[00:00:26] Speaker 04:
If I get a headache later, I know where to find you.

[00:00:28] Speaker 01:
I was wondering what TSA said when their dog alerted to that bag.

[00:00:38] Speaker 03:
OK, the next argued case is number 16, 1664.

[00:00:53] Speaker 03:
CIO Group Incorporated against BioLase Technology.

[00:00:58] Speaker 03:
Mr. Burton.

[00:01:04] Speaker 02:
May it please the court?

[00:01:08] Speaker 02:
Before the court this morning, our legal questions, including whether the preamble, a laser system useful in medicine or dentistry, in the patent in question today,

[00:01:23] Speaker 02:
creates limitations beyond the limitations in the body of the claims.

[00:01:30] Speaker 01:
Additionally... Let me ask you a little preliminary question.

[00:01:34] Speaker 01:
In your blue brief at 30 to 37, you have obvious arguments about independent claims 1 and 11.

[00:01:40] Speaker 01:
Yes.

[00:01:41] Speaker 01:
And at 37, you discuss all the remaining dependent claims in only one paragraph.

[00:01:49] Speaker 01:
I mean, I can read it to you, but it seems awfully conclusory to me.

[00:01:55] Speaker 01:
Why isn't that waived under Smith Klein Beacham, the Apotex, which says, a skeletal argument, really nothing more than an assertion does not preserve a claim?

[00:02:08] Speaker 02:
Your Honor, for this reason, these are all dependent claims.

[00:02:13] Speaker 02:
And we're talking about limitations that really become unimportant if

[00:02:18] Speaker 02:
the other arguments regarding the primary reference are accepted by this court.

[00:02:23] Speaker 02:
And so really our claims do fall, rise or fall on the Pottinger reference, the primary reference cited in this case.

[00:02:32] Speaker 04:
Oh dear Lord, do not give that away.

[00:02:34] Speaker 04:
What is wrong with you?

[00:02:35] Speaker 04:
You have four separate rejections here and not all the claims stand or fall with Pottinger.

[00:02:42] Speaker 04:
For example, you've got the obviousness

[00:02:44] Speaker 04:
of laser smile in Pottinger, which at least affects some dependent claims that are not covered by any of the other rejections.

[00:02:51] Speaker 04:
And I think you have good arguments there.

[00:02:53] Speaker 04:
But did you just throw those all away by your answer to Judge Wallach, where you say they all stand or fall on Pottinger?

[00:02:59] Speaker 04:
What are you doing?

[00:03:01] Speaker 02:
Your Honor, thank you.

[00:03:02] Speaker 02:
And we appreciate the support there.

[00:03:06] Speaker 02:
But we do have, and your Honor's right, but we do focus primarily, we have limitations, we have

[00:03:14] Speaker 02:
uh, everything else that, that, uh, we want to focus here on, on potter because that is the primary reference.

[00:03:21] Speaker 04:
Well, you want to focus on it, but did you just answer him saying everything stands or falls on that thing you want to focus on and give away your dependent claim arguments, which are based, there are some dependent claims that are only standard falling on certain combinations of art.

[00:03:39] Speaker 04:
and maybe not every combination of art is affirmable here.

[00:03:43] Speaker 02:
No, but all the combinations do have Pottinger in them.

[00:03:46] Speaker 04:
Yes.

[00:03:46] Speaker 02:
And so we're talking about a reference that is unrelated.

[00:03:50] Speaker 02:
We think it's not analogous.

[00:03:51] Speaker 04:
Oh my goodness.

[00:03:52] Speaker 04:
Yes, but I know.

[00:03:53] Speaker 04:
But that's not my point.

[00:03:54] Speaker 04:
My point isn't whether or not I'm going to let you make your Pottinger argument.

[00:03:57] Speaker 04:
My point is, did you just hang every dependent claim, every independent claim, on that Pottinger reference?

[00:04:04] Speaker 02:
No, Your Honor, but it is true.

[00:04:06] Speaker 02:
We did not focus our arguments on

[00:04:09] Speaker 02:
on those dependent claims.

[00:04:11] Speaker 04:
What do you mean you didn't focus it?

[00:04:12] Speaker 04:
You argued, for example, with regard to Pottinger and Lasersmile, for example, that the board articulated no motivation to combine anywhere, an argument with I happen to agree with.

[00:04:27] Speaker 04:
That has nothing to do with what Pottinger actually discloses, really.

[00:04:30] Speaker 04:
It has nothing to do with whether I would affirm or reject the anticipation argument.

[00:04:36] Speaker 04:
And it contains certain dependent claims that are nowhere else rejected under any of the other arguments.

[00:04:43] Speaker 04:
So if you succeed on that particular argument, you could actually walk out of here with 1, 2, 3, 4, 5, 6, 7, 8, 9, 10 still valid claims.

[00:04:57] Speaker 02:
Absolutely, Your Honor.

[00:04:58] Speaker 02:
And there is no motivation, and we do discuss that.

[00:05:03] Speaker 02:
Pottinger, again, is not analogous.

[00:05:06] Speaker 02:
To combine that with the other references doesn't make sense here.

[00:05:12] Speaker 03:
Let's talk about the independent claims, claims 1 and 11, because certainly there is an argument that if you lose on those claims that the dependent claims would have a quite different hurdle to overcome.

[00:05:29] Speaker 03:
So proceed with your argument.

[00:05:31] Speaker 02:
Thank you, Your Honor.

[00:05:36] Speaker 02:
Again, the preamble here is where we're going to start.

[00:05:41] Speaker 02:
There are other legal issues here regarding store and storage, as well as the adapted four language that we'll get into.

[00:05:48] Speaker 02:
But quite simply, the question here is whether the packaging and laser module disclosing product or constitute a laser system useful in medicine or dentistry.

[00:06:03] Speaker 02:
And based on this court's decision in Corning Glassworks, this court must review the entire patent to understand what the inventor actually invented and what it intended to claim.

[00:06:17] Speaker 02:
In that case, Your Honors, it's quite analogous to this one because it addresses claim language that has a preamble, an optical waveguide with

[00:06:32] Speaker 02:
limitations in the body A and B regarding a cladding layer and a core formed a few silica.

[00:06:40] Speaker 02:
And in this case Sumitomo asserted a prior reference for fiber, for glass fiber that met the limitations A and B. And they argued that it also could act as an optical waveguide for a limited period of time.

[00:06:59] Speaker 02:
This court said

[00:07:00] Speaker 02:
No litmus test can be given with respect to whether the introductory words of a claim provide limitations.

[00:07:09] Speaker 02:
The effect preamble language should be given can be resolved only on review of the entirety of the patent to gain an understanding of what the inventors actually invented.

[00:07:21] Speaker 02:
Here the specification makes clear the inventors working on the particular problem of an effective optical communication system,

[00:07:29] Speaker 02:
general improvements.

[00:07:31] Speaker 02:
Similarly here, Your Honors, the inventor, Dr. Chow, was not working on the particular problem of a laser system, not on general improvements to a laser module or even a laser in general.

[00:07:55] Speaker 03:
But your claim isn't limited to that use.

[00:07:59] Speaker 03:
the law, long-standing law forever.

[00:08:02] Speaker 03:
If you claim a product or a system, of course you have to identify a use in the specification, and then you claim it and it's yours for all uses.

[00:08:14] Speaker 03:
And so to say that it's useful for the use for which we developed it as opposed to limiting it to that use, you're not telling us that this style of

[00:08:28] Speaker 03:
claim writing was intended, but I think didn't succeed, to limit the claim to a particular use?

[00:08:39] Speaker 02:
We think, again, as in the Corning Glass Works, the court says you need to look at the entirety of the patent, including the specification.

[00:08:49] Speaker 01:
But if you deleted that disputed phrase from the specification,

[00:08:56] Speaker 01:
Would it affect the structural definition or operation of the laser?

[00:09:00] Speaker 02:
Well, it could be incomplete.

[00:09:03] Speaker 02:
If the court looks at the specification here, it describes an entire laser system.

[00:09:10] Speaker 02:
And we are talking about just limitations A, B, C, and D. And it is not a working laser system.

[00:09:19] Speaker 02:
And that's what's addressed in the patent at whole.

[00:09:22] Speaker 02:
And I think the point is made by looking at this reference potter.

[00:09:25] Speaker 02:
That's in the claims.

[00:09:26] Speaker 01:
That's not in the specification.

[00:09:30] Speaker 01:
I'm sorry.

[00:09:30] Speaker 01:
I said that the description of the patent as a whole is in the claims.

[00:09:35] Speaker 01:
No, Your Honor.

[00:09:37] Speaker 02:
Well, in the claims, yes, with the preamble, a laser system useful for medicine in medicine and dentistry.

[00:09:45] Speaker 02:
That gives life and meaning, to use the words of Corning Glassworks, to this patent claim.

[00:09:53] Speaker 03:
But that style, just in ordinary language, is not limiting to that use.

[00:10:00] Speaker 03:
That's the problem, isn't it?

[00:10:05] Speaker 02:
Again, we are arguing that it does provide an additional limitation.

[00:10:08] Speaker 02:
Just as in Corning, where we have an optical waveguide, there was another

[00:10:15] Speaker 02:
fiber that met limitations of A and B. But it could not function as in optical waveguide as described in the specification.

[00:10:27] Speaker 04:
Isn't the difference though between Corning and this case that Corning's preamble provided an additional structural limitation and your limitation is the traditional intended use limitation that Judge Newman has referenced and that has

[00:10:44] Speaker 04:
in almost every patent I've ever read been present, a statement of intended use appears in the preamble.

[00:10:50] Speaker 04:
And those are not generally viewed as limitations.

[00:10:53] Speaker 04:
And the difference I see for you between Corning, in this case, is Corning provided an additional structural limitation in the preamble.

[00:11:01] Speaker 04:
And yours is just a statement of intended use.

[00:11:05] Speaker 02:
Your Honor, not just a statement of intended use.

[00:11:08] Speaker 02:
It also says a laser system.

[00:11:10] Speaker 02:
And in the specification, it talks about

[00:11:13] Speaker 02:
semiconductor-based laser systems provided that are useful for tissue cutting and therapeutics in medical and dental treatment environments.

[00:11:23] Speaker 04:
Well, the laser system isn't the issue.

[00:11:27] Speaker 04:
The question is whether it should be limited to useful in medicine or dentistry, as I understood your argument.

[00:11:32] Speaker 02:
They need to be read together.

[00:11:34] Speaker 04:
No, actually they don't.

[00:11:36] Speaker 04:
There are lots of cases we've decided where portions of a preamble are legitimately

[00:11:41] Speaker 04:
limitations, but other portions are statements of intended use and not limitations.

[00:11:47] Speaker 04:
So, I mean, I don't understand your argument.

[00:11:49] Speaker 02:
No, I understand that in some cases that may be true, but in this case, if you look at the entirety of the patent, as Corning says we must do, it talks about a laser system.

[00:12:00] Speaker 02:
The entire description in the specification concerns a laser system useful for medical and medicine and dentistry.

[00:12:10] Speaker 04:
Are the other prior art references here not to a laser system at all?

[00:12:16] Speaker 04:
I'm sorry?

[00:12:17] Speaker 04:
Are the prior art references here not to a laser system?

[00:12:21] Speaker 04:
Because they look to me to be to a laser system, just not useful in medicine and dentistry.

[00:12:27] Speaker 02:
That's exactly right, because they don't meet the full limitation of that preamble.

[00:12:31] Speaker 02:
A laser system in medicine and dentistry.

[00:12:33] Speaker 04:
That's like saying if any word in the preamble is a limitation, every word has to be.

[00:12:38] Speaker 02:
I don't think I'm saying that.

[00:12:39] Speaker 02:
I'm saying that's the case here, Your Honor, because of what this patent is directed to.

[00:12:44] Speaker 02:
And Potterger takes one component of a laser system and puts it in the package.

[00:12:53] Speaker 04:
You have a lot of different arguments, and you have only three minutes left.

[00:12:56] Speaker 04:
And that's your rebuttal time.

[00:12:57] Speaker 04:
So is there any other argument you'd like to make today to us other than this one?

[00:13:03] Speaker 02:
Yes, and just briefly, and I will try to save a little bit of time for rebuttal.

[00:13:07] Speaker 02:
We're looking at one of the claim limitations uses the term store and storage.

[00:13:15] Speaker 02:
And that can only happen here, in this case, under PODEC, or if you include holding something in your hand, meaning the fiber on the spool, if that is to store, or if that constitutes storage.

[00:13:31] Speaker 02:
And we would submit that simply can't be.

[00:13:33] Speaker 02:
Additionally, the words adapted for,

[00:13:35] Speaker 02:
in the claim language adapted for gripping by a human hand would be written out of the claim entirely if it were interpreted to address anything that can be gripped whether or not it's designed for gripping and I'll reserve the rest of my time.

[00:13:53] Speaker 03:
Okay have you made all the points that you need to have you made all the points you need to make?

[00:13:58] Speaker 02:
I'd love more time your honor but I would like to save a couple of minutes for eval.

[00:14:03] Speaker 03:
Alright we want to be sure that we cover the

[00:14:05] Speaker 03:
the issues.

[00:14:07] Speaker 03:
Okay.

[00:14:08] Speaker 03:
Mr. Raskin?

[00:14:13] Speaker 00:
Good morning, Your Honors.

[00:14:14] Speaker 00:
May it please the Court?

[00:14:17] Speaker 00:
I think I'd like to begin my argument by addressing Judge Moore's comments regarding the motivation to combine.

[00:14:27] Speaker 00:
That would be awesome.

[00:14:27] Speaker 04:
At least one of you will.

[00:14:28] Speaker 04:
Go ahead.

[00:14:29] Speaker 00:
Laser smile and potter.

[00:14:32] Speaker 00:
First off, I didn't see any

[00:14:35] Speaker 00:
mentioned in Appellant's brief addressing or contesting a motivation to combine.

[00:14:42] Speaker 00:
But their argument that they were making was an inoperability argument, that if you modify laser smile to include the spool of potterger, it wouldn't work.

[00:14:54] Speaker 00:
And insofar as that constitutes a motivation to combine argument, then I agree that they made that argument.

[00:15:02] Speaker 00:
using the words motivation to combine.

[00:15:04] Speaker 00:
I don't see that anywhere in either their opening brief or their reply brief.

[00:15:09] Speaker 04:
But on that point, both the examiner during the... I guess what I sort of thought they were making, where they say at pages 35 and 36 of the blue brief, the teachings of Pottinger and Lasersmile teach away from the proposed combination, I kind of maybe wrongly

[00:15:31] Speaker 04:
assumed that what they were arguing here is there wouldn't be a motivation to combine these two things because of the manner in which they each disclose.

[00:15:42] Speaker 04:
But I think, and in the very end it says, you know, it teaches away from this combination.

[00:15:47] Speaker 04:
I think that's where I got the idea from, that they were making that argument.

[00:15:52] Speaker 00:
Okay.

[00:15:52] Speaker 00:
So let me, I'll address that portion of their brief.

[00:15:55] Speaker 00:
So what Appellant is arguing there is that

[00:15:59] Speaker 00:
when that laser smile, and this is I'm paraphrasing from their brief, that the intended purpose of laser smile is to make fiber easily available when needed and to retain the fiber closer to the device.

[00:16:12] Speaker 00:
But if you look at the page of the appendix to which they cite, which is appendix 152, that doesn't appear anywhere on that page of the appendix.

[00:16:22] Speaker 00:
There's nothing in the record that says the intended purpose of laser smile is to keep the

[00:16:28] Speaker 00:
this extra fiber close to the device.

[00:16:30] Speaker 03:
But they talk generally about the purpose and the use and the use of the fiber and so on.

[00:16:37] Speaker 03:
And they say that this is limiting and that the prior art has not developed laser uses in the fiber modules for the medical dental use.

[00:16:51] Speaker 00:
That's true, Your Honor.

[00:16:53] Speaker 03:
Do you agree that that's

[00:16:57] Speaker 03:
Novel?

[00:17:00] Speaker 00:
That, I'm sorry, that what is novel?

[00:17:02] Speaker 03:
Well, they're saying that their preamble is limiting.

[00:17:07] Speaker 00:
Oh, okay, the preamble issue.

[00:17:09] Speaker 00:
We believe that the preamble is not limiting.

[00:17:12] Speaker 00:
We think that the Corning Glassworks case that appellant relies on almost exclusively is very easily distinguishable.

[00:17:19] Speaker 00:
In the Corning's Glassworks case, the limitation in the preamble was optical waveguide.

[00:17:25] Speaker 00:
And the court, after reviewing the specification of that patent, determined that the optical waveguide was a critical part of the invention, but the optical waveguide didn't appear anywhere else in the claim and therefore added a new limitation to the claim and breathed life into the claim.

[00:17:43] Speaker 03:
Well, that's a specific limitation.

[00:17:44] Speaker 03:
Suppose the preamble, instead of saying a laser system useful in medicine, said a laser system for use,

[00:17:53] Speaker 03:
in medicine and dentistry.

[00:17:55] Speaker 03:
That would be quite a different situation, would it not?

[00:17:59] Speaker 00:
I don't think it would, Your Honor.

[00:18:00] Speaker 00:
I think in our situation, you have a preamble that says, laser system useful in medicine or dentistry, or using Your Honor's hypothetical laser system for use in medicine or dentistry.

[00:18:12] Speaker 00:
But in the body of the claim, there is already a limitation that says that the system must have a laser module that produces light

[00:18:23] Speaker 00:
that is usable for therapeutic purposes in medicine or dentistry.

[00:18:27] Speaker 00:
So we already have that limitation in the claim.

[00:18:31] Speaker 00:
We're not saying that this system can have nothing to do with medicine or dentistry.

[00:18:36] Speaker 00:
It certainly does.

[00:18:37] Speaker 00:
There needs to be a laser module that's capable of producing light that is usable in medicine or dentistry.

[00:18:44] Speaker 03:
So why the emphasis then on the preamble at all?

[00:18:48] Speaker 00:
Because what a pound is trying to do is to

[00:18:52] Speaker 00:
is to narrow the scope of this claim to systems that you can put in a medical office and use on a patient.

[00:18:59] Speaker 01:
And if you read the declarations that they submitted in support of their... I mean, the analogy I keep thinking is in dentistry and everything else, when people started taking old dental tools and using them to do hobby work or whatever is usable in other things.

[00:19:20] Speaker 00:
Right.

[00:19:20] Speaker 00:
That's correct, Your Honor.

[00:19:22] Speaker 00:
What they're trying to say is, and when you read the declarations that they submitted from dentists, for example, and those dentists say, well, this is too bulky to use in a dentist's office, or there's no laser emission control, and therefore it wouldn't work.

[00:19:38] Speaker 00:
Those are not elements of the claim.

[00:19:40] Speaker 00:
The claims don't require laser emission control.

[00:19:43] Speaker 00:
They don't require a power source.

[00:19:45] Speaker 00:
They don't require that the system be easily maneuverable or comfortable.

[00:19:52] Speaker 00:
All they require are these four or five elements, a housing, a laser module, fiber, and with respect to claim 11, a hand piece.

[00:20:02] Speaker 00:
If those elements are found in the claim or in the prior art, then the claim is anticipated or if they're found in a combination, they're rendered obvious.

[00:20:11] Speaker 00:
The preamble doesn't add any additional limitations or features to this claim that aren't already in the body of the claim.

[00:20:22] Speaker 00:
is trying to concoct some additional limitations that would exist if the preamble is found to be a limitation, such as a laser emission control, things like that.

[00:20:34] Speaker 00:
But the preamble itself, useful in medicine or dentistry, that's already a limitation of the claim.

[00:20:43] Speaker 03:
But it uses the same words.

[00:20:44] Speaker 03:
It says usable.

[00:20:46] Speaker 03:
It doesn't limit the use.

[00:20:49] Speaker 03:
And that's really to try to understand where there may have been a patentable contribution.

[00:20:57] Speaker 00:
Is it lost in the generality of the claim, because it just says you put your laser in a module that you can... No, I don't believe it is, Your Honor, because the claim body itself requires a laser module that produces light that's capable for use in medicine or dentistry.

[00:21:15] Speaker 00:
And then it requires that fiber

[00:21:18] Speaker 00:
coming out of the laser module and the fiber terminating in a handpiece.

[00:21:22] Speaker 00:
And then it requires the extra fiber, the outer casing, all of these other things.

[00:21:26] Speaker 00:
And when those elements are all put together, you have a system.

[00:21:30] Speaker 00:
Okay, now whether that system is useful in medicine or dentistry, and maybe we're wasting some time here.

[00:21:37] Speaker 00:
I'm not suggesting that you're wasting time, but because I don't think, in the end, I don't think it matters.

[00:21:42] Speaker 03:
Well, then why aren't they entitled in that case to the claims?

[00:21:47] Speaker 00:
Well, because Potterger 1, the reference, discloses a system that's useful in medicine or dentistry.

[00:21:54] Speaker 04:
Usable.

[00:21:55] Speaker 04:
Not useful.

[00:21:55] Speaker 04:
The claim requires usable.

[00:22:00] Speaker 04:
Useful is in the preamble.

[00:22:02] Speaker 04:
The claim limitation says usable for therapeutic purposes in medicine or dentistry.

[00:22:09] Speaker 04:
Does Pottinger disclose a laser system which is actually usable

[00:22:15] Speaker 04:
for therapeutic purposes.

[00:22:17] Speaker 00:
Well, the limitation that you're referring to, Your Honor, is a laser module that's usable, not an entire laser system.

[00:22:24] Speaker 00:
But in either event, yes, we need to show that Potterger 1, with respect to the anticipation argument, that Potterger 1 includes a laser module that's usable in medicine or dentistry.

[00:22:36] Speaker 00:
And both the examiner and the PTAB certainly has substantial evidence on which to base their conclusions that it does.

[00:22:44] Speaker 00:
That's the laser module.

[00:22:46] Speaker 00:
Well, first of all, Your Honor, we have a waiver argument with respect to this.

[00:22:52] Speaker 04:
Get me on that.

[00:22:53] Speaker 00:
Not enough time.

[00:22:54] Speaker 00:
But turning to the actual substance of that argument, the LASER, the Potterger one discloses a LASER 2000 manufactured by Lucent as the preferred embodiment of the LASER module.

[00:23:10] Speaker 00:
There is evidence in the record demonstrating, and this is the actual, this is the spec sheet for that laser module, and that's page 594 of the appendix.

[00:23:25] Speaker 00:
that the laser module 2000 operates a light at a wavelength of 1310 nanometers.

[00:23:32] Speaker 00:
Okay, because what we're talking about in this element of the claim is the laser module producing light that's usable in medicine or dentistry.

[00:23:40] Speaker 00:
So what the laser 2000 product literature says at 594 is that it's designed for 1310 nanometer single mode fiber optic applications.

[00:23:51] Speaker 00:
And then the Weir Bellower article, which is page 1865, states that light at that wavelength is used in surgical contexts.

[00:24:02] Speaker 04:
Well, the one thing that is different about this case vis-a-vis our preamble case law, which I don't think is really the way it's argued here, but one thing that's different between this case and other precedent where we've held the preamble is not a limitation if it's just a statement of intended purpose,

[00:24:21] Speaker 04:
is this case is as close as you can get to antecedent basis without actually being antecedent basis.

[00:24:27] Speaker 04:
Certainly we have a lot of preamble cases that say if the body refers for antecedent basis back to something in the preamble, then it's a limitation.

[00:24:35] Speaker 04:
The preamble is in fact a limitation, hands down.

[00:24:38] Speaker 04:
But this case, it's not exactly antecedent basis.

[00:24:44] Speaker 04:
But unlike statements of just general intended purpose, which are usually limited to the preamble,

[00:24:50] Speaker 04:
In most of the cases where we've been looking at these questions of is the preamble limitation, here you have a statement of intended purpose in the preamble and then you actually have almost identical repetition of that statement in one of the claim elements.

[00:25:08] Speaker 04:
does that create a slightly different situation than all the cases where we've rejected the idea that it's just a statement of intended purpose?

[00:25:15] Speaker 00:
Yeah, and Your Honor, I thought about that as well, the antecedent basis question, and I don't believe that the preamble here provides antecedent basis.

[00:25:23] Speaker 04:
No, technically I don't think it does, technically, because it doesn't say the, you know, whatever, whatever, whatever, referring back to.

[00:25:29] Speaker 04:
So I think it, from a very prosecution-oriented technical argument, I don't know that it does,

[00:25:35] Speaker 04:
But should it nonetheless sort of fall under that rubric because clearly what they are saying is that this statement of intended purpose is more than just a generic statement of intended purpose because they've actually implored and imported it to some extent into at least one of the elements of the claim.

[00:25:54] Speaker 00:
I respectfully believe that it should not.

[00:25:57] Speaker 00:
I do not think that this case is different from those other cases that you're suggesting, and I certainly think it's much different.

[00:26:03] Speaker 04:
Well, it is different from the factual statement that those other cases never use repeat the words of intended purpose anywhere in the actual body.

[00:26:11] Speaker 04:
So it is different.

[00:26:13] Speaker 04:
The question is, does that difference make a difference?

[00:26:16] Speaker 00:
I don't think it does make a difference, Your Honor.

[00:26:18] Speaker 00:
I don't, because I think the limitation in the body of the claim that the

[00:26:23] Speaker 00:
laser module be capable of producing laser light that's usable for therapeutic purposes in medicine or dentistry, of course that needs to be found in the prior art.

[00:26:34] Speaker 00:
And once that is found in the prior art and combined with the other elements, you end up with a system that's useful in medicine or dentistry.

[00:26:44] Speaker 00:
I just don't think it matters that much.

[00:26:46] Speaker 04:
Well that's not what the PTO found though, right?

[00:26:47] Speaker 04:
The PTO didn't find

[00:26:49] Speaker 04:
that the Pottinger discloses a laser system useful in medicine or dentistry.

[00:26:55] Speaker 04:
Didn't they find?

[00:26:56] Speaker 04:
We don't have to decide whether the Pottinger system finds that, because the preamble is not a limitation.

[00:27:01] Speaker 00:
No, I believe the- Did they actually, in the alternative, make that finding?

[00:27:05] Speaker 00:
That's at pages 13 to 14 of the appendix, which happened to be- Thank you.

[00:27:11] Speaker 00:
Which happened to be pages 12 to 13 of the decision.

[00:27:19] Speaker 00:
So if you look at starting on page 13 with the paragraph that begins with consequently, I'm sorry, this is page 14 of the Appendix, page 13 of the PTAB's decision.

[00:27:31] Speaker 00:
The consequently is referring to the fact that Appellant didn't even make this argument.

[00:27:39] Speaker 00:
And then when you get to the bottom of that,

[00:27:42] Speaker 00:
that paragraph where at the last sentence, since the laser module depicted in Figure 1 of Pardigger 1 satisfies these two limitations from the body, it inherently satisfies the preamble of the claim.

[00:27:56] Speaker 00:
So, and as well as page 16 of the appendix, the very last sentence

[00:28:07] Speaker 00:
where it says, therefore, the requester and the examiner have shown that figure one of Potter depicts a laser system useful in medicine or dentistry, as required in claim one.

[00:28:18] Speaker 00:
So I believe both at the PTAB that the PTA both rejected their preamble argument, but then went on to find that it doesn't matter, which is my point.

[00:28:33] Speaker 00:
This whole, if there's any question about whether Potterger 1 does disclose a system that's useful in medicine or dentistry is set forth in the preamble, if we're giving the preamble weight, the obvious combination of LaserSmile and Potterger clearly does show that.

[00:28:49] Speaker 00:
I mean, LaserSmile is a product that was sold by our client, which goes in the dentist's office and has everything.

[00:28:56] Speaker 00:
The only thing that LaserSmile doesn't have is a removable spool.

[00:29:00] Speaker 00:
And what the examiner and what the PTAB found was that it would be obvious to modify that, to have a removable spool using Potterger 1.

[00:29:09] Speaker 04:
Well, in fact, Potterger even suggests it, right?

[00:29:11] Speaker 04:
Potterger suggests there's a problem, doesn't it?

[00:29:14] Speaker 00:
Right, exactly, with the falling away.

[00:29:17] Speaker 00:
Right, exactly.

[00:29:18] Speaker 04:
They suggest at least a reason to try to find another way to do it.

[00:29:22] Speaker 00:
Right, so if there's any issue with whether Potterger 1 satisfies the preamble,

[00:29:27] Speaker 00:
assuming we find that the preamble is a limitation to which we don't agree, then we can always turn to the combination of laser smile and potter.

[00:29:40] Speaker 00:
I see that I'm over.

[00:29:41] Speaker 03:
Well, whatever else you need to tell us, and we will enlarge your opponent's time somewhat.

[00:29:47] Speaker 03:
Is there any other point you need to make?

[00:29:48] Speaker 00:
No, the two points that Appella made, the storage and the adapted for, I'm happy to rely on Bruce.

[00:29:59] Speaker 03:
Okay.

[00:30:00] Speaker 03:
Thank you.

[00:30:05] Speaker 03:
Mr. Burton.

[00:30:07] Speaker 02:
Thank you.

[00:30:11] Speaker 02:
Your Honours, quite simply the potter does not meet the other elements of excluded, let me rephrase, it does not meet the preamble simply because it's not a system that can be useful.

[00:30:28] Speaker 02:
in medicine or dentistry.

[00:30:30] Speaker 02:
It's much like a patent claim that goes to a television.

[00:30:35] Speaker 02:
If you have packaging, the ship's just the LEDs for an LED television.

[00:30:41] Speaker 02:
That's not going to meet, it's not going to meet the preamble that says a television.

[00:30:48] Speaker 03:
But how does that, even on your position of the preamble, how does that help you with the prior art?

[00:30:57] Speaker 02:
I'm not understanding the question, but Potterger does not have anything but one component of a laser system.

[00:31:06] Speaker 02:
It's not useful because it can't be used as it is.

[00:31:09] Speaker 02:
It's in a package.

[00:31:12] Speaker 02:
It doesn't have any power supply.

[00:31:14] Speaker 02:
It doesn't have any means of applying the laser through a handpiece or anything else.

[00:31:20] Speaker 02:
It's not a usable system.

[00:31:23] Speaker 02:
All it is is a laser module.

[00:31:26] Speaker 02:
in a package for shipping.

[00:31:29] Speaker 02:
It is not a laser system useful in medicine or dentistry.

[00:31:33] Speaker 02:
Now, moving on, and I just want to emphasize there are at least two other claim elements that are not met by Potokor.

[00:31:44] Speaker 02:
And I only mentioned them very briefly.

[00:31:46] Speaker 02:
But again, one of them is a fiber module having an outer casing, attachable to and removable from the housing, and configured to store.

[00:31:56] Speaker 02:
amounts of extra fiber.

[00:31:58] Speaker 02:
In claim 11, it describes it as a fiber storage module sufficient to store significant amounts of fiber.

[00:32:09] Speaker 02:
Potterger, as has been mentioned, talks about how that optical fiber must be grasped and held in place when the spool is manually handled.

[00:32:19] Speaker 02:
It says that the wound optical fiber must be held onto the spool until the spool is attached to the base plate.

[00:32:26] Speaker 02:
This must be storage when it's attached and when it's removed.

[00:32:30] Speaker 02:
Storage cannot include grasping that fiber in the hand.

[00:32:35] Speaker 02:
Now, in addition, you can claim 11.

[00:32:38] Speaker 04:
Well, but the board, look, to the extent that the board found that Pottinger is configured to store a significant volume of extra fiber, I don't see any support in the record for that.

[00:32:50] Speaker 04:
But what I do see support in the record for, substantial evidence anyway,

[00:32:54] Speaker 04:
Is there finding that spool 22 is configured to allow for storage of fiber around the cylindrical wall?

[00:33:02] Speaker 04:
So why is that not the substantial evidence necessary to affirm?

[00:33:07] Speaker 02:
The board is leaving out part of the claim element, which is detachable and removable.

[00:33:14] Speaker 02:
And it should be storing when it's both attached and removed from the housing configured to store.

[00:33:22] Speaker 02:
And so it's just ignoring

[00:33:23] Speaker 02:
That part, when that spool is removed from the housing, it must be held by the hand.

[00:33:29] Speaker 02:
That's what Potterger says.

[00:33:30] Speaker 02:
And so the board is overlooking that particular claim limitation in that element that says that the module must be attachable and removable and configured to store.

[00:33:43] Speaker 02:
And that's what it's leaving out there.

[00:33:46] Speaker 02:
And then the last claim element that is simply not met as mentioned before is adapted for the hand.

[00:33:53] Speaker 02:
this court in Inry Man says that the phrase adapted to generally means made to, designed to, configured to.

[00:34:04] Speaker 02:
And in this case capable of is not sufficient where the inventor was clearly talking about a device that provides maximum manual dexterity and maneuverability during use for a medical or

[00:34:22] Speaker 04:
Can I ask why it is that you think that it has to have extra storage volume even when detached?

[00:34:33] Speaker 04:
The claim says a fiber storage module comprising a module housing attachable and detachable from the casing and having a volume sufficient to store extra fiber.

[00:34:45] Speaker 04:
It looks like those are two separate limitations and I don't know

[00:34:50] Speaker 04:
that the second one has to be true in all of the variations of the first one.

[00:34:54] Speaker 04:
So why do you think it does?

[00:34:56] Speaker 02:
Well, with respect, Your Honor, I believe that's worded to modify the housing that is attachable and detachable.

[00:35:04] Speaker 02:
If you're going to remove fiber or one module or spool, as the case may be, with fiber on it and grass replaced, then you're going to store it.

[00:35:15] Speaker 04:
I definitely agree it's modifying module, but I didn't

[00:35:20] Speaker 04:
necessarily understand why it had to be true when it's both attached and detached, even though attachable and detachable were a separate element.

[00:35:28] Speaker 02:
Well, the module, Your Honor, is described as comprising housing, attachable and detachable.

[00:35:36] Speaker 02:
And that's where I would suggest that that happens.

[00:35:41] Speaker 03:
Okay.

[00:35:41] Speaker 03:
Okay.

[00:35:42] Speaker 03:
Thank you, Mr. Burton.

[00:35:44] Speaker 03:
Mr. Raskin, you did get into a new issue or so.

[00:35:48] Speaker 03:
Are you content to stay with the brief?

[00:35:50] Speaker 03:
Yes.

[00:35:52] Speaker 03:
Okay.

[00:35:52] Speaker 03:
Thank you.

[00:35:53] Speaker 03:
The case is taken under submission.

[00:35:55] Speaker 03:
Thank you.