[00:00:00] Speaker 04: Inc. [00:00:00] Speaker 04: against Inengineered Plastics, Inc. [00:00:03] Speaker 04: Mr. Sommer. [00:00:05] Speaker 01: Thank you, Your Honor. [00:00:08] Speaker 01: Good morning. [00:00:09] Speaker 01: May it please the Court? [00:00:10] Speaker 01: I'm Ashley Sommer and I'm here from Nelson Mullins today on behalf of Propellant ADA Solutions. [00:00:16] Speaker 01: And the issue before the Court today is simply whether the Board's obviousness rationale stated supports its obviousness conclusion. [00:00:23] Speaker 01: We respectfully submit [00:00:25] Speaker 01: that those rationales do not support the obvious. [00:00:28] Speaker 02: Let me clarify a couple of housekeeping matters. [00:00:33] Speaker 02: Just to confirm, you're waiving all your arguments with respect to jurisdiction of the patent office to conduct an IPR, right? [00:00:40] Speaker 01: That's correct, Your Honor. [00:00:41] Speaker 01: Pozzo came out after our brief. [00:00:43] Speaker 01: So I think the court obviously has to satisfy. [00:00:45] Speaker 02: You were forthright. [00:00:46] Speaker 02: I just wanted to make that clear. [00:00:47] Speaker 01: I do. [00:00:48] Speaker 01: If the court saw otherwise, I think you can satisfy yourself with jurisdiction. [00:00:50] Speaker 01: But we don't have argument to the contrary. [00:00:54] Speaker 02: API claims on page 58 of its red brief that you've waived your argument that the PTAB erred in failing to determine the appropriate level of skill in the art. [00:01:06] Speaker 01: Could you raise that argument previously? [00:01:08] Speaker 01: Thank you, Your Honor. [00:01:09] Speaker 01: So throughout the examination and on appeal to the board, ADA constantly argued the heart of the obviousness rejection of what a person of skill in the art would do. [00:01:20] Speaker 01: And so they constantly argued that whether [00:01:23] Speaker 01: this teaching would be considered or how the references would be combined. [00:01:26] Speaker 01: And I think implicit in that is what the level of skill in the art is. [00:01:30] Speaker 01: The skill in the art is the prism through which the whole obvious analysis is undertaken. [00:01:35] Speaker 01: So implicit in what a person with skill in the art would do is who that person with skill in the art is. [00:01:41] Speaker 03: But was there really a debate over what the level of skill was? [00:01:47] Speaker 01: It was never teed up, I suppose. [00:01:48] Speaker 01: But in response to that, I would say that it is the Patent Office's burden in a re-examination to establish a prima facie case of obviousness. [00:01:56] Speaker 01: And here, they didn't come forward and meet their burden to establish that. [00:01:59] Speaker 01: So ADA's response burden was never triggered to come forward with evidence to counter when the skill in the art had not been established by the Patent Office in the first instance. [00:02:09] Speaker 03: In an IPR, you say the Patent Office has a burden of proof to establish obviousness? [00:02:15] Speaker 01: Yes, sir. [00:02:16] Speaker 01: No, I'm sorry. [00:02:17] Speaker 01: It's not an IPR. [00:02:18] Speaker 01: This is an older interparties re-examination. [00:02:20] Speaker 01: And so it's more akin to prosecution than the current interparties review. [00:02:25] Speaker 03: But with respect to the level of skill in the art, even though it's probably better practice to explicitly state it, whether you're a district court or the PTO, does it have to be explicitly stated if it is sort of understood from the record and the parties have never debated it? [00:02:42] Speaker 01: So that's a good question. [00:02:43] Speaker 01: We're not arguing that in every case or every exam or district court litigation that the fact finder has to expressly state the level of skill in the art. [00:02:51] Speaker 01: And this court has never held that, that it has to be done in every case. [00:02:55] Speaker 01: However, this court has said when it influences the analysis and can make a difference, it can be error to fail to state, to resolve the level of skill in the art. [00:03:04] Speaker 01: And here, unlike some cases, whether there's a high level of skill or a low level of skill, the obviousness analysis may not be impacted. [00:03:12] Speaker 01: Here, I would respectfully submit that it is impacted because the board and the examiner made leaves based on what a person of skill and the art would do, how he would combine references, which teachings of this reference he would select, which ones he would ignore. [00:03:25] Speaker 01: And so here, where it does impact the analysis, I think the court's previous decisions indicate that it can be a reversible error to fail to do that in cases where it matters. [00:03:35] Speaker 02: The rhetoric relies on Okajima, where the court stated [00:03:41] Speaker 02: The absence of specific findings on the level of skill in the art does not give rise to a reversible error where the prior art itself reflects an appropriate level and a need for testimony is not shown. [00:03:53] Speaker 02: And in the grade brief, you quote it. [00:03:55] Speaker 02: OK, Gina. [00:03:57] Speaker 02: But you don't respond. [00:03:59] Speaker 02: You just say, and your quote is, as this court has observed, skill in the art doesn't bridge over. [00:04:06] Speaker 02: But that doesn't refute the prior statement. [00:04:10] Speaker 01: Sure, Your Honor, and I would respond that if you're only relying on the teachings and the prior art to show what the level of skill in the art is here, that's going to be a low level of skill that was implicitly found even if the board didn't expressly find it because the prior art wasn't making these combinations. [00:04:29] Speaker 01: It wasn't putting together all of these pieces like our inventors did in our patent. [00:04:35] Speaker 01: to the extent that may hold true that there is some indication of level of skill. [00:04:39] Speaker 01: Here, it would suggest a low level of skill that does not support the creative and extensive movements by the board amongst the different programs. [00:04:48] Speaker 04: Let's move on to the merits because this is another issue here. [00:04:53] Speaker 04: We have the office, we have the presumption that the decision makers are skilled and a lot of other [00:04:58] Speaker 04: complexities that don't arise in the district court. [00:05:01] Speaker 04: So let's proceed with the rest of your argument, if that's OK. [00:05:04] Speaker 02: Yeah, I was going to segue right there. [00:05:06] Speaker 02: All right, good. [00:05:08] Speaker 02: Thank you. [00:05:08] Speaker 02: So speaking of the prior art, you argued that the anchoring screws disclosed in Zichelli, I think it is, are not fasteners. [00:05:23] Speaker 02: On five pages of your blueprint. [00:05:25] Speaker 02: But Zichelli describes the purpose of anchoring screws, quote, to mechanically fasten, close quote. [00:05:32] Speaker 02: How is that not a fastener? [00:05:35] Speaker 01: Sure. [00:05:36] Speaker 01: So our argument there, to be clear, is Zichelli discloses two distinct types of tiles. [00:05:41] Speaker 01: They disclose a tile that's known in the art that's called a surface tile. [00:05:45] Speaker 01: It's more like a mat. [00:05:46] Speaker 01: You put it on a hardened concrete surface. [00:05:48] Speaker 01: You go out and put one on the sidewalk now with adhesive and these anchoring screws. [00:05:51] Speaker 01: That's what holds it down. [00:05:52] Speaker 01: It's not installed into wet concrete. [00:05:54] Speaker 01: That's the first embodiment. [00:05:56] Speaker 01: It very distinctly discloses a second embodiment that is installed into wet concrete. [00:06:00] Speaker 01: And we're not claiming to have invented installing tiles into wet concrete. [00:06:05] Speaker 01: Our claims are more limited to a specific method of doing that. [00:06:08] Speaker 01: But the second embodiment of Zichelli, which is disclosed and recognized by Zichelli as being installed into wet concrete, does not use fasteners. [00:06:17] Speaker 01: It locks in by the holes in the tile is what [00:06:21] Speaker 01: locks that into the concrete. [00:06:23] Speaker 01: But there's no disclosure of using fasteners in that, what we call the wet set, the installation to wet concrete embodiment. [00:06:30] Speaker 01: So what the board did is it mixed those two together. [00:06:33] Speaker 01: It said, well, you have a wet set installation here, and you could grab the anchors from over here on the surface tile and put them together. [00:06:41] Speaker 01: And while in some cases it may be fine to mix embodiments of patent disclosures prior art, this case is not one of those. [00:06:50] Speaker 01: This isn't where there were two different types of wet set tiles in Zichelli. [00:06:54] Speaker 01: And you're saying this one had fasteners, this one didn't. [00:06:56] Speaker 01: You can intermingle those amongst the different wet set embodiments. [00:06:59] Speaker 01: Here, Zichelli didn't appreciate that fasteners could be used in the wet set embodiment. [00:07:05] Speaker 01: And so the prior artisans themselves didn't recognize this crossover. [00:07:09] Speaker 01: So the board had no basis to intermingle there. [00:07:14] Speaker 03: As I understand it, you can see the traffic signs. [00:07:17] Speaker 03: I guess that's how you pronounce that. [00:07:18] Speaker 03: It disposes everything except. [00:07:21] Speaker 03: the installation in the wet cement. [00:07:23] Speaker 01: So I want to be clear. [00:07:26] Speaker 01: We don't concede that, but we're not challenging it on appeal. [00:07:28] Speaker 01: And the reason I say that is below and other rejections that were not pursued, we argue that traffic signs does not disclose a tile where the flange on the side is thicker than the rest of the body. [00:07:37] Speaker 01: And that was a disputed point. [00:07:39] Speaker 01: And so I don't want to concede that it does disclose that, but we are not challenging it on appeal. [00:07:43] Speaker 01: Because our client has other patent applications. [00:07:45] Speaker 01: I don't want to... But we're not challenged. [00:07:48] Speaker 03: If the only piece that's missing is installation in wet cement, don't you have the board pointing to other places where that's actually shown? [00:08:01] Speaker 01: They do, Your Honor, but I would suggest that the claims are not limited to just putting traffic signs in wet cement. [00:08:07] Speaker 01: The claims require [00:08:08] Speaker 01: attack coupling the anchors to the lower tile of the surface prior to installation so that your bureau it's a pre-assembled unit you're putting all in and the board concluded and the examiner concluded that traffic signs Discloses no installation method at all and so it's I suggest it's not enough to go say just stick this tile wet concrete because that's not the claim It's how you do it you have to couple the anchors first put the entire unit in in that manner [00:08:34] Speaker 01: And Boghosian, the secondary reference for that rejection, doesn't disclose that. [00:08:38] Speaker 01: It leaves the anchors loose. [00:08:40] Speaker 01: And it has a teaching to do that so that the air escapes through the loosened hole in the top. [00:08:45] Speaker 01: And so you can't just ignore that teaching. [00:08:47] Speaker 01: When traffic science has no teachings of how to install it, you can't just ignore the teachings in Boghosian to go install it in wet concrete. [00:08:54] Speaker 01: A person of skill in the art would at least consider it. [00:08:57] Speaker 01: And you need some basis to reject how they did that to match up to the claims. [00:09:03] Speaker 03: What about Wehmeyer? [00:09:05] Speaker 01: So this rejection of traffic signs based on Wehmeyer, I want to be clear, is only for claims one and two. [00:09:11] Speaker 01: The examiner clearly expressly didn't adopt it for claims 19 and 20. [00:09:15] Speaker 01: So that's inapplicable. [00:09:16] Speaker 01: For traffic signs in Wehmeyer, again, Wehmeyer teaches trapping air underneath a tile. [00:09:20] Speaker 01: Traffic signs is a road sign. [00:09:21] Speaker 01: It's not a tactile warning. [00:09:22] Speaker 03: Well, but they teach both, don't they? [00:09:24] Speaker 03: Don't they teach trapping air, but then they also talk about not trapping too much air and actually teach how to avoid trapping too much air? [00:09:32] Speaker 01: They do talk about trapping air, and they talk about not trapping too much air, but they never talk about eliminating all air. [00:09:39] Speaker 01: Under every embodiment and traffic signs, I'm sorry, Wehmeyer, they want to trap air. [00:09:44] Speaker 01: And that's the whole thrust of that. [00:09:46] Speaker 01: You want to trap air. [00:09:47] Speaker 01: And what they're doing in that reference is they're saying, you want to trap air, but not too much. [00:09:51] Speaker 01: And because you're trapping air, you don't want the tile to break or have structural stress. [00:09:55] Speaker 01: So you're going to add this honeycomb thing [00:09:57] Speaker 01: underneath to reinforce it. [00:09:58] Speaker 03: So you're saying in the alternative embodiments of Weimar, where they're actually talking about avoiding trapping air, you're saying that they're actually affirmatively saying you also want to trap air in that embodiment? [00:10:09] Speaker 01: I don't think in those alternative embodiments they're saying you avoid trapping air. [00:10:13] Speaker 01: I think they're saying you avoid trapping too much air, but they're not talking about eliminating all air. [00:10:20] Speaker 01: They're talking about trapping just enough so you still get that [00:10:22] Speaker 01: sound resonating quality if a blind person hits the tile with their claim cane or something. [00:10:27] Speaker 01: They want some air under there, but you don't want too big of an air pocket because the stress of it could break and things like that. [00:10:34] Speaker 01: So they do talk about minimizing air, but they don't talk about eliminating air. [00:10:38] Speaker 01: And our claims specifically require essentially all of the air escaping through the slot in the flange. [00:10:49] Speaker 01: Again, that rejection only applies to claims one and two. [00:10:52] Speaker 01: If I could jump quickly, the only rejection in the record for claims 19 and 20, which are also method and installation claims, are the combination of Zichelli with traffic signs and Wehmeyer. [00:11:04] Speaker 01: And we've already talked about how our argument is that Zichelli does not disclose fasteners for the wet-set embodiment. [00:11:09] Speaker 01: That would be switched out. [00:11:11] Speaker 01: The other argument that [00:11:15] Speaker 01: or the other error that pervades the board's analysis on claims 19 and 20 is the conclusion that Zichelli discloses slots in the flange. [00:11:24] Speaker 01: And Zichelli does not disclose slots in the flange, and the claims do not encompass holes in the flange. [00:11:28] Speaker 01: The claims specifically require slots. [00:11:31] Speaker 01: The patent talks about holes and slots. [00:11:34] Speaker 01: It only claims slots. [00:11:35] Speaker 01: Zichelli only discloses holes. [00:11:38] Speaker 03: But don't they essentially say that the two function the same way? [00:11:44] Speaker 03: I'm looking at the language of the patent itself. [00:11:46] Speaker 03: It's the weep holes pass through flange or edge very close to where the edge meets body to allow air to escape from beneath unit as it is installed in a similar fashion as the slots in the first embodiment described above. [00:11:59] Speaker 01: So I get two responses to that. [00:12:00] Speaker 01: First, Your Honor, just because our inventors recognize that slots and certain types of holes may be interchangeable, that wasn't recognized in the prior art. [00:12:09] Speaker 01: No prior art reference, not traffic signs, not Mr. Kelly, not Bacchusian, and not Wehmeyer talk about [00:12:14] Speaker 01: slots and holes being interchangeable. [00:12:16] Speaker 01: The only reference on appeal that has slots is traffic signs. [00:12:21] Speaker 01: So our inventors recognize that weep holes can be interchanged with the slots in metal embodiments, but those are small weep holes that just let air out. [00:12:30] Speaker 01: In Zakeli, there are larger holes in the flange that are intended and expressly stated to lock when the concrete flows in there, it locks the tile in, as opposed to our application or patent [00:12:39] Speaker 01: where the weep holes are just small and allow air out, but are small enough so that it doesn't lock the tile in. [00:12:45] Speaker 02: I didn't want to interrupt your flow, but you said for the wet-set embodiment that would be switched out? [00:12:51] Speaker 01: Well, the wet-set embodiment, the purpose of our invention is to be able to install the tile with the anchors. [00:12:59] Speaker 01: And then I'm not sure what I said. [00:13:01] Speaker 02: I couldn't hear the word that word, switched or squished. [00:13:04] Speaker 01: I may have said switched out, meaning replacing the tile, taking it off without [00:13:08] Speaker 01: disturbing the underlying concrete, as in the dependent claims, to switching it out, replacing it. [00:13:14] Speaker 04: Let's hear from the other side. [00:13:15] Speaker 04: Thank you, Your Honor. [00:13:28] Speaker 04: Okay, Mr. Stein. [00:13:36] Speaker 00: Good morning, Your Honors. [00:13:37] Speaker 00: Philip Swain for Engineered Plastics. [00:13:40] Speaker 02: Here, let me ask you a housekeeping question, Mr. Swain. [00:13:44] Speaker 02: In the red brief at 17, you raise an argument for indefiniteness of claims 1 and 19. [00:13:51] Speaker 02: It's not briefed by ADA or a discussion of the PTAP decision. [00:13:55] Speaker 02: Is this the first time you're raising this? [00:13:58] Speaker 00: No, we did raise it. [00:13:59] Speaker 00: Where is it in the record? [00:14:01] Speaker 00: It's in the... [00:14:05] Speaker 00: It's in several places in our briefing before the examiner. [00:14:10] Speaker 00: I think the most recent time we raised it before the examiner was in the time just before the action closing prosecution and the examiner addressed it both in his right of appeal notice and his action closing prosecution. [00:14:29] Speaker 00: We did also raise it in our prophylactic appeal [00:14:35] Speaker 00: But that appeal was rejected on technical grounds by the board. [00:14:44] Speaker 03: Right. [00:14:44] Speaker 03: And we can't face a rejection on a ground that the board did not address, correct? [00:14:51] Speaker 00: I think you can, Your Honor, because it's an issue of law. [00:14:57] Speaker 00: But you could also remand, if you choose not to affirm based on the obviousness rejections that are before you now, [00:15:05] Speaker 00: and you choose to address one of these obvious rejections, you could also remand for consideration of this legal issue. [00:15:15] Speaker 00: But it is a legal issue that you can address. [00:15:17] Speaker 00: It is in the record, both in the examiner's decision of action closing prosecution and the right of appeal. [00:15:24] Speaker 00: Do you have a site to the record? [00:15:27] Speaker 00: I can get that. [00:15:27] Speaker 02: Yeah, you go ahead and your associate can pass you a note. [00:15:31] Speaker 00: OK, there are several places in the record [00:15:33] Speaker 00: where the examiner addressed our contention on indefiniteness. [00:15:39] Speaker 03: Your Honor... Can you start where he left off and tell me if you see a distinction between weep holes and holes? [00:15:49] Speaker 00: Yes. [00:15:51] Speaker 00: There is the patent... Yes, you see a distinction or yes, you can start there. [00:15:56] Speaker 00: I can start there. [00:15:57] Speaker 00: Okay. [00:15:57] Speaker 00: There is the patent claim... I thought that's what you meant. [00:16:01] Speaker 00: Yeah, patent claim term slots. [00:16:03] Speaker 00: is a broad term that includes holes and slots. [00:16:07] Speaker 00: The patent claim term, it describes in the specification slots that extend, may or may not extend all the way to the bottom of the flange. [00:16:17] Speaker 00: So in other words, slots includes holes. [00:16:20] Speaker 00: And the reference to the place in the specification where it refers to slots that extend all the way to the bottom of the flange, I believe, is [00:16:33] Speaker 00: It's a column six and let me see exactly where that is. [00:16:44] Speaker 00: In any case, it's part of the specification. [00:16:55] Speaker 00: Slots may extend to the bottom of the flange and therefore, slots would include holes. [00:17:03] Speaker 00: That is also consistent with the... Well, the PTAB didn't go there anyway. [00:17:08] Speaker 00: The PTAB did. [00:17:09] Speaker 00: PTAB didn't go there. [00:17:10] Speaker 00: The examiner did. [00:17:11] Speaker 00: PTAB chose to... They based on the examiner's alternative finding. [00:17:16] Speaker 00: That's right. [00:17:17] Speaker 00: And another basis for the claim interpretation that slots would include holes would be if you look at [00:17:26] Speaker 00: The parent patent, the 581 patent, which is no longer enforced because the PTAB in a separate re-examination cancelled all claims and they chose not to appeal that. [00:17:37] Speaker 00: There are dependent claims in the 581 patent that include the limitations, slots which extend to the bottom of the flange. [00:17:45] Speaker 00: So if you look at claim differentiation, that would mean that there are slots that [00:17:51] Speaker 00: that do extend all the way to the flange, or do not extend all the way to the flange. [00:17:56] Speaker 00: So they are choosing to use a very broad claim term. [00:17:59] Speaker 00: And I think if there were infringing products that include just holes, as disclosed in the Cichelli patent, they would have tried to claim that those infringe. [00:18:11] Speaker 00: So in any case, the Cichelli patent, while we're talking about the Cichelli patent, the board disagreed [00:18:20] Speaker 00: with their contention that there are two distinct embodiments of a flange that has holes and one that doesn't have holes. [00:18:31] Speaker 00: The St. [00:18:31] Speaker 00: Kelly patent, in fact, discloses one tile that has holes in it. [00:18:38] Speaker 00: And the board relied on the idea that the St. [00:18:42] Speaker 00: Kelly patent had holes in the wet set embodiment and that it also had fasteners. [00:18:48] Speaker 00: They used figure two. [00:18:50] Speaker 00: which shows holes and fasteners. [00:18:53] Speaker 00: To get back to your question about where the examiner addressed our indefiniteness argument, you can look at the appendix, page 1039. [00:19:04] Speaker 00: That's the right of appeal notice where the examiner addressed the DPI indefiniteness question. [00:19:12] Speaker 00: Thank you. [00:19:14] Speaker 00: Your Honor, I'd just like to begin by putting this whole proceeding in perspective. [00:19:20] Speaker 00: ADA's patent describes and claims a tactile warning tile. [00:19:26] Speaker 00: But we now know that the tile itself is anticipated by a patent from 1935. [00:19:32] Speaker 00: This is the traffic signs patent. [00:19:36] Speaker 00: That patent was brought to the attention of the patent office in our re-examination request. [00:19:43] Speaker 00: And ADA had to drop all claims to the device [00:19:47] Speaker 00: in this proceeding in the 491 patent and the Tarrant patent. [00:19:52] Speaker 00: And so now you have remaining claims to the method of installing this 80-year-old device in wet concrete. [00:20:00] Speaker 00: And the issue before the board was just whether it was obvious to install an 80-year-old device in wet concrete, a mechanical device. [00:20:09] Speaker 00: And the issue before this court is whether there's substantial evidence to support the board's conclusions that that method [00:20:16] Speaker 00: of installing that old device in fresh concrete would have been obvious. [00:20:21] Speaker 00: There are four obviousness rejections that the board relied on. [00:20:25] Speaker 00: It chose to address only four out of 17 obviousness rejections that were in the examiner's right of appeal notice. [00:20:34] Speaker 00: Those obviousness rejections are simple and straightforward. [00:20:38] Speaker 00: And as I said, there's substantial evidence to support them. [00:20:41] Speaker 03: But on that point about the simple and straightforward, do you agree that in order to get to the obviousness conclusion on the motivation to combine, that the board had to assume a relatively high level of skill in the art? [00:20:56] Speaker 00: No. [00:20:56] Speaker 00: This is a low level of skill in the art. [00:20:59] Speaker 00: First of all, all of the references are within the same area of art. [00:21:05] Speaker 00: So there's not a situation where we have to combine references from disparate [00:21:11] Speaker 00: areas of technology. [00:21:12] Speaker 00: This is the same level of area of technology. [00:21:16] Speaker 00: Second, this is not a situation where the level of skill in the art makes any difference. [00:21:20] Speaker 00: These are mechanical devices from the construction area, very simple to understand. [00:21:26] Speaker 00: Third, ADA has never challenged the level of skill in the art, didn't ask the board to make any findings about the level of skill in the art. [00:21:34] Speaker 00: So this was not an issue that they raised before the board so the board can make any findings. [00:21:39] Speaker 00: And finally, this is not an area where it makes any difference. [00:21:43] Speaker 03: Well, I think that's the key question, because obviously, the level of skill in the art is an element of the obviousness finding. [00:21:51] Speaker 03: So you have to know what your threshold, what your beginning point is. [00:21:56] Speaker 03: So the question is, does it really make a difference? [00:22:00] Speaker 00: In this case, it doesn't. [00:22:01] Speaker 00: And there are cases, both parties cited cases in their briefs, although, as I said, this was never raised before the board. [00:22:07] Speaker 00: So it was raised on appeal by ADA for the first time. [00:22:10] Speaker 00: I think this is a good case for holding that it was waived, because the board never had a chance to address it. [00:22:15] Speaker 00: The examiner never had a chance to address it. [00:22:17] Speaker 00: It was raised in one place in the record by us in one of our expert declaration, but never raised by ADA. [00:22:25] Speaker 00: But it doesn't make any difference. [00:22:27] Speaker 00: And there are cases by this court where it says when it doesn't make a difference, because the level of skill in the art is so simple, it doesn't become an issue on appeal. [00:22:37] Speaker 00: And in this case, those cases are... Fortunately, I used to be a construction laborer. [00:22:41] Speaker 02: Excuse me? [00:22:42] Speaker 02: I said, fortunately, I used to be a construction laborer. [00:22:45] Speaker 00: So you might understand what we're talking about here. [00:22:48] Speaker 00: We're talking about installing mechanical devices in wet cement. [00:22:52] Speaker 00: And finally, the cases where it does make a difference, where this court calls it makes a difference, is typically where the trier of fact or the decision maker failed to follow the Graham Factors, [00:23:07] Speaker 00: failed to make findings. [00:23:09] Speaker 00: In this case, we clearly have findings on the various gram factors. [00:23:15] Speaker 00: And the board definitely has explained its reasoning on what the motivation to combine, what the obviousness decision would have been here. [00:23:26] Speaker 00: So this is in a situation where the failure to find the level of skill in the art would have made any difference. [00:23:32] Speaker 00: How was it you said you raised [00:23:34] Speaker 02: level of skill in the art at one point below? [00:23:37] Speaker 00: I said that's the only evidence. [00:23:39] Speaker 00: We had a declaration from an expert. [00:23:42] Speaker 00: And he mentioned what he thought the level of skill in the art should be. [00:23:45] Speaker 00: But it could have been addressed. [00:23:47] Speaker 00: And what did he say it should be? [00:23:48] Speaker 00: He said it would be a person with a bachelor's degree in mechanical engineering or four years of experience in designing these sort of things. [00:23:57] Speaker 00: But that was the only evidence in the record. [00:24:00] Speaker 00: I think that that declaration is in the record in the joint appendix. [00:24:05] Speaker 00: I was a professor of Frey from MIT. [00:24:08] Speaker 00: But he was never made an issue in the reexamination at any point. [00:24:15] Speaker 00: Nobody contended that it made any difference whatsoever. [00:24:21] Speaker 00: So if what would have been an issue, that would have been something the board or the examiner could have addressed. [00:24:28] Speaker 00: So just to conclude my points, the four obvious misrejections [00:24:34] Speaker 00: before the board address and now before this court are straightforward and the board has explained them with reasoning and substantial evidence. [00:24:50] Speaker 00: Just to address what they have said, the combinations based on traffic signs have demonstrated that traffic signs has every limitation of the ADA device [00:25:03] Speaker 00: We have a chart on page 10 that illustrates that in our brief. [00:25:07] Speaker 00: The devices are identical. [00:25:10] Speaker 00: The board then and the examiner looked at Wehmeier and Boghossian for the idea of installing this device in fresh concrete. [00:25:18] Speaker 00: They provided motivation to combine, and they explained with substantial evidence. [00:25:25] Speaker 03: What's your response to a friend on the other side who says Wehmeier actually teaches a way from [00:25:31] Speaker 03: the circumstances in which you have no air trapped underneath. [00:25:37] Speaker 00: And as you pointed out, the Wehmeier also has a disclosure that teaches of minimizing of air. [00:25:46] Speaker 00: And the board has a good explanation. [00:25:48] Speaker 00: They cite a case, I think, the EWP versus Reliance case in their opinion that explains you have technical teachings. [00:25:56] Speaker 00: You don't have to import the entire invention to [00:26:00] Speaker 00: when you're combining references, you can take the teachings from the prior art and you look at it as a whole. [00:26:08] Speaker 00: And what they're doing is they're taking the technical teaching of Weimar, which is the idea of installing this in fresh concrete and combining that with the rest of traffic signs. [00:26:17] Speaker 00: And what ADA is trying to do, which the board disagreed with, is trying to take parts of Weimar, like the part about trapping the air, [00:26:30] Speaker 00: and importing that into this combination. [00:26:35] Speaker 00: And the board explained why it disagreed with that. [00:26:37] Speaker 00: The board gave reason analysis why that was a wrong combination. [00:26:43] Speaker 03: One of the arguments you make is that the 491 doesn't require any [00:26:51] Speaker 03: particular installation order. [00:26:54] Speaker 03: And I have a little bit of a problem with that, because as I read the specification, it seems to say that the whole assembled unit is then placed into the top of the fresh concrete. [00:27:08] Speaker 03: So doesn't that imply that the fasteners have to be attached at the time, or the anchors have to be attached at the time of installation? [00:27:16] Speaker 00: Well, the claim, the argument we make is that claim one doesn't require [00:27:21] Speaker 00: a specific order. [00:27:24] Speaker 00: And that was the board and the examiner both agreed with that argument. [00:27:30] Speaker 00: And I think this court has precedent that explains when you decide whether the steps of a claim method have to be construed to require the order that they're written. [00:27:42] Speaker 00: And first you look and see whether the claim itself has a logic and grammar that dictates the order. [00:27:51] Speaker 00: And in this case, the board did that, and the examiner did that and said, we don't find that this dictates an order. [00:27:58] Speaker 00: And then if you look at the specification, you may read the specification as requiring an order. [00:28:03] Speaker 00: But in this case, the board, I think, correctly held that the specification didn't actually say that an order is required. [00:28:15] Speaker 00: And in this case, there was no disclaimer of any [00:28:20] Speaker 00: specific order in the specification. [00:28:22] Speaker 00: If you look at the prosecution history, ADA has argued that the specification history, they amended the claim to require an order, but they actually didn't amend the claim to require an order. [00:28:34] Speaker 00: They amended the claim to get around a reference, but that wasn't to require an order. [00:28:40] Speaker 03: Well, what does it mean to say the whole inventive unit is placed into the concrete? [00:28:49] Speaker 00: They amended the [00:28:50] Speaker 00: Claim to do what? [00:28:52] Speaker 00: I'm sorry? [00:28:53] Speaker 03: The specification talks about taking the entire assembled inventive unit and placing it into the concrete. [00:29:02] Speaker 00: So there isn't claim 19, that limitation. [00:29:08] Speaker 00: So I would agree that claim 19 does require an order. [00:29:14] Speaker 00: But claim one is the one that does not necessarily [00:29:20] Speaker 00: require an order. [00:29:22] Speaker 00: And because claim one does not have that limitation placing the assembled unit into the concrete. [00:29:33] Speaker 00: And there is also a claim in the canceled claim 581 patent that has more of an applied order to it. [00:29:48] Speaker 00: But claim one. [00:29:49] Speaker 00: I think you can look at that and there's no reference to an assembled unit that is placed in the concrete. [00:29:59] Speaker 00: Now, I'm out of time, but I would like to conclude by basically explaining that these four obviousness rejections that are before the court are straightforward. [00:30:14] Speaker 00: They were explained with reason analysis and [00:30:20] Speaker 00: substantial evidence, we therefore request the court affirm the rejections of claims 1, 2, 19, and 22. [00:30:28] Speaker 00: If the court has no further questions. [00:30:32] Speaker 04: Okay. [00:30:33] Speaker 04: Okay, good. [00:30:33] Speaker 04: Thank you. [00:30:33] Speaker 04: Thank you, Mr. Swain. [00:30:35] Speaker 04: Mr. Sundler. [00:30:38] Speaker 04: Let's see. [00:30:39] Speaker 04: Mr. Walker, would you restore the full rebuttal time if needed? [00:30:49] Speaker 01: Thank you, Your Honor. [00:30:51] Speaker 01: I'd like to start with perhaps where we were going in the rebuttal argument. [00:30:55] Speaker 01: And that's with Zichelli clearly does not disclose slots, discloses holes. [00:31:00] Speaker 01: And the claims are limited on their face to slots. [00:31:04] Speaker 01: And that means you have to get from holes in Zichelli to slots in the claims. [00:31:11] Speaker 01: And there's no way to get there. [00:31:12] Speaker 01: There's no reasoned way to get there. [00:31:14] Speaker 01: The only other reference [00:31:15] Speaker 01: that discloses slots is traffic signs. [00:31:18] Speaker 01: Traffic signs is a road sign. [00:31:19] Speaker 01: It's not a tactile warning system. [00:31:21] Speaker 01: And the reason that's relevant on appeal that you would have slots in traffic signs is to use bars or rods to help align the tiles when you install them. [00:31:29] Speaker 01: But traffic signs, as the board recognized, doesn't tell you how you install those traffic signs road signs. [00:31:36] Speaker 01: And so [00:31:37] Speaker 01: There's nothing to link together that anyone in the tactile warning industry installing tiles in concrete was using these tiles and rods disclosed back in the 1920s for road signs. [00:31:47] Speaker 01: So Kelly doesn't use rods or bars. [00:31:50] Speaker 01: Wehmeyer doesn't use them. [00:31:52] Speaker 01: And Boghossian doesn't use them. [00:31:54] Speaker 01: So to jump from this road sign that used slots for this other purpose to using it in a tactile warning system with slots, there's no linkage there in the analysis. [00:32:03] Speaker 01: There's no evidence to get you there. [00:32:05] Speaker 01: So, and I would respectfully submit that the fact that our patent recognizes that you could use slots in some embodiments and weep holes in some embodiments, just because our inventors recognize that doesn't mean it was recognized by those of skill in the art in the prior art. [00:32:20] Speaker 01: It would be improper to hold our invention disclosure against us to make that combination. [00:32:28] Speaker 01: In terms of the [00:32:29] Speaker 01: level of skill in the art, Mr. Swain correctly indicated they put on evidence that the level of skill in the art could be as low as it's either four or five years of experience in this field. [00:32:39] Speaker 01: That's not, you know, some 25-year veteran. [00:32:42] Speaker 01: That's not some PhD scientist that you may have in other pharmaceutical cases. [00:32:47] Speaker 01: To make the jumps and the leaps in this case to fill that gap and the motivation to do that with that skill we would submit was improper. [00:32:55] Speaker 01: It's a lower level of skill, and there was no level of skill found, like we talked about in our opening. [00:33:01] Speaker 01: And finally... Nor requested. [00:33:04] Speaker 01: Not requested, but again, it is the Patent Office's burden to establish the prima facie case. [00:33:09] Speaker 01: And so we would submit that we didn't have a burden to come forward with evidence. [00:33:12] Speaker 02: Did you indicate that you agreed with the other side's expert? [00:33:18] Speaker 01: No, Your Honor, and actually the way that [00:33:20] Speaker 01: It's a little backwards in the re-exam context, because after a rejection, we respond first, and then the requester responds second. [00:33:28] Speaker 01: So they're actually the respondent after that declaration. [00:33:31] Speaker 04: I gather it wasn't in dispute. [00:33:33] Speaker 04: Are you on this appeal distinguishing between claim one and, for example, claim 19? [00:33:40] Speaker 01: In terms of the rejections, yes, Your Honor, because the only rejection of claim 19 is the rejection based on Zichelli, which has no slots. [00:33:50] Speaker 01: And so in terms of which rejections are applicable, it is a distinction because the traffic signs rejection is not asserted against Claim 19 by the board. [00:34:05] Speaker 01: And that's largely because they rejected that rejection because it requires a composite resin that the board found would not be modified for the traffic signs reference that was metal. [00:34:18] Speaker 01: And so the last point I would just address quickly is the indefiniteness argument. [00:34:23] Speaker 01: The EPI did raise the argument below to the examiner. [00:34:27] Speaker 01: The examiner did not accept it. [00:34:28] Speaker 01: He said a person of skill would be able to determine the meets and bounds of essentially all of the error. [00:34:35] Speaker 01: And then it was not properly cross-appealed. [00:34:38] Speaker 01: And so it wasn't raised to the board. [00:34:39] Speaker 01: So the board didn't consider it. [00:34:41] Speaker 01: And so I suggest it's not before this court for that reason, and also [00:34:46] Speaker 01: So it's not properly before the court. [00:34:47] Speaker 01: But if the court does consider it, I would suggest the indefiniteness issue on that term has underlying factual issues. [00:34:54] Speaker 01: So it's not just a legal matter that should be considered in the first instance here. [00:34:59] Speaker 01: And so I see I'm out of time. [00:35:00] Speaker 01: So we would respectfully request that you reverse the pending rejections on the grounds stated today and in our brief. [00:35:07] Speaker 04: We thank the court. [00:35:08] Speaker 04: Thank you, Mr. Sorensen. [00:35:09] Speaker 04: Mr. Sorensen, this is taken under submission.