[00:00:06] Speaker 02:
We have four arguments this morning.

[00:00:12] Speaker 02:
And the first is 17-1000 in Ray Dalen.

[00:00:17] Speaker 02:
Is that how you say it?

[00:00:20] Speaker 02:
Yes.

[00:00:21] Speaker 02:
Please begin.

[00:00:21] Speaker 01:
I may have pleased the court.

[00:00:29] Speaker 01:
I am Paul Jetner.

[00:00:30] Speaker 01:
And along with my co-counsel, Patrick Smith, we represent the appellants.

[00:00:35] Speaker 01:
Marcus Dalen and Stor Enzo AB.

[00:00:39] Speaker 01:
Thank you for your time this morning in consideration.

[00:00:43] Speaker 01:
This is a small case, we realize.

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There's one rejection of one claim, but it's an important case for the appellant.

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And we believe that the issue of law presented here is important for patent practitioners in the public at large.

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In this appeal, the appellants assert

[00:01:02] Speaker 01:
that the Patent Trial and Appeal Board committed two reversible errors.

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Specifically, first, we submit that the board erred in sustaining a Section 103 rejection after having found that neither of the cited references disclosed the second backwardly folded flap limitation that's in Claim 5.

[00:01:26] Speaker 01:
The board's reasoning that the missing limitation would have flowed naturally from the combination

[00:01:32] Speaker 01:
is logically and factually flawed.

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Specifically, going back to the final rejection by the examiner, the examiner interpreted the primary reference, CARL, as meeting the limitation.

[00:01:50] Speaker 01:
The panel extension 108 of the CARL reference, the examiner interpreted as meeting the second backwardly folded flat limitation that's in the claim.

[00:02:03] Speaker 01:
That interpretation of CARL was essential to both the 102 and 103 rejections.

[00:02:13] Speaker 01:
Now, the CARL reference, I think, is undisputed, is silent about the location of that extension 108 once the insert is folded.

[00:02:25] Speaker 02:
I mean am I remembering correctly that the board said that the examiner was wrong in saying you can actually tell from Caro what's happening to that other flap but then the board said and for that reason no anticipation because it's not necessary that it happened in the way that is now claimed in this application but then the board said there are really only three things that can happen to that you tear it off you fold it this way you fold it the other way

[00:02:54] Speaker 02:
Each one of those is an obvious possibility.

[00:02:58] Speaker 02:
And that's what they meant by flows naturally.

[00:03:04] Speaker 01:
I don't think that's what the board meant by flows naturally.

[00:03:06] Speaker 02:
Well, even putting that aside, why is that not obvious?

[00:03:09] Speaker 02:
There are only three things that could happen.

[00:03:10] Speaker 01:
Well, that's not in Carl.

[00:03:12] Speaker 01:
For one, that's in the appellant's argument before the board and before this, particularly before the board.

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It's an argument we made with the examiner.

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What possibilities are there besides those three that Judge Renter mentioned?

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One of the possibilities, which we acknowledge, is that it could be backwardly folded against the back surface as the examiner asserted.

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Another possibility is that it could be torn off.

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A third possibility is that it could be doubled up and folded over the front of the panel.

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And I would submit that if you look at Figure 6 of CARL, you'll see that I believe it's Flat 108.

[00:03:59] Speaker 01:
Let me see that.

[00:04:06] Speaker 02:
Page 9 of your brief.

[00:04:09] Speaker 01:
Yes, I believe so.

[00:04:11] Speaker 01:
Yes, in figure six of CARO, you see that flap 106 has five lines on it and flap 108 has no lines.

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And then if you look at figure seven, flap 106 has the five lines on it again.

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And those are two different sides.

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So like when

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102 is folded onto 104, we see one side of flap 106 in figure six.

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And then on figure seven, we see the other side of extension 106.

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Can I ask a question that's probably neither here nor there, but between figure six and figure seven, have the pills moved?

[00:04:57] Speaker 01:
No, Your Honor.

[00:04:58] Speaker 01:
Why?

[00:04:59] Speaker 02:
In figure... The 122, are those pills in the little bubbles?

[00:05:05] Speaker 01:
Correct, Your Honor.

[00:05:06] Speaker 01:
In 102, those are openings 110.

[00:05:13] Speaker 01:
Those are holes 110 in panel 102.

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So when panel 102 is folded over 104, then the pills are kind of projecting through those holes there.

[00:05:29] Speaker 02:
Right.

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This is why this may be completely insignificant.

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But if you look at 108,

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In figure six, in the kind of the second panel, you have the pills in boxes, let's call them two and three.

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And then you go to figure seven, they've moved over to one and two.

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Is that just a?

[00:05:52] Speaker 01:
I'm not sure I follow.

[00:05:54] Speaker 02:
Okay.

[00:05:54] Speaker 02:
Nevermind.

[00:05:55] Speaker 01:
Okay.

[00:05:56] Speaker 01:
But if, if so, so.

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At least as illustrated in Figures 6 and 7, Caro has those five, shows five lines on Extension 106.

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But when they're folded over, when 106 is folded over as shown in 108, now there's no lines.

[00:06:22] Speaker 01:
So if you look at Figure 8... What were the lines supposed to signify?

[00:06:26] Speaker 01:
I don't know, Your Honor.

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Carl doesn't explain.

[00:06:30] Speaker 00:
So how should we know how should we decide it means anything?

[00:06:33] Speaker 01:
So it may not it may not but the point the point is is I think in figure eight there what's labeled 106 might be 108 mislabeled.

[00:06:45] Speaker 01:
I mean that's that's a possibility.

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Another possibility is extension 108 could be in between the two panels 102 and 104 as it's folded up.

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But the law of inherency, as the court is well aware, depends on something.

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You can say something is inherent in the prior art if it necessarily follows.

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I didn't think the PTO was relying on inherency here.

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I thought that it was obviousness in saying that there's three different ways that 108 could be treated.

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You've identified what they were.

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And given the priority of record, it would have been obvious to fold 108 over as required by your claims.

[00:07:33] Speaker 01:
I don't believe that's correct, Your Honor.

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There was 102 and 103 rejection of claim five that went on appeal to the board.

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And the primary issue was, you know, when the insert is folded,

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We don't know exactly, and Carl doesn't explain what happens to 108, okay, extension 108.

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So we argued that it's not expressly disclosed that it's backwardly folded, and it's not inherent that it's backwardly folded under the doctrine of inherency.

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And the board agreed with us on that point and made the determination, factual determination, that I don't believe is challenged.

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That the, that Carro does not disclose the second backwardly folded flap limitation.

[00:08:29] Speaker 01:
Doesn't disclose it explicitly or inherently.

[00:08:34] Speaker 01:
That was a finding by the board and I, I don't believe that that's been directly challenged on this appeal.

[00:08:43] Speaker 01:
Okay.

[00:08:44] Speaker 01:
So.

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Going back to the examiner's 102 rejection, so when the board determined that extension 108 is not expressly or inherently disclosed in the reference, then the board reversed the 102 rejection, is not anticipated.

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And the board should have reversed the 103 rejection as well, because the examiner's 103 rejection also relied upon that interpretation

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of Carl with respect to the extension 108.

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Now when the board said it flowed naturally, okay, we submit that this was an error in logic by the board.

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In fact, it's circular logic.

[00:09:39] Speaker 01:
From the examiner's point of view,

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Carl, he interpreted Carl as disclosing that second backwardly folded flap, the extension 108, okay?

[00:09:50] Speaker 01:
And therefore, it was logical from the examiner's point of view to add a second retaining means to the back of the sleeve, you know, panel 18 on the sleeve, so that the, that extension 108 could engage with the second retaining means

[00:10:13] Speaker 01:
Okay.

[00:10:14] Speaker 01:
But now when the board determined that, that Carl does not expressly or inherently disclose the second backwardly folded flap, that undermines the, the obviousness of adding a second retaining means to that back panel of the sleeve.

[00:10:36] Speaker 01:
Because if there's no, if there's no extension or there's no tab,

[00:10:42] Speaker 01:
on the insert, then why have a retaining means?

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In other words, there would be nothing for the retaining means to engage if there's no second link.

[00:10:54] Speaker 03:
So it's your view that the P tab didn't, by saying that it would have been obvious to have multiple retaining means that they were being so rigid as to not include that tab you were talking about.

[00:11:08] Speaker 01:
Well, the way the examiner viewed it, the examiner viewed it is that that second backwardly folded flap is there.

[00:11:16] Speaker 01:
Therefore, it would be obvious to have another retaining means to engage it.

[00:11:21] Speaker 01:
And when the board said, well, Carl doesn't explicitly or implicitly disclose that, then you've got to ask, well, why would a person of ordinary skill and art add retaining means without at least also adding another flap?

[00:11:40] Speaker 00:
Figure six shows no flaps, right?

[00:11:44] Speaker 00:
Yes, Your Honor.

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So your theory would be that when you

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It starts from the process that when you fold the two over, you're tearing off 108 and throwing it away.

[00:11:58] Speaker 01:
Maybe.

[00:11:58] Speaker 01:
Maybe.

[00:11:59] Speaker 01:
I don't know that that's the case, Your Honor, but that's a possibility.

[00:12:05] Speaker 01:
It's also a possibility that 108 is in between 102 and 104.

[00:12:10] Speaker 01:
It's also possible that they're both folded over the front face.

[00:12:14] Speaker 00:
If you tore it off, there wouldn't be any reason to have a retaining means, right?

[00:12:20] Speaker 01:
That would be correct.

[00:12:21] Speaker 00:
But if you didn't tear it off and you wanted to use it as a secondary closure device, you would have a retaining means.

[00:12:32] Speaker 01:
If correct, Your Honor.

[00:12:38] Speaker 02:
You're into your rebuttal time now.

[00:12:39] Speaker 02:
If you want to save it, we can hear from Mr. Lateef.

[00:12:43] Speaker 01:
Yes, Your Honor.

[00:12:51] Speaker 04:
May it please the court?

[00:12:52] Speaker 04:
Good morning, Your Honors.

[00:12:54] Speaker 04:
Substantial evidence supports the board's findings that Claim 5 is obvious over Caro and View of Passat.

[00:13:00] Speaker 04:
And looking at the prior itself, it's giving you guidance as to what one would do who's looking to improve the locking functionality, which is the purpose of Dalen's invention.

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So if you take a look at the figures in Caro, and you look at figures 6, 7, and 8,

[00:13:19] Speaker 04:
It's basically telling you, well, if you want to use the insert as part of the locking functionality, you can extend that additional flap backwards.

[00:13:29] Speaker 04:
We agree that flap 108 is not shown as being folded in any particular way, but there is a finite number of possibilities of which to do that.

[00:13:38] Speaker 04:
Even if we accept Appellant's argument that they're the fourth way, which I don't believe that there is, but even if there was, that's still a really small number.

[00:13:47] Speaker 04:
for a person of ordinary skill and the art to look at and say, okay, what would I need to do if I wanted to improve locking functionality?

[00:13:54] Speaker 04:
You couple that with the secondary reference, Hasat, which I think I'm pronouncing properly, and Hasat teaches, well, you can have multiple retaining means on opposite sides of a sleeve doing the same thing.

[00:14:07] Speaker 04:
So you can say, a person of ordinary skill and the art would be able to look at Karo and say, okay, well, if I have two flaps and I want to improve the retaining functionality,

[00:14:17] Speaker 04:
The best thing to do would be to take that additional flap 108 and fold it backwards.

[00:14:24] Speaker 00:
Was Karo trying to improve functionality as well?

[00:14:27] Speaker 04:
Karo does say that you... I want to make sure I'm quoting them properly.

[00:14:33] Speaker 04:
If you look at Karo on page 8, PPX 390, it says this package may have one or more internal or external locks.

[00:14:43] Speaker 03:
What column and line are we starting with?

[00:14:46] Speaker 04:
Oh, I'm sorry.

[00:14:47] Speaker 04:
APPX 390, column 1, lines 10 through 11.

[00:14:50] Speaker 04:
And then also, if you look at that same column, lines 13 and 14, it says this package is focused around providing a child-resistant, senior-friendly unit dose package.

[00:15:04] Speaker 04:
And so child-resistant, I think, would also go to having more than one lock, just like the lines above, saying you could have one or more internal locks.

[00:15:12] Speaker 04:
So to answer you, Your Honor, yes, Karo does look at sort of improving upon the retaining functionality.

[00:15:19] Speaker 03:
And it does say here that in that section that you've directed us to that it says one or more locks, right?

[00:15:24] Speaker 03:
Absolutely, yes.

[00:15:27] Speaker 04:
So a person of Organizacion Lear looking at Karo and then combining it with a saw would see that if you wanted to do that, the best way to do that is to have on the internal sleeve opposing locks on opposite ends

[00:15:42] Speaker 04:
So you can indulge me for a little bit.

[00:15:45] Speaker 00:
Which is essentially to duplicate what you did for 106.

[00:15:48] Speaker 04:
Exactly.

[00:15:49] Speaker 04:
You just fold them in, and then one goes backwards, and the other one goes back.

[00:15:54] Speaker 04:
And it's very simple, and you've done that.

[00:15:58] Speaker 00:
And the bottom, bottom line, your argument is one of ordinary skill in the art.

[00:16:01] Speaker 00:
Clearly would have known how to use one tab to fold it over and have a retaining means to close it.

[00:16:06] Speaker 04:
Absolutely, Your Honor.

[00:16:08] Speaker 00:
If you have one lock.

[00:16:09] Speaker 00:
What would stand in the way of taking care of and taking one of the three options, which is to fold it backwards under with a retaining means?

[00:16:20] Speaker 04:
I agree, Your Honor.

[00:16:21] Speaker 04:
If you have one lock and you want to improve locking functionality, you add an additional lock.

[00:16:27] Speaker 00:
Do you know the answer to the presiding judge's question about the pills?

[00:16:33] Speaker 00:
It was six and seven.

[00:16:35] Speaker 00:
I had the same question whether or not there was any significance to the pills that are in the 108 tab moving from first and second base, avoiding first base and going to second and third and then coming back and being on first and second.

[00:16:56] Speaker 04:
So based on when I look at these pictures, I see it as the pills are moved.

[00:17:02] Speaker 04:
However, I

[00:17:04] Speaker 04:
I don't have necessarily support in the reference itself telling me that.

[00:17:07] Speaker 00:
There's no explanation in the written description.

[00:17:09] Speaker 00:
Right.

[00:17:10] Speaker 04:
There's no explanation, but it would appear to me, just based on the way the pictures are positioned, that the pills would have had to have moved.

[00:17:16] Speaker 04:
I don't know if that answered your question.

[00:17:19] Speaker 00:
And Figure 7 is supposed to depict the folded over version of Figure 6?

[00:17:25] Speaker 04:
Yes.

[00:17:25] Speaker 04:
I view that as, if you look at Figure 6, what ended up happening was that Tab 104 is now behind Tab 102.

[00:17:34] Speaker 04:
So if you have it like this, it just folded under.

[00:17:36] Speaker 03:
Do you have any view on the argument that 106 might actually be mislabeled in Figure 8, and in fact it should be 108?

[00:17:53] Speaker 04:
Well, I disagree with that, Your Honor, specifically because if you look at Figure 6 first, when they're laid out together,

[00:18:01] Speaker 04:
And I think those hashtag lines, or whatever you want to call them, the lines that are located on 106 are showing one side.

[00:18:08] Speaker 04:
And then if you look at 108, having no lines shows an additional sort of the reverse side.

[00:18:13] Speaker 04:
So if we were to look at the opposite side of 106, it would be blank.

[00:18:17] Speaker 04:
And the reason I'm sort of pointing that out is if you then jump to figure seven, I think what you're seeing is tab 104 has been sort of tucked underneath.

[00:18:31] Speaker 00:
It folded 104 under 102, which shows... Exactly.

[00:18:35] Speaker 00:
So you're still going to have those same lines sitting there.

[00:18:39] Speaker 04:
And then when you jump down to figure 8 and you fold 106 backwards, now you see the blank side.

[00:18:45] Speaker 04:
It's just a way to show you sort of top-bottom without denoting top and bottom.

[00:18:53] Speaker 00:
The front and back side of the tab, you mean, right?

[00:18:57] Speaker 00:
I'm sorry, Your Honor, I didn't... The front and back side of the tab.

[00:18:59] Speaker 00:
Will you fold the tab over?

[00:19:03] Speaker 04:
Yes, Your Honor.

[00:19:05] Speaker 04:
If there are no further questions, I'll yield my time.

[00:19:07] Speaker 04:
And I ask that the court confirm the board's decision.

[00:19:11] Speaker 02:
You have a little under three minutes.

[00:19:16] Speaker 01:
Thank you.

[00:19:18] Speaker 01:
Your Honor, I'd like to very briefly address our second argument with respect to why the 103 rejection cannot be sustained.

[00:19:28] Speaker 01:
and why the combination of Carl in view of Hassa is based on hindsight and is not supported by substantial evidence.

[00:19:38] Speaker 01:
Specifically, if you reproduce the retaining means of the sleeve of Carl, the cutout in node that appears on panel 10 of the sleeve, if you repeat that on panel 18, the back panel of the sleeve,

[00:19:58] Speaker 01:
And then as the board indicated, repurpose extension 108 to engage that, you don't have a functional package.

[00:20:10] Speaker 01:
There's no release button to release it and also you have an opening in the back of the package where that cutout would be.

[00:20:21] Speaker 01:
So really to make a functional package, we argued below

[00:20:26] Speaker 01:
that you would have to add a fourth panel with a release button and double up the back of Carl's sleeve.

[00:20:40] Speaker 01:
Okay.

[00:20:42] Speaker 01:
Below, the prior art we submit doesn't support that modification.

[00:20:49] Speaker 01:
The examiner made no finding that adding a fourth panel with a second release button

[00:20:55] Speaker 01:
would be obvious to one of ordinary skill in the art and the board expressly conceded that neither Carl nor Hassah explicitly teaches the desirability of adding another panel for this purpose.

[00:21:11] Speaker 01:
Accordingly, there was no factual support for the modification of Carl to add a fourth panel with a second release button.

[00:21:20] Speaker 01:
So nevertheless, despite this lack of factual foundation,

[00:21:23] Speaker 01:
the board concluded that it would be an obvious expedience to add both the fourth panel with the second release button and to repurpose Carl's extension 108.

[00:21:36] Speaker 01:
We submit that that was legal error, Your Honors.

[00:21:40] Speaker 01:
This Court has repeatedly held that obviousness cannot be based upon conclusory assertions, like the board made here, said it was an obvious expedient.

[00:21:52] Speaker 01:
uh... in absent uh... a factual foundation or articulated rationale for doing that uh... we cited in rave and odds uh... for uh... for that purpose thank you your honor thank you so much in the case is submitted