexicographer?

[00:15:36] Speaker 04:
Has he defined those terms in such a way, which he can do?

[00:15:39] Speaker 04:
He can say associating means permanent.

[00:15:41] Speaker 04:
He can say that the written instrument must be in the deed.

[00:15:45] Speaker 04:
But that's not what he said.

[00:15:46] Speaker 04:
He said it can be optional and separable.

[00:15:48] Speaker 01:
You're not saying that the basis for the rejection was that it was obvious to have

[00:15:55] Speaker 01:
community cooperative ownership of energy sources, but that the problem is how it was claimed?

[00:16:04] Speaker 04:
Well, I think in order to apply the prior art references, we have to have an understanding of how the associating term should be defined.

[00:16:12] Speaker 04:
And that is really kind of bubbled up in the course of the prosecution examination of the claims.

[00:16:20] Speaker 04:
So if we turn to the prior art references,

[00:16:24] Speaker 04:
There isn't any dispute that the references teach the tangible elements of the claim, the power source, the distribution station, the residential real estate.

[00:16:34] Speaker 02:
How does a conventional contract of a user of electricity say PEPCO?

[00:16:41] Speaker 02:
How does that read on written instrument associating ownership rights?

[00:16:48] Speaker 02:
The rationale of the board, as I understand it, was an ordinary utility commercial contract.

[00:16:59] Speaker 02:
But this language is broad enough to read on that.

[00:17:03] Speaker 02:
Just walk me through it.

[00:17:04] Speaker 02:
Why is the ordinary commercial relationship of a user of power with PEPCO a written instrument that associates ownership rights

[00:17:15] Speaker 02:
and a portion of the power received with ownership of some real estate?

[00:17:20] Speaker 04:
Well, to clarify, I think what the board did is it adopted the examiner's... Are you having trouble understanding my question?

[00:17:28] Speaker 02:
No, I understand your question.

[00:17:29] Speaker 04:
Can you answer the question directly?

[00:17:30] Speaker 04:
Yes, yes, Your Honor.

[00:17:34] Speaker 04:
First, to answer your question, the board said that the reason why a conventional arrangement can work is because there's ownership.

[00:17:43] Speaker 04:
I mean, typically, you own your home,

[00:17:45] Speaker 04:
It's common to own your home.

[00:17:47] Speaker 04:
It's common for the power company to own their power.

[00:17:50] Speaker 02:
I got the ownership of the home, or whether you're a leaseholder, perhaps.

[00:17:54] Speaker 02:
But what I'm curious to know is why that typical contract associates ownership rights and a portion of power.

[00:18:04] Speaker 04:
The reason why the board came to that conclusion is because the term association is left so undefined in the claims and specification.

[00:18:15] Speaker 02:
But what I wanted to clarify, if your honor, was that while the board- I understand association is broad, but associating ownership rights, it says in a portion of the power received is the notion that once I turn my light switch on and I'm using the juice, I am receiving the juice and therefore own it.

[00:18:38] Speaker 02:
Is that the point you hear what I'm talking about?

[00:18:41] Speaker 04:
I think if I understand your honor the point that the board was trying to make is it doesn't say common ownership, so it says association of ownership of the power and association of ownership of the residential real estate, but it doesn't say that those two owners have to be one in the same person and that's why I

[00:19:03] Speaker 04:
That's why I think the board was trying to explain to the applicant after adopting the reasoning.

[00:19:08] Speaker 02:
So the ownership is in EPCA, or they own the electricity, and they're shooting it to somebody that owns a house, and that's sufficient.

[00:19:17] Speaker 04:
Correct.

[00:19:17] Speaker 04:
And I think what the board was trying to say is we've adopted the reasoning of the examiner, which I think assumed for the purposes of argument that a narrower construction was appropriate.

[00:19:29] Speaker 04:
But then in responding to the arguments made on appeal, the board

[00:19:33] Speaker 04:
is pointing out to the applicant that under the narrower interpretation that you're advocating for, it's taught by the references.

[00:19:42] Speaker 04:
But you kind of have a problem with how you're going to construe your claims, because your claims don't even say common ownership.

[00:19:49] Speaker 04:
And they don't say permanent.

[00:19:51] Speaker 04:
And they don't say there has to be a deed.

[00:19:52] Speaker 04:
So I think the board is trying to teach through its decision how it's reading the claims.

[00:19:58] Speaker 04:
But fundamentally, the first step the board does is it adopts the reasoning of the examiner.

[00:20:03] Speaker 04:
An examiner assumes, for the sake of argument, that there is common ownership.

[00:20:07] Speaker 04:
And he finds that those elements are taught in the prior art in Rassler, the combination of Rassler and Dreiko.

[00:20:14] Speaker 02:
So why isn't this particular limitation we've just been talking about entitled a patentable weight?

[00:20:24] Speaker 04:
Well.

[00:20:28] Speaker 04:
We first, the patent office gives it patentable weight and applies the prior art.

[00:20:33] Speaker 04:
But it goes beyond that in the alternative.

[00:20:35] Speaker 02:
There's an alternative argument that we don't even need to look at 103 because this limitation just disappeared from the claim.

[00:20:45] Speaker 02:
So what's your best shot at why

[00:20:49] Speaker 02:
But is the reasoning why this particular limitation is not entitled to fathom a weight?

[00:20:54] Speaker 04:
Well, the classic printed matter case, as Your Honors well know, is the Miller case where you're creating a measuring cup out of a vessel by applying lines and numbers or words onto the vessel, or creating a ruler from a piece of wood, or Gulak, where you had the band that was being created with the numbers put on the band.

[00:21:15] Speaker 04:
So there, you're applying words to the substrate

[00:21:18] Speaker 04:
It's giving that substrate kind of new structure and meaning.

[00:21:22] Speaker 04:
Here, we just have a legal instrument.

[00:21:25] Speaker 04:
So it's not changing the way the power, the way the residential property is constructed, the way the power is being supplied, the way it's being distributed, the way it's metered.

[00:21:37] Speaker 04:
It's not changing any of that.

[00:21:39] Speaker 04:
All it is is taking different tangible pieces and then tying them together with a legal document.

[00:21:47] Speaker 02:
So what's your view of the test?

[00:21:49] Speaker 02:
The challenge subject matter, which is being claimed to have no patent or weight.

[00:21:56] Speaker 02:
In order to have patent or weight, it has to impact the functioning of the claim.

[00:22:01] Speaker 04:
Right, Your Honor.

[00:22:02] Speaker 04:
It has to have a non-obvious.

[00:22:04] Speaker 02:
We're just not talking about non-obvious.

[00:22:06] Speaker 02:
Just procedurally, it has to affect what?

[00:22:09] Speaker 02:
It has to affect.

[00:22:11] Speaker 04:
In some demonstrable way it has to have a functional relationship with respect to the system claim It has to have a functional relationship through the substrate here as typically What's the substrate the substrate here?

[00:22:24] Speaker 04:
I mean would have to be one of the tangible objects it would have to be the properties or would have to be the power distribution it would have to be Imposed and incorporated into something here.

[00:22:36] Speaker 04:
It's just a

[00:22:38] Speaker 04:
It's just an abstract legal relationship tying different tangible pieces together.

[00:22:44] Speaker 01:
Well, it's a necessary step.

[00:22:46] Speaker 01:
Why is this any different from the software cases that we see where the computer does the next calculation and puts you into the next phase of performing of the process?

[00:22:59] Speaker 01:
One of the next phases is that you have a limitation or a provision in the deed.

[00:23:06] Speaker 04:
Well, I think, Your Honor, you're hitting right to the heart of it, which is in software.

[00:23:11] Speaker 04:
The software changes the way potentially the system or even the hardware operates.

[00:23:16] Speaker 01:
Why does it change as you say of a software and you say you add these two components and that's the next stage?

[00:23:23] Speaker 01:
Here, the intervening necessary step is that you have an ownership transfer provision.

[00:23:37] Speaker 04:
Well, not having the words of the claims in the example in front of me, it's a little hard to respond.

[00:23:44] Speaker 04:
But here it seems far more abstract than the example that your honor is presenting.

[00:23:49] Speaker 01:
What's abstract about a transfer of property?

[00:23:54] Speaker 04:
Well, what's abstract about it is that it relies on a legal relationship.

[00:23:58] Speaker 04:
So one could imagine any different set of tangible objects.

[00:24:02] Speaker 04:
And then the fourth limitation of that claim element could be,

[00:24:07] Speaker 04:
we're going to sign a legal document that says you own A and B, and I own C, and it goes on from there.

[00:24:14] Speaker 04:
And those fall much more nicely into the kind of claim elements that haven't been given patentable weight under printed matter than they do under other claim elements, which change the function of the system or the method.

[00:24:32] Speaker 01:
Doesn't it?

[00:24:32] Speaker 01:
I don't see that distinction.

[00:24:36] Speaker 01:
It would be more helpful to us, I think, if you were to concentrate on the prior art and the basis for the objection.

[00:24:46] Speaker 04:
Well, Your Honor, you know, that clearly that is what the examiner did and that is what the board adopted.

[00:24:51] Speaker 04:
And I think it was in part in response to some of the arguments made in the appeal brief to the board that the board felt the need to point out that there are other defects

[00:25:03] Speaker 04:
with this claim that go beyond the application of the prior art.

[00:25:06] Speaker 04:
But your honor's right.

[00:25:07] Speaker 04:
The primary rejection here is based on the combination of a classic KSR obviousness case with familiar elements, known methods, and predictable results.

[00:25:19] Speaker 04:
It's that combination of this prior art that renders the claim obvious.

[00:25:24] Speaker 02:
Well, doesn't your case just boil down to a simple proposition from your perspective, which is that a conventional power contract with a consumer satisfies the written instrument limitation?

[00:25:40] Speaker 04:
Clear.

[00:25:41] Speaker 02:
Don't you have to sustain that point in order to win?

[00:25:45] Speaker 04:
We don't have to sustain that point, because again, this was the dialogue the board was trying to have with the applicant.

[00:25:51] Speaker 04:
The board affirmed the rejection of the examiner

[00:25:54] Speaker 04:
which gave patentable weight to every single limitation, and even credited their moron.

[00:25:59] Speaker 02:
I'm not talking about patentable weight.

[00:26:01] Speaker 02:
I'm talking about it in the 103 analysis.

[00:26:03] Speaker 02:
The only thing that's not in the prior art is a written instrument associating ownership rights.

[00:26:09] Speaker 02:
So we've got to say, well, where is there somewhere something like that in the prior art?

[00:26:15] Speaker 02:
Because if there's nothing like that in the prior art, there's no 103, right?

[00:26:20] Speaker 02:
Right.

[00:26:21] Speaker 04:
The reference here is not a conventional power agreement.

[00:26:23] Speaker 04:
That probably would have been sufficient, but the examiner dug deeper and said, I'm going to find alternative power.

[00:26:29] Speaker 04:
I'm going to find as close I can to these claims as possible, and I'm going to make the rejection on that basis.

[00:26:34] Speaker 02:
And tell us what that was with regard to the written instrument limitation.

[00:26:40] Speaker 04:
With regard to the written instrument limitation, it is the Trico provides the written instrument, and Rassler provides the relationship between the elements.

[00:26:50] Speaker 04:
So Rassler has the alternative power.

[00:26:53] Speaker 04:
It has the multifamily dwelling.

[00:26:56] Speaker 02:
All Trico teaches is a writing, correct?

[00:27:00] Speaker 02:
No specific writing.

[00:27:03] Speaker 04:
Trico teaches a writing, but it's dealing with a cooperative power arrangement between members of a cooperative and the power source.

[00:27:11] Speaker 04:
And the way, even in the patent, the term cooperative is used connotes some kind of common ownership.

[00:27:18] Speaker 04:
So I think Trico does more.

[00:27:20] Speaker 04:
than just providing a written instrument.

[00:27:21] Speaker 04:
But again, in response to some of the arguments made by the patent holder, the examiner said, if your concern is a lack of common ownership, let's go back to Rassler.

[00:27:31] Speaker 04:
In Rassler, a furnace-sized fuel cell is put in the home.

[00:27:35] Speaker 04:
So we can presume that the person residing in that home owned that unit.

[00:27:41] Speaker 02:
And so this is a question of what these references teach.

[00:27:44] Speaker 02:
So it's a fact question, where we're viewing it for substantial evidence?

[00:27:48] Speaker 04:
Yes.

[00:27:50] Speaker 02:
Let's just come back quickly to the animal weight written matter issue.

[00:27:55] Speaker 02:
Is that a legal question or a fact question?

[00:27:58] Speaker 04:
That's a legal question, Your Honor.

[00:27:59] Speaker 02:
Do you have a case that says that?

[00:28:01] Speaker 04:
I was looking through the Gulak and the Guy and Miller and to Stefano for that specific statement in the court.

[00:28:09] Speaker 04:
I didn't find it, but I'd be happy to provide it to the court after the argument that would assist the panel.

[00:28:14] Speaker 02:
Well, back at the time of Miller, people didn't worry about those issues.

[00:28:19] Speaker 02:
Right?

[00:28:19] Speaker 04:
Well, it's usually bound up.

[00:28:22] Speaker 04:
The printed matter doctrine usually arises either in a 102 or 103 case.

[00:28:26] Speaker 04:
And so usually when they discuss a standard review in a 102, they're talking about substantial evidence.

[00:28:31] Speaker 04:
In 103, they're talking about the mixed question of fact and law.

[00:28:36] Speaker 04:
But I do think printed matter is a judgment exception to the rule.

[00:28:40] Speaker 02:
In 102, you're talking fact, anticipation.

[00:28:42] Speaker 04:
Yes, Your Honor.

[00:28:43] Speaker 04:
Here we have 103.

[00:28:45] Speaker 04:
So it's a mixed question.

[00:28:46] Speaker 04:
And I also think, given that it's a judge-made exception to 102 and 103, that it's traditionally thought of as a legal question.

[00:28:55] Speaker 04:
But I'd be happy to provide that to the court to assist the panel.

[00:29:00] Speaker 01:
Any more questions?

[00:29:02] Speaker 01:
Any more questions?

[00:29:03] Speaker 01:
Thank you, Your Honor.

[00:29:04] Speaker 01:
Thank you, Ms.

[00:29:04] Speaker 01:
Stewart.

[00:29:09] Speaker 01:
Mr. Simmons.

[00:29:10] Speaker 00:
Briefly, Your Honor.

[00:29:11] Speaker 00:
Back to the prior.

[00:29:12] Speaker 00:
And what does the prior actually show?

[00:29:14] Speaker 00:
I think the council on behalf of the director just acknowledged that it must be presumed that Rassler shows that if the furnace-sized units are put into the home, it's owned by the union holder.

[00:29:26] Speaker 00:
Unfortunately, it doesn't say that.

[00:29:28] Speaker 00:
So the Traco reference doesn't make up for that deficiency.

[00:29:31] Speaker 00:
Ownership is not disclosed in that one page, one and a half page article by Rassler.

[00:29:36] Speaker 00:
And that's a key phrase used in the claims that have been relied and argued by the applicants.

[00:29:42] Speaker 00:
So in Rassler, it says pilot plants.

[00:29:44] Speaker 00:
This may in the future exist, but it doesn't disclose that it's owned by the homeowner, that it's owned by the cooperative, that it's owned by, presumably, the third party who's running the pilot for the government.

[00:29:55] Speaker 00:
So supposedly, the examiner has actually said that Rassler inherently discloses this ownership relationship, which, I think, in an article like that, has got to be a lot more shown.

[00:30:06] Speaker 00:
And Trico, as the court has pointed out, really doesn't show anything more than,

[00:30:14] Speaker 00:
The best at best in 213G, ownership of the lines.

[00:30:17] Speaker 00:
And then in 202, which I don't know why the examiner didn't rely on, the minimum written agreement requirements, it shows each line extension agreement shall at a minimum include the following information.

[00:30:28] Speaker 00:
It doesn't say each power delivery agreement.

[00:30:32] Speaker 00:
And it just talks about things that are normal in any other agreement for delivering power.

[00:30:37] Speaker 00:
Name of the applicant, service address and location.

[00:30:40] Speaker 00:
It doesn't talk about how the power is going to be associated with ownership

[00:30:44] Speaker 00:
to the ownership of the property itself.

[00:30:47] Speaker 00:
Do you have any further questions?

[00:30:50] Speaker 00:
Thank you very much.

[00:30:51] Speaker 01:
Thank you, Mr. Simmons.

[00:30:53] Speaker 01:
Mr. Stewart, the case is taken under submission.