[00:00:00] Speaker 02:
15-1776, Carl Stork's endoscopy versus integrated medical systems.

[00:00:43] Speaker 02:
Is it Cosmo?

[00:00:44] Speaker 04:
Yes, Michael Cosmo.

[00:00:46] Speaker 02:
Please proceed.

[00:00:48] Speaker 04:
Good morning, Your Honors.

[00:00:49] Speaker 04:
My name is Michael Cosmo.

[00:00:50] Speaker 04:
I'm from the Whitmire IP group here on behalf of Paul Storrs.

[00:00:54] Speaker 03:
The question on appeal today is whether the shared disclosures of the 945... Counsel, in your brief you cite various dictionary thesaurus and explanatory note entries.

[00:01:08] Speaker 03:
Appellant's brief at 14 discussing the definitions of transparency, you know, take from

[00:01:13] Speaker 03:
www.dictionary.com, 21 discussing explanatory notes from miriamwebster.com for the term especially and the impact of especially, pages 22 and 24, note 8, discussing synonyms for translucent from thesaurus.com and the definition of opaque from dictionary.com.

[00:01:37] Speaker 03:
Where's that all in the record?

[00:01:40] Speaker 04:
Definitions used by the examiner was brought up on the right of notice of appeal.

[00:01:44] Speaker 04:
There was no other evidence put in after that.

[00:01:46] Speaker 04:
While these were not on the record earlier on, they're not necessary for our argument.

[00:01:50] Speaker 04:
They were more explanatory of the whole.

[00:01:53] Speaker 04:
So we can ignore them?

[00:01:55] Speaker 04:
You can't ignore them, yes.

[00:01:59] Speaker 04:
So the 437 patent, the question is whether 945 and 437 patent disclosures support the use of translucent materials.

[00:02:06] Speaker 02:
Well, I don't think there's a question that

[00:02:09] Speaker 02:
437 does support the use of translucent because it incorporates by reference the PCT in the German app.

[00:02:16] Speaker 02:
The question is, can it claim priority to 945?

[00:02:18] Speaker 02:
I think the whole question is, does 945 support translucent?

[00:02:22] Speaker 04:
The 945 and the 437 patents have substantially the same specification.

[00:02:25] Speaker 02:
That's a division in park, and they don't have the same specification in the critical way in which 945 didn't incorporate by reference the PCT in the German application.

[00:02:33] Speaker 02:
It's a pretty substantial difference.

[00:02:34] Speaker 04:
945 does claim priority to the PCT and the German application.

[00:02:39] Speaker 02:
The 945 claims priority to it, but doesn't incorporate it by reference, which means we don't read the German application in the PCT and all that they disclose as being likewise disclosed in the 945 itself.

[00:02:51] Speaker 02:
You know what it means to incorporate something by reference, right?

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

[00:02:54] Speaker 02:
You know what it means to claim priority to something.

[00:02:57] Speaker 02:
Oh yes, definitely.

[00:02:57] Speaker 02:
You understand how they're different.

[00:02:58] Speaker 02:
Yes.

[00:02:59] Speaker 02:
You understand that when you claim priority to something, you don't necessarily get its entire disclosure read into your own, correct?

[00:03:04] Speaker 04:
That is correct.

[00:03:05] Speaker 04:
Okay.

[00:03:09] Speaker 04:
The board's, well, so despite the board's finding that PCT and German applications teach the use of translucent materials, it adopts examiners' improper conclusion that the 945 patent teaches away from translucent materials.

[00:03:21] Speaker 04:
As a result, the use of translucent materials in the 437 patent was improperly found anticipated by the PCT and German applications from which the 437 claims priority.

[00:03:32] Speaker 04:
The board's decisions to ruin this matter will offer at least three reasons.

[00:03:36] Speaker 04:
First, the board erred by finding the 945 patent

[00:03:38] Speaker 04:
is limited to clear materials, even though the word clear is never used in the specification.

[00:03:43] Speaker 02:
But it uses the word transparent.

[00:03:45] Speaker 04:
That is correct.

[00:03:45] Speaker 04:
It uses the word transparent, but it's not limited to just that embodiment.

[00:03:50] Speaker 00:
Second, the board erred by... I'm trying to completely understand this whole debate here.

[00:03:55] Speaker 00:
As I understand, the allegedly infringing device that attempted to design around your patent has something that is referred to as being smoky, right?

[00:04:08] Speaker 00:
It's not really clear that it's translucent versus transparent, or that under the doctrine of equivalence, it wouldn't fall within the bounds of transparent as originally claimed.

[00:04:19] Speaker 00:
So why do you have to have translucent and transparent being one and the same?

[00:04:27] Speaker 04:
Well, they're not one and the same.

[00:04:30] Speaker 04:
Looking through the prosecution and the inter-party re-examination, transparent and translucent are claimed separately.

[00:04:36] Speaker 00:
Right.

[00:04:37] Speaker 00:
But I mean, but you're essentially saying that all the descriptions in the specification would give rise to either one.

[00:04:45] Speaker 04:
That's correct.

[00:04:45] Speaker 04:
Because all is required by the invention is the visual inspection of the optical components once the material is shrunk.

[00:04:51] Speaker 04:
So as in the prior art, the opaque material is used.

[00:04:55] Speaker 04:
And once the material was shrunk around the optical components, there's no way to visually check whether the optical components had shifted and were unsatisfactory for use.

[00:05:04] Speaker 03:
You say in your prey,

[00:05:05] Speaker 03:
towards the end that what is desired is material that permits inspection of optical components.

[00:05:13] Speaker 03:
That's correct.

[00:05:15] Speaker 03:
How can you inspect through translucent material?

[00:05:19] Speaker 03:
One line of translucent is that it doesn't entirely transmit the light.

[00:05:26] Speaker 04:
It's an alignment issue.

[00:05:27] Speaker 04:
So when you have the optical rod lenses in the shrinkable material,

[00:05:34] Speaker 04:
What you can see is once the material shrinks, whether it shifts or not, you just need to be able to see what the alignment is of the lenses.

[00:05:40] Speaker 04:
You can see that through translucent material.

[00:05:43] Speaker 04:
One of our skilled art would recognize this, and as the inventors knew at the time that this was possible as evidenced by the PCT in the German applications, all that's required is the visual inspection for alignment.

[00:05:57] Speaker 04:
So once the material is shrunk, well in the prior art, once the material was shrunk, the material was opaque.

[00:06:02] Speaker 04:
And what was required was the full assembly of the endoscope itself.

[00:06:07] Speaker 04:
Once the endoscope was fully assembled, then you'd have to look through the endoscope to see whether they were aligned or not.

[00:06:14] Speaker 04:
And if they were misaligned, the optical components, then it would require a full disassembly, which is quite expensive and time consuming.

[00:06:21] Speaker 04:
So the inventors came up with was using a material that is not opaque, that allows the passage of light.

[00:06:28] Speaker 04:
And once the material shrunk, the inventors could look

[00:06:31] Speaker 04:
through the material, see whether the alignment was correct.

[00:06:34] Speaker 04:
And from that alignment, they would be able to now know that once they assembled the endoscope, the endoscope would function properly.

[00:06:39] Speaker 02:
So even though the 945 patent discloses transparency, you think that something less than that or different from that that still nonetheless allows for you to see the alignment is sufficient?

[00:06:54] Speaker 02:
That's correct.

[00:06:55] Speaker 02:
And will be covered?

[00:06:55] Speaker 02:
So what about a series of mirrors?

[00:06:57] Speaker 02:
like your rear view mirror, right?

[00:06:58] Speaker 02:
I mean, I actually, so I've had lots of little kids in my lifetime, and I don't know if you've ever seen it, but I use my rear view mirror, and then they're spacing backwards, because they're in a car seat, and you put a mirror on the back of the seat.

[00:07:09] Speaker 02:
So I look in my mirror, see into that mirror, and thereby see the face of my child, even though they're facing that way, and I'm facing this way.

[00:07:15] Speaker 02:
Is that now also disclosed in the 945 patent?

[00:07:18] Speaker 02:
Because it still allows visual inspection for alignment purposes, vis-a-vis a series of mirrors that reflect off each other.

[00:07:24] Speaker 02:
You see where I'm going, obviously.

[00:07:27] Speaker 02:
I'm sorry, I do not.

[00:07:28] Speaker 02:
You don't?

[00:07:30] Speaker 02:
I don't think that just because you disclose transparency and clear viewing of something, you necessarily, by virtue of disclosing that, get to claim every mechanism by which you can view two things in order to establish alignment.

[00:07:46] Speaker 02:
I'm disclosing a complex set of mirrors in order to see whether two things could be aligned.

[00:07:52] Speaker 02:
Clearly the 945 patent doesn't disclose a complex set of mirrors.

[00:07:55] Speaker 02:
to allow you to determine, even with an opaque shading, what's going on behind the opaque, right?

[00:08:02] Speaker 02:
So it's a particular way that is disclosed of being able to ensure alignment.

[00:08:06] Speaker 04:
Well, the 945 patent never uses the word clear.

[00:08:08] Speaker 04:
The 945 patent does use the word transparent.

[00:08:11] Speaker 04:
It also, however, it merely, the 945 patent proves upon the prior by disclosing the method of inspecting.

[00:08:19] Speaker 04:
And if we look at column one, lines 53 through 57,

[00:08:22] Speaker 04:
The PADS specific states that it is an object of the present invention to further optimize an endoscope in a method for assembling components in such a way that by using shrinkable materials it is possible to fix the optical components relative to one another in a way which can also be checked.

[00:08:38] Speaker 04:
So first you're fixing the optical components together in series and now you're able to visually inspect them.

[00:08:45] Speaker 04:
So in column one, lines 53 to 57, transparent is not used.

[00:08:49] Speaker 04:
It's just saying that the object of the invention is the inspection of the rod lenses once they are secured in the shrinkable period.

[00:08:56] Speaker 02:
So you think that by virtue of that, you should be entitled to come along in a divisional or a CIP or something and claim any method of inspection, even by mirrors, any method of inspection and claim priority to 945 because it set out the goal of being able to inspect?

[00:09:17] Speaker 04:
The inspection is visual inspection, not through mirrors.

[00:09:20] Speaker 04:
It's visually inspecting the rod lens.

[00:09:23] Speaker 03:
Generally, one visually inspects in a mirror, do they not?

[00:09:27] Speaker 04:
No, that's correct.

[00:09:29] Speaker 04:
The object is looking at the alignment through the material.

[00:09:35] Speaker 04:
So you have the shrinkable material, you fix the rod lenses, and now you visually look through the material to see whether they are in alignment.

[00:09:43] Speaker 04:
And whether it is perfectly clear or translucent,

[00:09:45] Speaker 04:
that it doesn't matter.

[00:09:46] Speaker 04:
It's one of our engineers would understand how to inspect those and one of our engineers would understand to look at the alignment through the material once it's shrink wrapped.

[00:09:53] Speaker 00:
What I don't understand is why did you bother with this divisional?

[00:09:57] Speaker 00:
I mean, I understand that they tried to design around, but why didn't you just argue that the claim, that the word transparent in the claim was broad enough to encompass anything that you could see through sufficiently for purposes of determining alignment?

[00:10:11] Speaker 04:
Well, Your Honor, I do agree that transparent should be broad enough to cover both, to all these... Or that even if it wasn't, you'd have a good argument under DOE.

[00:10:21] Speaker 00:
I mean, I guess I don't understand why, having gone to the divisional, you're the one who created this distinction between what is translucent and what is transparent.

[00:10:31] Speaker 00:
I'm not sure where Smokey falls in on that, on that spectrum.

[00:10:36] Speaker 00:
But I guess I'm trying to understand what the point of the divisional was.

[00:10:42] Speaker 04:
I agree, Your Honor, that we are making a distinction here between translucent and transparent.

[00:10:49] Speaker 04:
The fact that we are right now is that we have a definition of transparent and a definition of translucent.

[00:10:55] Speaker 04:
The question now is whether the specification of 945 patent does cover the range.

[00:11:01] Speaker 04:
And it's our contention that it does cover the range, because all that's required is how to inspect the rod lenses.

[00:11:08] Speaker 00:
But now you've got a problem in that you have differentiated between the two things.

[00:11:14] Speaker 04:
We have differentiated, Your Honor.

[00:11:16] Speaker 00:
Right.

[00:11:16] Speaker 00:
And so you created that claim differentiation problem that you wouldn't have had.

[00:11:22] Speaker 04:
It is here, yes.

[00:11:23] Speaker 00:
Now, assuming that we don't agree with you, is there any ability for you to argue DOE with respect to the original claims?

[00:11:32] Speaker 04:
Well, now that the written description of the 945 patent has been found not to support translucent

[00:11:38] Speaker 04:
we would be able to put more evidence on the record of what Warner Skilling Yard would understand through the 9-4-5 path.

[00:11:46] Speaker 04:
So we would not be limited on that finding.

[00:11:48] Speaker 02:
You can still argue infringement under 9-4-5.

[00:11:50] Speaker 02:
Yes.

[00:11:50] Speaker 02:
You can't under 4-3-7.

[00:11:51] Speaker 02:
That's correct.

[00:11:53] Speaker 02:
That's your question.

[00:11:54] Speaker 04:
Yes.

[00:11:54] Speaker 04:
So we would be able to put declarations and evidence of Warner Skilling Yard on that.

[00:11:59] Speaker 04:
The evidence of Warner Skilling Yard here today is we have the intrinsic record.

[00:12:04] Speaker 04:
So looking at the intrinsic record is where we should start.

[00:12:07] Speaker 04:
However, the examiner went to an extrinsic source, and he went to dictionary definitions.

[00:12:11] Speaker 02:
Now you're into your rebuttal time.

[00:12:13] Speaker 02:
Do you want to save the remainder?

[00:12:14] Speaker 02:
It's your time.

[00:12:15] Speaker 04:
Thank you, Your Honor.

[00:12:16] Speaker 04:
I would just like to say that one of the big errors the board had was not using the broadest reasonable interpretation of translucent.

[00:12:25] Speaker 04:
And that's where we got to clear.

[00:12:27] Speaker 04:
So looking at the Marin Ripton's dictionary, the examiner

[00:12:35] Speaker 04:
looked at the medical dictionary and found that permitting the passage of light was the definition of translucent.

[00:12:44] Speaker 04:
But then he took the more narrow definition saying transmitting and diffusing light so that objects beyond cannot be clearly seen.

[00:12:50] Speaker 04:
However, he was required only once he took that narrower definition was he able to find his teach-away argument to say that somehow transparent teaches away from translucent.

[00:12:59] Speaker 04:
However, there's no evidence that there is a teach-away.

[00:13:02] Speaker 04:
The specification never says that transparent or

[00:13:05] Speaker 04:
is required, the specification says the object of the invention is to visually inspect the components.

[00:13:12] Speaker 02:
Which of the two words do you think is broader, translucent or transparent?

[00:13:15] Speaker 02:
So they can't be of equal scope.

[00:13:17] Speaker 02:
So which one's the broad one, which one's the narrow one?

[00:13:19] Speaker 02:
Translucent is broader.

[00:13:20] Speaker 02:
Translucent is broader.

[00:13:22] Speaker 02:
Yes.

[00:13:23] Speaker 02:
So if something is translucent, you think it's also transparent?

[00:13:26] Speaker 04:
Yes.

[00:13:27] Speaker 04:
No, translucent would cover transparent.

[00:13:29] Speaker 04:
So translucent just permits the passage of light, which would cover transparent.

[00:13:33] Speaker 03:
And then transparent is... Wait, is something that's translucent transparent?

[00:13:40] Speaker 04:
Not necessarily.

[00:13:41] Speaker 04:
Not necessarily.

[00:13:42] Speaker 04:
Transparent is... That wouldn't necessarily cover it.

[00:13:46] Speaker 04:
Transparent would be the species of the gene is translucent.

[00:13:50] Speaker 02:
That's what we would... Do you think everything that is transparent is automatically translucent?

[00:13:56] Speaker 04:
It permits the passage of light.

[00:13:58] Speaker 03:
So our position... But translucent permits the passage of less light.

[00:14:04] Speaker 04:
But we would say it would cover up to translucent, because as the board found it, nothing is completely transparent.

[00:14:10] Speaker 04:
Even any material would diffuse scattered light.

[00:14:14] Speaker 04:
So there is some sort of translucent under transparent.

[00:14:18] Speaker 02:
OK, we better save the rest of your time for rebuttal, Mr. Cosmit.

[00:14:21] Speaker 02:
Let's hear from Mr. Carr.

[00:14:27] Speaker 01:
Good morning, Your Honor.

[00:14:29] Speaker 01:
Excuse me.

[00:14:30] Speaker 01:
May it please the Court, my name is Adam Carr, and I'm here today on behalf of the Appalee

[00:14:34] Speaker 01:
integrated medical systems.

[00:14:36] Speaker 01:
The arguments that Storrs has presented here today were not presented below to the board, and so they have been waived.

[00:14:43] Speaker 01:
In particular, Storrs' primary argument that you heard today was an argument about plane construction.

[00:14:49] Speaker 01:
No plane construction argument was raised to the board.

[00:14:51] Speaker 01:
In fact, there was no challenge whatsoever to the definitions that were used by the examiner and by the board in their decisions.

[00:15:00] Speaker 01:
And so those arguments have since been waived.

[00:15:02] Speaker 01:
And as Judge Wallach pointed out,

[00:15:04] Speaker 01:
the stores has also offered new evidence on appeal.

[00:15:09] Speaker 01:
And in particular, I would cite to the explanatory notes from MarionWebster.com that stores referred to.

[00:15:15] Speaker 02:
Their entire claim construction argument is based... Just out of curiosity, if I was construing a statute, are you telling me as a judge I'm not permitted to look at a dictionary because the parties didn't cite it to me?

[00:15:26] Speaker 01:
If you are a trial judge, no, you could, absolutely.

[00:15:31] Speaker 01:
But at an appellate court, you are limited to the record that was introduced at the trial below.

[00:15:36] Speaker 02:
And as a judge, I'm not permitted to take judicial notice or look at a dictionary definition in a dictionary?

[00:15:44] Speaker 01:
Not at the appellate level.

[00:15:45] Speaker 01:
And the reason is, is because at the trial level, or in this case, the board level, is you don't have the view of what the board would have done with that definition if it had been presented to them.

[00:15:56] Speaker 01:
That's the entire reason for the opposition.

[00:15:59] Speaker 02:
I frame my argument in terms of statutory interpretation.

[00:16:02] Speaker 02:
Yes.

[00:16:02] Speaker 02:
So you're saying an appellate court should adopt an incorrect statutory interpretation which will then bind all future cases solely because somebody didn't point out the dictionary and then appellate courts aren't free to look to dictionaries in order to define statutes because let me just tell you there are lots of times when appellate courts adopt a definition that's different from the one either party argued for.

[00:16:23] Speaker 02:
So that's not something that's within my permissibility.

[00:16:27] Speaker 01:
To the breadth you're taking it, you're correct, Your Honor.

[00:16:29] Speaker 01:
That in a statutory sense, perhaps you could.

[00:16:31] Speaker 01:
I don't think that applies here, though, and because of two reasons.

[00:16:36] Speaker 01:
Not only did they not present this evidence to the board, and so we do not know what the board would have done with it, but they did not raise any kind of challenge to the definitions at all.

[00:16:45] Speaker 00:
So isn't that the distinction?

[00:16:47] Speaker 00:
Because our case law is pretty clear that

[00:16:49] Speaker 00:
if you come up here on appeal and you have additional grounds to support the claim construction that you argued for below, that you can present those additional grounds from the specification or from wherever.

[00:17:01] Speaker 00:
But what you're saying is they didn't even raise a claim construction.

[00:17:05] Speaker 01:
That's exactly what I'm saying.

[00:17:06] Speaker 01:
If they had raised a challenge to the definitions or they had said to the court that you need to construe, translucent, and this is the construction, then it would be an entirely different situation than we have here today.

[00:17:19] Speaker 01:
And so I think the situation we're here today, as noted by scores, is whether or not the 945 provides a written description for translucent materials.

[00:17:29] Speaker 01:
And that is an issue that this court reviews for substantial evidence.

[00:17:34] Speaker 01:
And the evidence before the board at the time is supported by substantial evidence.

[00:17:42] Speaker 01:
The board offered four different bases for its reasoning.

[00:17:47] Speaker 01:
Let me stop here and mention what Storrs said on their initial argument about the word clear.

[00:17:53] Speaker 01:
The examiner referred to the clear visibility of being necessary under the 945.

[00:18:00] Speaker 01:
The board did not.

[00:18:02] Speaker 01:
And the examiner explained that the visible... But you can see that the specification doesn't use the word clear.

[00:18:06] Speaker 01:
That's correct.

[00:18:07] Speaker 01:
It does not use it.

[00:18:08] Speaker 01:
It uses the word transparent, or the other phrase is by virtue of transparency.

[00:18:13] Speaker 00:
See, my problem is if you put aside the divisional,

[00:18:15] Speaker 00:
the board was looking at this and they're looking at the word transparent and they read this specification that's all about being able to determine the alignment that I wouldn't be surprised under BRI if the board wouldn't say that includes relatively translucent materials.

[00:18:36] Speaker 00:
So part of the discomfort here is knowing full well where the board would go

[00:18:43] Speaker 00:
under its BRI application if it was presented just in a slightly different format?

[00:18:49] Speaker 01:
Well, I think that's part of the problem with the fact that they didn't raise it below is because then the board could have addressed it.

[00:18:55] Speaker 01:
And we could have presented evidence on the issue as well and presented the argument there.

[00:19:00] Speaker 01:
And so then you can answer the question whether, under BRI, the court would have adopted the more broader definition of the passage of life for translucent.

[00:19:10] Speaker 01:
I'm not sure under BRI that the board would have reached a different decision, frankly, because there's no requirement that the board only take the first half of the definition that they cite, which is essentially what Storrs wants them to do, and ignore the second half.

[00:19:25] Speaker 01:
And I'll mention that the sense divider in the explanatory notes, what it says in those explanatory notes is that what follows the sense divider is the more common definition of the term.

[00:19:37] Speaker 01:
So that actually works against Storrs.

[00:19:39] Speaker 01:
Because what follows is the part that storage wants to keep out, which is that objects cannot be seen clearly as a definition of transparent.

[00:19:47] Speaker 00:
But do you consider that your smoky material is such that you can sufficiently see through it for purposes of determining the alignment?

[00:19:57] Speaker 01:
Whether that is meets transparent?

[00:19:59] Speaker 00:
No, just that you can see through it sufficiently for purposes of determining alignment.

[00:20:06] Speaker 01:
Smoky material, well, in this case, the material that we use, which they have characterized as smoky, you cannot look through it into determinate alignment when it is used in the process.

[00:20:17] Speaker 01:
So whether smoky could or not, I don't know.

[00:20:19] Speaker 00:
So you're saying your material is opaque.

[00:20:22] Speaker 01:
I'm saying our material does not allow visual inspection through the material of the components.

[00:20:27] Speaker 01:
So I don't want to say that it's either opaque or transparent or translucent.

[00:20:32] Speaker 01:
It's certainly not transparent because you cannot see it clearly.

[00:20:36] Speaker 01:
And I don't even believe it is translucent, because it's very difficult to see anything through the material that we use.

[00:20:45] Speaker 01:
And so whether smoky material is translucent or not, it's obviously not before the court right now.

[00:20:50] Speaker 01:
And if we got to that factual issue at a later trial on infringement, I think we would probably prevail.

[00:20:57] Speaker 01:
I don't think any jury would find that you can view the components through this material.

[00:21:01] Speaker 01:
But it's not raised.

[00:21:02] Speaker 01:
But that's not before you.

[00:21:03] Speaker 01:
That's correct.

[00:21:04] Speaker 01:
My point of what's before you is whether what the board did is supported by substantial evidence.

[00:21:09] Speaker 01:
And the four reasons they gave that only transparent was used in the 945.

[00:21:14] Speaker 01:
And I'll point out the one portion of the specification that Storrs pointed to in its argument is then followed immediately by two sentences, each of which used the word transparent.

[00:21:25] Speaker 01:
By virtue of the transparent material, the object of the invention can be obtained.

[00:21:30] Speaker 01:
Then the board focused on the contrast and the plain meanings of the terms.

[00:21:34] Speaker 01:
And we believe that the plain meaning of the terms that the board used are supported by substantial evidence.

[00:21:41] Speaker 01:
And then that the board looked to that the visual inspection function was only attributed to transparent material.

[00:21:49] Speaker 01:
This is a little bit to the clear visibility point that stores brought up.

[00:21:53] Speaker 01:
That's what the examiner said.

[00:21:55] Speaker 01:
Then the board said it slightly differently.

[00:21:58] Speaker 01:
The board simply said,

[00:22:00] Speaker 01:
that the only thing that the 945 specification attributes the inspection function to is to transparent material.

[00:22:08] Speaker 01:
And then lastly, which is also supported by substantial evidence, is that the exclusion of opaque is not inclusion of all opaque.

[00:22:16] Speaker 01:
And again, that's supported by substantial evidence.

[00:22:19] Speaker 01:
I wanted to make one other point regarding the whole issue of the definition of translucent that stores as rays.

[00:22:26] Speaker 01:
It goes to the genus species.

[00:22:28] Speaker 01:
And it goes a little bit to Judge Moore's question about the multiple mirrors.

[00:22:32] Speaker 01:
And that is that what Storrs has to show you today is that transparent is a species of the genus translucent.

[00:22:41] Speaker 01:
There isn't any evidence in the record of whether or not there is a genus species relationship between the two, one as being a subset of the other.

[00:22:50] Speaker 01:
And in fact, the truth is that they are different materials with different characteristics.

[00:22:54] Speaker 01:
One you can see through clearly, one you cannot see through.

[00:22:57] Speaker 01:
clearly.

[00:22:59] Speaker 01:
And so first of all, there is no genus species relationship in which the board could find.

[00:23:05] Speaker 01:
And STORES needs to show that in order to prevail, because if it's not a species of the genus translucent, then they cannot prevail in the argument.

[00:23:18] Speaker 01:
And even if it is, then the problem they have beyond that is that you have to show either that it's a representative number of the species,

[00:23:27] Speaker 01:
or that structural features common to the members of the Janus are disclosed.

[00:23:31] Speaker 01:
And there's no showing that transparent is representative of the Janus translucent.

[00:23:36] Speaker 01:
And there's no structural features common to the members of the Janus that is shown in the disclosure.

[00:23:43] Speaker 01:
The one argument that Storrs makes about this features section of what they would need to prove is that it's defined by the function.

[00:23:54] Speaker 01:
But the course jurisprudence is clear that you cannot define the genus by function.

[00:23:58] Speaker 01:
It's the Eli Lilly case that we cite in our briefs.

[00:24:02] Speaker 01:
So even if you accept, and my point being that even if you accept that they are correct on their definition of translucent, they can't get to the point that they need because they cannot overcome the species genus problem in their argument.

[00:24:16] Speaker 01:
Unless you have any more questions, that's all I have for today.

[00:24:18] Speaker 02:
No.

[00:24:19] Speaker 02:
Thank you, Mr. Carr.

[00:24:20] Speaker 02:
Thank you.

[00:24:20] Speaker 02:
Mr. Cosma, you have a few minutes of rebuttal left.

[00:24:32] Speaker 04:
I'd like to first point out that IMS brought up that the following two sentences after column one, lines 53 to 57, disclosed transparent, how that's in a separate section.

[00:24:47] Speaker 04:
The section we point to is the background invention, where the inventors point out the problem in the prior, which was the opaque material, and then says the object to visually inspect.

[00:24:56] Speaker 04:
That next went on to the summary of the invention, but the background is where we show what the inventors are looking to do, and that's visually inspect the components.

[00:25:03] Speaker 04:
Next, I'd like to say that Carl Storch has consistently argued that the point of the invention is the visual inspection, and that was in our appellant brief at A482.

[00:25:16] Speaker 04:
So we have consistently argued that translucent materials are covered throughout.

[00:25:21] Speaker 04:
Next, I'd like to say that the examiner's failure to use the broadest reasonable interpretation is where the error of the clear requirement comes from.

[00:25:30] Speaker 02:
But his argument is that you waived that.

[00:25:32] Speaker 02:
You didn't argue claim construction.

[00:25:35] Speaker 04:
We argued that at 8482, we did argue that the claim construction of the translucent was incorrect.

[00:25:41] Speaker 04:
And that was in our appellate brief to the PTA base.

[00:25:45] Speaker 02:
So you argued it in your appellate brief to the PTAP.

[00:25:49] Speaker 02:
Did you argue it?

[00:25:50] Speaker 04:
The first time that that came about was at the right of a notice of appeal from the examiner.

[00:25:55] Speaker 04:
And once the right of notice of appeal was issued,

[00:25:59] Speaker 04:
the call stores did appeal it to the PTA date.

[00:26:03] Speaker 04:
So it was appealed.

[00:26:21] Speaker 02:
Do we have anything further?

[00:26:22] Speaker 02:
I think your time is up.

[00:26:23] Speaker 04:
That's all.

[00:26:23] Speaker 04:
Thank you very much.

[00:26:24] Speaker 02:
Okay.

[00:26:24] Speaker 02:
Thank both counsel.

[00:26:25] Speaker 02:
The case is taken under submission.