[00:00:40] Speaker 01:
The next case is in Ray Brandt et al.

[00:00:43] Speaker 01:
2016-26-01.

[00:00:49] Speaker 01:
Mr. Reginelli, when you're ready.

[00:00:58] Speaker 04:
Good morning.

[00:00:59] Speaker 04:
Art Reginelli for Firestone Building Products.

[00:01:05] Speaker 04:
May it please this Court, there are

[00:01:07] Speaker 04:
three issues that I would like to address with this court today.

[00:01:11] Speaker 04:
Three errors that were made by the board.

[00:01:12] Speaker 04:
The first error is the fact that the board supported or attempted to support their decision with law that does not in fact support their decision.

[00:01:23] Speaker 04:
They made legal error in attempting to support their decision.

[00:01:27] Speaker 04:
And that decision is with respect to prima facie obviousness in view of the fact that... Look, you've got a claim

[00:01:34] Speaker 01:
and principal reference that rub right up against each other is a negligible difference.

[00:01:41] Speaker 04:
Correct.

[00:01:42] Speaker 01:
Doesn't that sound like at least obviousness if not anticipation?

[00:01:48] Speaker 04:
What it sounds like is that there's a negligible difference and that they're very close.

[00:01:52] Speaker 04:
And what it sounds like is if we stand here today now knowing what the client's invention is... That's what we have here, right?

[00:01:59] Speaker 03:
We have the two ranges that rub against each other.

[00:02:02] Speaker 04:
Oh, absolutely.

[00:02:02] Speaker 04:
Yes.

[00:02:02] Speaker 03:
And that's negligible.

[00:02:04] Speaker 04:
Yes, absolutely.

[00:02:05] Speaker 04:
You stated the facts correctly.

[00:02:07] Speaker 04:
That's correct.

[00:02:08] Speaker 04:
The ranges do not overlap, though.

[00:02:10] Speaker 04:
Okay.

[00:02:11] Speaker 03:
And as we stand here today... Shouldn't that be the basis for a prime official showing them obviousness?

[00:02:16] Speaker 03:
No, it should not.

[00:02:17] Speaker 03:
Why?

[00:02:17] Speaker 03:
Why?

[00:02:18] Speaker 03:
Okay.

[00:02:20] Speaker 04:
Let me... Well, first of all, first of all, there is no support in the case law for that.

[00:02:25] Speaker 03:
Let's say that they did overlap by 0.00001% or... Yes.

[00:02:32] Speaker 03:
Would you say that there is obviousness in that situation?

[00:02:37] Speaker 04:
Yes, and let me step back to answer that question, okay?

[00:02:42] Speaker 04:
So, you know, we're operating under the construct of CRAM and statute 103, okay?

[00:02:51] Speaker 04:
And under that construct, we know, and I don't mean to bore you with details that you know very, very well, but we have to ascertain the differences between the claimed range and the prior

[00:03:01] Speaker 04:
ascertain the level of skill in the art.

[00:03:05] Speaker 04:
Then we have to go to the statute and say would it have been obvious to point of skill in the art to have made that modification in this instance.

[00:03:15] Speaker 04:
In order to support that rejection, you need a why, you need a reason, you need a because.

[00:03:23] Speaker 04:
Usually that's in the form of motivation, likelihood of success.

[00:03:28] Speaker 04:
We know that there's a long line of older cases that carve down an exception when we're talking about ranges.

[00:03:36] Speaker 04:
These are all pre-52 Act cases that said, look, we were dealing with a range here.

[00:03:42] Speaker 04:
There's this exception because remember there was an obviousness under the statute.

[00:03:45] Speaker 04:
We have this exception in the law that now you have to prove criticality.

[00:03:53] Speaker 04:
You move then into the 52 Act and what Graham tells us in 1965,

[00:03:58] Speaker 04:
And this concept that overlapping ranges or ranges that are subsumed, the claimed range is subsumed by the prior art range, you have this prima facie obviousness.

[00:04:10] Speaker 04:
And at the outset of this case, I will admit to you, I scratched my head.

[00:04:16] Speaker 04:
How do you fit that into the construct of Graham and 103 and providing rationale there?

[00:04:23] Speaker 04:
And this court provided that rationale.

[00:04:27] Speaker 04:
a few years ago in Inray Peterson.

[00:04:31] Speaker 01:
What the court did is that court married the concept of prima facie obviousness from the case law with... Is there a substantial advantageous difference in what you're claiming compared with what is closely adjacent to it in the pipeline?

[00:04:49] Speaker 04:
There's no evidence in the record of that, Your Honor.

[00:04:50] Speaker 04:
Sorry?

[00:04:51] Speaker 04:
There is no evidence of that in the record.

[00:04:53] Speaker 04:
So if I may continue,

[00:04:56] Speaker 04:
So Inray Peterson marries the idea that you're going to follow the construct of Graham in 103 and it supplies the motivation.

[00:05:08] Speaker 04:
It was Inray Peterson that supplies the motivation so that you take yourself through the construct and it answers the because.

[00:05:15] Speaker 04:
Why is it obvious?

[00:05:17] Speaker 04:
What the Peterson court said was that it is routine and it is normal for one of ordinary skill in the art

[00:05:25] Speaker 04:
to take what is known and to attempt to optimize it.

[00:05:30] Speaker 04:
And that was the underpinning.

[00:05:31] Speaker 04:
That was the motivation that was albeit legally supplied, but it's inherent and it makes complete sense that if I have ranges that overlap or if I have a range that's subsumed by another range, it makes complete sense then that you take one ordinary skill in the arts natural tendency to optimize that range.

[00:05:51] Speaker 03:
Okay.

[00:05:52] Speaker 03:
It also makes sense that the further apart that the ranges are,

[00:05:56] Speaker 03:
then the more perhaps there's a basis for a posita not being motivated to combine.

[00:06:01] Speaker 03:
But in this situation, again, the ranges butt up against each other.

[00:06:07] Speaker 03:
There's no showing, no evidence that one has advantage or the other more stronger or anything like that.

[00:06:14] Speaker 03:
There's just no evidence there.

[00:06:16] Speaker 03:
And why would a posita not look at this and say there's a line here?

[00:06:21] Speaker 03:
I'm just going to step over this.

[00:06:23] Speaker 03:
I mean, do you even have to step?

[00:06:25] Speaker 03:
Is there a line?

[00:06:26] Speaker 04:
Well, see, and this is why I respectfully disagree with you, Your Honor.

[00:06:31] Speaker 04:
We're looking at that in hindsight, right?

[00:06:33] Speaker 04:
When what we really need to do is put ourselves in the shoes of one of ordinary skill in the art at the time of the invention.

[00:06:39] Speaker 04:
And we have to, what you are doing is you're making a modification.

[00:06:42] Speaker 03:
The board made a factual finding that there's virtually negligible difference.

[00:06:46] Speaker 03:
Absolutely.

[00:06:47] Speaker 04:
But there is a difference.

[00:06:49] Speaker 04:
There is a difference.

[00:06:50] Speaker 04:
And so if the justification provided by Inray Peterson, which is that one of ordinary skill in the art,

[00:06:56] Speaker 04:
is attempting to optimize the known range.

[00:07:00] Speaker 04:
Peterson says a known range.

[00:07:02] Speaker 04:
Where do you get the legs to support that one of ordinary skill in the art is going to attempt to optimize outside of the known range?

[00:07:11] Speaker 04:
It doesn't follow.

[00:07:14] Speaker 04:
If we follow the rationale which is very eloquently put forth in Inray Peterson, that rationale does not follow because we're not optimizing within a known range.

[00:07:23] Speaker 04:
So now we have to put ourselves

[00:07:25] Speaker 04:
Because let's step back and realize what we're doing here.

[00:07:29] Speaker 04:
The minute you say that something is prima facie obviousness, you foreclose the analysis that we've been asked to do by Graham, KSR, and the statute.

[00:07:38] Speaker 01:
No, you don't.

[00:07:38] Speaker 01:
You provide an opportunity to show significant difference in advantage.

[00:07:45] Speaker 01:
Whereas if one had found an anticipation, that possibility would be foreclosed.

[00:07:51] Speaker 01:
The fact that it's only an obviousness rejection

[00:07:54] Speaker 01:
gives you an opportunity to overcome that, which you've conceded hasn't occurred.

[00:08:02] Speaker 04:
You are correct.

[00:08:03] Speaker 04:
The avenue, once there is a prima facie case, the avenue is unexpected results or teaching away.

[00:08:09] Speaker 04:
We know that from Henry Maligari.

[00:08:12] Speaker 04:
We know it in a lot of things.

[00:08:14] Speaker 04:
In a lot of cases.

[00:08:15] Speaker 04:
That is true.

[00:08:17] Speaker 04:
But there is also an analysis that must be undertaken when assessing whether there's a prima facie case.

[00:08:23] Speaker 04:
There are a lot of factors that go into that prima facie case.

[00:08:27] Speaker 04:
And if we rule that it's simply prima facie because it's close, first of all, you're going to open a can of worms every time trying to figure out what is close and what is not close.

[00:08:36] Speaker 00:
Well, except we have the simple case of that, which is just the northern end of an open range.

[00:08:46] Speaker 00:
So that quite literally, I mean, when the board said something like,

[00:08:51] Speaker 00:
There is no measurable difference between these.

[00:08:55] Speaker 00:
It meant that in a simple mathematical sense, no matter what positive number you picked to try to identify the difference, it would be too large.

[00:09:06] Speaker 00:
This would have overlapped if instead of you're saying less than six, you had said less than or equal to six.

[00:09:17] Speaker 00:
This is the equal point.

[00:09:18] Speaker 00:
So we don't have to worry about

[00:09:21] Speaker 00:
slippery slopes of how close you can get, here is a but in the simple mathematical sense that there is literally no distance between your range and 6.

[00:09:35] Speaker 04:
Okay, I disagree and I'll explain why.

[00:09:39] Speaker 04:
Excuse me.

[00:09:39] Speaker 04:
They say between 6 and 25.

[00:09:42] Speaker 04:
We say less than 6.

[00:09:44] Speaker 04:
So 6 is the open number.

[00:09:45] Speaker 04:
So it's not necessarily an abutment.

[00:09:47] Speaker 04:
But I didn't come here today wanting to discuss that point, because I think it's irrelevant.

[00:09:54] Speaker 04:
I believe that what we need to be looking at is, is there motivation to modify?

[00:10:01] Speaker 04:
And if we can look at it after the fact and say it was close, that's not the motivation.

[00:10:06] Speaker 04:
There are many factors, and this addresses what Judge Murray asked.

[00:10:10] Speaker 03:
Here the problem is there's almost nothing to modify.

[00:10:12] Speaker 03:
There's almost nothing to modify.

[00:10:16] Speaker 03:
There's no gap that a posita has to leap here between the ranges.

[00:10:21] Speaker 03:
There's no gap.

[00:10:23] Speaker 04:
Well, you are moving from above six to below six.

[00:10:30] Speaker 04:
And that actually brings up a very good point.

[00:10:35] Speaker 04:
When we foreclose doing what the laws asked us to do, and that's a roll up our sleeves and look at the totality of the evidence to come up with whether or not there's a prima facie case.

[00:10:44] Speaker 04:
Because that's ultimately what we're saying here.

[00:10:45] Speaker 04:
By having a prima facie case per se, there's no analysis.

[00:10:50] Speaker 04:
You find that there's a range, you find that the range is close, you're done.

[00:10:53] Speaker 04:
Well, there's many other factors that can go to that.

[00:10:56] Speaker 04:
And I believe one of the most significant factors is what significance does one of skill in the art apply to that range?

[00:11:03] Speaker 04:
There's going to be ranges in prior art references that one of skill in the art is not going to look at as being significant, and there's other ones that are.

[00:11:11] Speaker 04:
I think when you look at the facts of this particular case, Griffin, the prior art reference, unequivocally puts forth the range of between 6 and 25 as the most important feature of that teaching.

[00:11:23] Speaker 04:
There's no doubt about it.

[00:11:25] Speaker 04:
And on top of that, he abuts his lower board, which he says needs to be protected, and says that that board can be 6 pounds or less.

[00:11:33] Speaker 04:
So where is the motivation for one of skill in the art to sit there and look at Griffin and say, ah, I'm going to modify this today, for some reason which we haven't been able to address, and move into the range of the very board that the heavier board was intended to protect?

[00:11:49] Speaker 04:
It's illogical.

[00:11:50] Speaker 04:
It does not follow.

[00:11:52] Speaker 04:
And again, this is why we cannot have a per se rule of prima facie obviousness where we have ranges that don't overlap.

[00:12:03] Speaker 00:
As I said, the pillar provided- Why would your argument that deer and KSR require a consideration of all the factors that go into motivation and so on not equally apply?

[00:12:18] Speaker 00:
to an obviousness case involving a point within the range.

[00:12:22] Speaker 00:
So not anticipation because there's some other element that's not there.

[00:12:26] Speaker 00:
So why would it not, I guess maybe one way to ask the question is, are you not asking for the overruling of the whole line of cases before and after Peterson that allow prima facie cases to be based on touching ranges?

[00:12:47] Speaker 04:
Okay.

[00:12:47] Speaker 04:
So, so Peterson was an overlapping case and you're asking about an overlapping case, which again, these facts, but, but again, what I, what I think Peterson does is it ties together this concept that we've always had of, of prima facie when they're overlapping.

[00:13:03] Speaker 04:
And it works it into the construct of Graham because it supplies the motivation.

[00:13:07] Speaker 04:
And the motivation is, is that within a known range, it's reasonable for one of ordinary skill in the art to make the modifications.

[00:13:14] Speaker 04:
I'm sorry, to seek out and optimize.

[00:13:18] Speaker 04:
I'm sorry.

[00:13:19] Speaker 01:
Nelson, you're well into your rebuttal time.

[00:13:21] Speaker 01:
Do you want to continue or save it?

[00:13:23] Speaker 04:
One thing I want to point out is, and this is a lack of substantial evidence, the case has been rejected for nearly a decade.

[00:13:33] Speaker 04:
And the examiner and the board have used Lynn as a secondary reference.

[00:13:41] Speaker 04:
I, to this day, after 10 years of this, and I raised it with the examiner, I raised it with the board, have no idea how you put those two together to make this invention.

[00:13:50] Speaker 04:
It makes no sense what's lacking in Griffin that we're going to supply by Lynn.

[00:13:59] Speaker 04:
So with that, I will rest.

[00:14:00] Speaker 04:
Thank you.

[00:14:01] Speaker 01:
We'll say the rest of your time, Mr. Reginaldi.

[00:14:05] Speaker 01:
Mr. McBride.

[00:14:06] Speaker 02:
Good morning, Your Honor.

[00:14:07] Speaker 02:
It's a great pleasure to court.

[00:14:09] Speaker 02:
I just have a couple of quick points to make.

[00:14:12] Speaker 02:
As you pointed out, in this case, the ranges do abut, and the appellant has conceded that there's nothing significant about the density of six pounds per cubic foot.

[00:14:24] Speaker 02:
This issue actually came up during the oral hearing before the board.

[00:14:29] Speaker 02:
The board was focused on this issue.

[00:14:31] Speaker 02:
And if you look at APPX 177, the board actually asked if there was anything significant about the density of six, and the appellant conceded there wasn't.

[00:14:43] Speaker 02:
Yes, they are different.

[00:14:43] Speaker 01:
One says less than, and one says 6 to 25, which is quite different.

[00:14:47] Speaker 01:
That's correct.

[00:14:48] Speaker 01:
Yeah.

[00:14:49] Speaker 02:
And it's true they are different, but they are abutting.

[00:14:52] Speaker 02:
And the difference, as the board and the examiner found, the difference could not be smaller.

[00:14:56] Speaker 02:
And that's not a contested issue.

[00:14:58] Speaker 02:
I think that's sufficient to establish a prima facie case.

[00:15:01] Speaker 02:
Under this court's binding precedent, there's a number of cases that involved non-overlapping ranges.

[00:15:08] Speaker 02:
where they weren't abutting, there's actually a gap between the non-overlapping ranges and just the fact that they were close.

[00:15:14] Speaker 02:
That was sufficient to establish a prima facie case.

[00:15:18] Speaker 01:
I accept and understand that in a lot of fields when you have an invention, there's a natural tendency to try to improve the motivation to make reasonable variations.

[00:15:32] Speaker 01:
What is the motivation here to adopt a very different

[00:15:38] Speaker 01:
move into a very different range?

[00:15:42] Speaker 02:
I think the motivation here, well, there's a few.

[00:15:44] Speaker 02:
And the examiner and the board actually spelled out a few motivations.

[00:15:49] Speaker 02:
One was just as a design choice.

[00:15:52] Speaker 02:
And in our brief, we explained one design choice would be to just design around Griffin.

[00:15:57] Speaker 02:
And in fact, that's what happened in this case.

[00:15:59] Speaker 02:
The claims, as originally filed in this case, actually didn't have that upper limit of less than six pounds per cubic foot.

[00:16:05] Speaker 02:
They just claimed a

[00:16:07] Speaker 02:
density of greater than 2.5 pounds per cubic foot.

[00:16:10] Speaker 02:
And it was only when the Griffin reference became aware of it that they tried to... Tell us about the Linn Disclosure.

[00:16:18] Speaker 02:
The Linn Disclosure?

[00:16:19] Speaker 02:
Yeah, the Linn Disclosure, I think, it's not even required to establish the prima facie case in this rejection.

[00:16:26] Speaker 02:
I think all it's really used for, the examiner cites to it as disclosing another bored material that has a density range within... That's between one and five.

[00:16:37] Speaker 01:
Why isn't that an anticipation of Brent?

[00:16:41] Speaker 02:
Well, it teaches the range, but Lynn doesn't teach the other limitations.

[00:16:46] Speaker 02:
So it's not an anticipation by itself, but it does teach that range.

[00:16:49] Speaker 02:
And I think the examiner said it was just another known material, and it would be obvious as a design choice to use this other type of material that had that claimed density range.

[00:17:00] Speaker 02:
So I think it's a very minor part of the rejection, but that's really all it's being used for.

[00:17:08] Speaker 02:
Unless the panel has any further questions, I'm happy to answer anything, but otherwise I'll yield the rest of my time.

[00:17:14] Speaker 01:
Thank you.

[00:17:15] Speaker 01:
Mr. Reginaldi has a little rebuttal time, about two minutes.

[00:17:23] Speaker 04:
So the first point is there isn't any case law where they rested and held that non-overlapping ranges are prima facie obvious.

[00:17:35] Speaker 04:
based solely on the closeness of those ranges.

[00:17:39] Speaker 04:
The case law, and this would be post-52 act case law.

[00:17:46] Speaker 04:
We know titanium metals as two data points, two examples, and the claimed range was between those two examples.

[00:17:55] Speaker 04:
So it was an effective range, means which the board relies upon, overlapping ranges.

[00:18:02] Speaker 04:
There's one reported case that I'm aware of

[00:18:05] Speaker 00:
And you're talking now about the facts of the cases.

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

[00:18:08] Speaker 00:
Even though the language is somewhat broader.

[00:18:09] Speaker 04:
That's right.

[00:18:10] Speaker 04:
And the language then is just dicta.

[00:18:12] Speaker 04:
And again, I go back to the point that that language isn't supported by the rationale that this court has developed for why on an overlapping range you have motivation.

[00:18:25] Speaker 04:
There is no motivation legally supplied in this instance where you have non-overlapping ranges.

[00:18:33] Speaker 04:
And so that

[00:18:35] Speaker 04:
motivation has to be supplied by the PTO, because otherwise all you're effectively doing is shifting the burden from the PTO to the applicant to prove patentability, where the burden is on the PTO to establish a prima facie case.

[00:18:51] Speaker 04:
The other point is with respect to Lynn.

[00:18:56] Speaker 04:
Lynn has been relied upon, and you mentioned why is this not anticipation.

[00:19:01] Speaker 04:
It's not anticipation because we have two boards set on top of one another.

[00:19:04] Speaker 04:
a high-density board to protect a low-density board.

[00:19:06] Speaker 04:
Lynn does not discuss at all protecting boards by stacking one on top of the other.

[00:19:12] Speaker 04:
The boards discussed by Lynn are insulation boards, which are the very boards that Griffin seeks to protect.

[00:19:18] Speaker 04:
The other error that I will touch upon very briefly is the fact that the secondary considerations of teaching away were not properly considered by the court.

[00:19:27] Speaker 04:
They conflated the issue of criticality with teaching away.

[00:19:32] Speaker 04:
We have teaching away when there's

[00:19:34] Speaker 04:
when one is skilled in the art is discouraged from following the path that they ended up taking.

[00:19:39] Speaker 04:
And here you do it, because again, you're putting two boards, one on top of the other, where the lower board is up to six pounds.

[00:19:46] Speaker 04:
Why would you modify the top board to go into the range of the board that they state at page one that needs to be protected?

[00:19:53] Speaker 04:
It doesn't follow.

[00:19:54] Speaker 04:
Thank you, counsel.

[00:19:55] Speaker 04:
We'll take the case under advisement.

[00:19:57] Speaker 04:
Thank you.