[00:00:00] Speaker 05:
Next, in-ray doctor optics.

[00:00:24] Speaker 00:
Don't be afraid.

[00:00:24] Speaker 05:
I'm just used to it a little bit.

[00:00:25] Speaker 05:
For a minute.

[00:00:27] Speaker 05:
You don't always sit on that side, Mr. Kelly, right?

[00:01:03] Speaker 05:
Good morning.

[00:01:11] Speaker 00:
Good morning.

[00:01:15] Speaker 00:
Are we ready to begin?

[00:01:16] Speaker 05:
Yes, please.

[00:01:18] Speaker 00:
Thank you, Your Honors, and may it please the Court.

[00:01:20] Speaker 00:
I'm Deborah Pollack Milgate, appearing on behalf of the appellant and the applicant, Dr. Optics.

[00:01:27] Speaker 00:
This appeal presents an interesting question to the court.

[00:01:30] Speaker 00:
It tests the outer boundaries of what suffices for an examiner to carry the burden of establishing that an applicant's claims are prima facie obvious over a combination of prior art.

[00:01:43] Speaker 00:
This application has been in prosecution for years, and despite years of prosecution, multiple searches for prior art, and varying combinations of that prior art, the examiner never offered

[00:01:56] Speaker 00:
a motivation to combine that was supported by substantial evidence, to combine the prior art references, to arrive at the claims that sought to be patented.

[00:02:07] Speaker 00:
And the board demanded no more than what the examiner had already provided.

[00:02:11] Speaker 00:
Therefore, the board's decision should be reversed.

[00:02:15] Speaker 00:
Most notably, there were several errors, but most notably, there is no substantial evidence supporting a motivation to combine a 1920s reference

[00:02:26] Speaker 00:
with a more modern headlamp reference that addresses softening something called the light-dark boundary so as to solve additional problems that a modern day headlamp confronts, of which there are many.

[00:02:40] Speaker 03:
Does the Supreme Court and KSR tell us that there's a motivation to take old elements and just put them together and try to make improvements?

[00:02:51] Speaker 00:
Yes, Your Honor, that's correct.

[00:02:53] Speaker 00:
KSR does tell us to do that.

[00:02:55] Speaker 00:
However, there is nothing in the prior art.

[00:02:57] Speaker 00:
There has to be a motivation in the prior art to combine the prior art to arrive at the invention.

[00:03:05] Speaker 00:
So if we take a look at Gage in particular, here's what the board said in affirming the examiner.

[00:03:11] Speaker 00:
The board said the examiner persuasively reasoned that it would have been obvious, and this is in the decision on, we're hearing it 2, and it's in your appendix at 9.

[00:03:23] Speaker 00:
The board said the examiner persuasively reasoned that it would have been obvious to one of ordinary skill in the art to provide a diffractive structure on a rearward surface of Bonnets' headlamp to reduce glare as taught by Gage.

[00:03:40] Speaker 00:
This conclusion is not supported by substantial evidence, and I will tell you why.

[00:03:45] Speaker 00:
Gage discloses a plain glass surface from a 1920s headlamp.

[00:03:50] Speaker 00:
It's nothing different than a window.

[00:03:53] Speaker 00:
It's just a plain piece of glass.

[00:03:56] Speaker 00:
And with the plain piece of glass, opaque surfaces are then applied so as to reduce glare.

[00:04:03] Speaker 00:
Because in the 1920s, there was no way to reduce glare other than to put surfaces on top of plain glass.

[00:04:12] Speaker 00:
That's what headlamps did.

[00:04:13] Speaker 00:
They kept things out so that insects and other things wouldn't get into the lighting structure.

[00:04:19] Speaker 00:
Gauge doesn't discuss a low beam or a high beam headlamp.

[00:04:23] Speaker 00:
It doesn't even discuss an optical surface at all.

[00:04:27] Speaker 00:
Bonnets, on the other hand, discloses a modern day headlamp that already has a mask.

[00:04:34] Speaker 00:
And you can see this in your car.

[00:04:35] Speaker 00:
If you look out, you will see that there's a darkened portion that is the reflection of the mask, which directs light to the right and upwards.

[00:04:44] Speaker 00:
But there's this mask that specifically addresses the issue of glare.

[00:04:49] Speaker 00:
So applying gauge to bonnets doesn't make any sense because the headlamp of bonnets already addresses the glare.

[00:05:01] Speaker 00:
And in fact, the Mosler application, Dr. Optic's Mosler application doesn't discuss trying to resolve the issue of glare.

[00:05:13] Speaker 00:
So there's nothing here that would suggest to provide gauge

[00:05:18] Speaker 00:
on what is an embossed microstructure of bonnets to reduce glare.

[00:05:24] Speaker 00:
It's just not in the record.

[00:05:27] Speaker 00:
So here, this finding that one would utilize the diffractive structure of gauge to reduce glare in bonnets was simply unsupported by any evidence, let alone substantial evidence.

[00:05:42] Speaker 00:
Also with respect to Gage, there's no reason that Gage would modify one of ordinary skill in the art to apply a diffractive structure to an optical surface.

[00:05:52] Speaker 00:
And certainly not one with scattering effects.

[00:05:54] Speaker 00:
Because again, Gage doesn't teach an optical surface.

[00:05:59] Speaker 00:
Its disclosure of a lens, again, is only in so far as a lens as much as a window pane as a lens.

[00:06:05] Speaker 00:
It has no optical focusing effects at all.

[00:06:09] Speaker 00:
So this finding, too, was unsupported by substantial evidence.

[00:06:13] Speaker 00:
And over a period of many years, the examiner continually looked for some reference to teach the application of a diffractive structure to a lens with scattering effects.

[00:06:25] Speaker 00:
And this is what the examiner came up with and what was then affirmed by the board, a plain glass plated configuration to address a problem that no longer exists.

[00:06:37] Speaker 00:
That's all the examiner could come up with.

[00:06:41] Speaker 00:
The examiner also concluded that a person of ordinary skill in the art would apply the manufacturing process of Edo to bonnets to achieve the scattering of bonnets because, and there was this interim step in here, Linde teaches a molding process for making microelevations on a lens.

[00:07:01] Speaker 00:
And what Linde actually teaches is making orange peel, or Linde refers to these as orange peel type structures.

[00:07:08] Speaker 00:
But the examiner doesn't explain

[00:07:10] Speaker 00:
And the board didn't demand any explanation for why, among various options for manufacturing a lens, a person of ordinary skill in the art would look to Edo to impart the scattering effects of Mosler.

[00:07:26] Speaker 00:
Edo has no scattering effects.

[00:07:29] Speaker 00:
And it doesn't discuss creating microstructures in a hot molding process.

[00:07:35] Speaker 03:
And in fact, the- Where has this been hung up over?

[00:07:41] Speaker 00:
twelve years pardon your honor why have this has been in prosecution for twelve years is that your question back to oh five who has it been it does so there were yes that's a good question there was an initial application that was uh... abandoned but this this one in particular goes back to two thousand six it has gone through and we recited some of this also in in our public brief as well this there were two uh... uh...

[00:08:11] Speaker 00:
two previous appellate briefs that were filed in this case, at which point a supervisory examiner took over the case and then directed it to be reopened for prosecution.

[00:08:27] Speaker 00:
The last significant delay was after an appellate brief was filed with the PTAB, and it was two years before it was ruled on.

[00:08:38] Speaker 00:
So it has been a series of delays in this case that has made, obviously, has been frustrating in terms of having some resolution with regard to these patent claims.

[00:08:53] Speaker 00:
So with regard to Edo and to Bonnets, again, there's nothing in there that says why you would look to the teachings of Edo to find a manufacturing process

[00:09:07] Speaker 00:
for the lens that is disclosed in Mosler.

[00:09:10] Speaker 00:
And in fact, the Mosler application itself, and this is at the Mosler application, paragraphs 55 to 57 in particular, it teaches that there's a specific hot process, a hot press process, one in which you maintain a very hot temperature that ensures that the scattering effects can be easily transferred

[00:09:33] Speaker 00:
from the mold so that you get a further refinement of these predetermined scattering effects so as to meet these illuminance requirements.

[00:09:44] Speaker 00:
And that's this precise balance that is required to achieve this balance between HDG and these HV requirements without grinding and polishing.

[00:09:58] Speaker 00:
the cumbersome nature of that is also described in that same portion of the Mosler application.

[00:10:03] Speaker 02:
Can I just ask you, I think the examiner said something like the following, just correct me if I'm wrong, that Edo talks about its process as providing, what is it, productivity and cost benefits?

[00:10:18] Speaker 00:
Yes, your honor.

[00:10:18] Speaker 02:
Why does that not supply a sufficient motivation to use that process for, you know, as a kind of a modification or combination with the other production process?

[00:10:33] Speaker 00:
Yes.

[00:10:33] Speaker 00:
So the reason that that is not a sufficient motivation to combine is because that's a goal of the manufacturing process.

[00:10:41] Speaker 00:
If the point is that you can combine a reference just because it's a cost-effective way of manufacturing a lens,

[00:10:48] Speaker 00:
Well, that seems like an aspirational goal that would apply to anything.

[00:10:53] Speaker 00:
This is much the same way in the examiner said, apply gauge to bonnets because reducing glare is bad.

[00:11:00] Speaker 00:
So therefore, you should add gauge to any headlamp lens.

[00:11:04] Speaker 00:
And therefore, under EDO, you should add EDO then to any manufacturing process, because it's a cost-effective manufacturing process.

[00:11:13] Speaker 02:
But what's defective about a principle of the sort you're describing that's fairly broad?

[00:11:21] Speaker 02:
Namely, if you start with one process,

[00:11:25] Speaker 02:
And you recognize that there's still a problem.

[00:11:28] Speaker 02:
So now you, you know, which is to say, maybe it's a, this is more expensive than we would like, or there's still glare.

[00:11:35] Speaker 02:
And you look around and see how can we solve those problems?

[00:11:39] Speaker 02:
Why is that not

[00:11:41] Speaker 02:
available as a permissible and sufficient rationale to then go and do what you can find in the prior art and that you meet other requirements like a reasonable expectation of success?

[00:11:59] Speaker 00:
Well, the goals that are outlined in the Mosler application are very distinct.

[00:12:04] Speaker 00:
I'm not sure there's any goal that's disclosed in the Mosler application that has anything in common.

[00:12:11] Speaker 00:
with what Edo discloses.

[00:12:13] Speaker 00:
What Edo doesn't provide is any motivation to combine it with something else to arrive at the combination.

[00:12:23] Speaker 00:
So there needs to be some teaching, something that would cause you to combine it with something else to make the lens that is disclosed in the Mosler application.

[00:12:33] Speaker 00:
And that's not there.

[00:12:35] Speaker 00:
Again, the cost manufacturing, that's a goal.

[00:12:39] Speaker 00:
And yes, one of ordinary skill in the art would look to different lens art, but there would be no reason to look to Ito in particular, given the disconnect between the lenses that are disclosed in there.

[00:12:53] Speaker 00:
So to summarize, the important point in finding a motivation to combine is a motivation that would teach, found in the prior art, to teach the combination.

[00:13:05] Speaker 00:
And that's simply not there.

[00:13:12] Speaker 00:
So to the extent, just to wrap up with Edo, to the extent that there would be any reason to use Edo in connection with Mosler's application, it really would have to be coming from Mosler itself, which talks about a hot gob process and imparting scattering effects through a hot gob process.

[00:13:36] Speaker 00:
And of course, it's improper under this court's case law to find some teaching in the application

[00:13:42] Speaker 00:
because that's the touchstone of an obviousness type of valuation.

[00:13:48] Speaker 00:
And this court said in Autiker, there must be some reason, suggestion, or motivation found in the prior art whereby a person of ordinary skill in the field of invention would make the combination.

[00:14:01] Speaker 00:
The knowledge cannot come from the applicant's invention itself.

[00:14:06] Speaker 00:
So there was no substantial evidence that supported the conclusion overall that there was a motivation to combine the references in such a way as would render the claimed combination obvious.

[00:14:17] Speaker 00:
Claim one of this application.

[00:14:19] Speaker 00:
In summary, it has a method of manufacturing a lens made by melting a glass and portioning a gob.

[00:14:27] Speaker 00:
It utilizes a mold for forming optical surfaces.

[00:14:31] Speaker 00:
and hot pressing the gob to create optical scattering effects, and separately adding a diffractive structure.

[00:14:38] Speaker 00:
The combination of elements in the patent claims is then taught to accomplish the overall objectives that are disclosed in the Mosler application.

[00:14:46] Speaker 00:
This has to do with the HV illuminance value, satisfying these HDG requirements, providing this way to impart scattering effects, and then afterwards adding the diffractive structure to address color fringe at the same time.

[00:15:02] Speaker 00:
Only two of the four problems that are identified in the Mosler application were even addressed in the prior art.

[00:15:08] Speaker 00:
The bonnets and the Lindy reference discuss this light-dark boundary and the fact that it needs to be softened, but that's about it.

[00:15:16] Speaker 00:
And both bonnets and Lindsay also disclose different ways or different structures on the surface of the lens.

[00:15:24] Speaker 00:
The Lindy reference addresses the issue of the color fringe, but it suggests that that should be accomplished by the scattering effects itself.

[00:15:31] Speaker 00:
So in that sense, it really teaches away from what is disclosed in the Mosler application, which is to apply a diffractive structure afterwards.

[00:15:43] Speaker 00:
None of these references teach the HV value forming a lens with scattering effects from a hot gob or addressing the color fringe in a separate step through application.

[00:15:53] Speaker 00:
And in ProMold, this court reiterated the point that a motivation to combine references

[00:15:58] Speaker 00:
may come from the nature of the problem to be solved, something that would lead the inventors to look to references for possible solutions to that problem.

[00:16:07] Speaker 00:
There's nothing in the references that were cited by the examiner that would lead one of ordinary skill in the art to look to them, in particular, to come to the Mosler applications.

[00:16:17] Speaker 00:
They simply don't teach the invention as a whole.

[00:16:20] Speaker 05:
You're out of time.

[00:16:21] Speaker 00:
Yes, I see that.

[00:16:23] Speaker 00:
Thank you very much.

[00:16:32] Speaker 01:
May it please the court?

[00:16:33] Speaker 01:
Good morning, your honors.

[00:16:34] Speaker 01:
I'll start with the claim language.

[00:16:36] Speaker 01:
The claim is a little bit unusual in this case because it combines two things.

[00:16:40] Speaker 01:
It combines the structure of a lens with a method of making the lens.

[00:16:43] Speaker 01:
So the way the rejection is formulated is the examiner went and found the two components that would get to the structure of the lens.

[00:16:50] Speaker 01:
And the first component is bone eats.

[00:16:53] Speaker 01:
And that has basically every, bonnets, okay, bonnets.

[00:16:56] Speaker 01:
I don't know either.

[00:16:58] Speaker 01:
I'll follow your lead.

[00:16:59] Speaker 01:
And Bonnets really has all the structure in the claim lens except for the diffractive layer on the back side.

[00:17:05] Speaker 01:
And so then the examiner goes and finds gauge.

[00:17:08] Speaker 01:
Now, admittedly, gauge is an old reference, but gauge teaches the reduction of glare and teaches the reduction of glare by putting this diffractive layer on the back surface of the front lens.

[00:17:19] Speaker 01:
It's not correct to say that gauge is limited to flat glass plates.

[00:17:23] Speaker 01:
gauge says in the specification that it can be applied to the back of any type of front surface, whether it's flat or curved.

[00:17:30] Speaker 01:
And those teachings are enough to at least suggest to one skilled in the art that if you're making a headlamp with a front glass piece and you're concerned about diffraction, I mean, I'm sorry, if you're concerned about eliminating glare, this is one possible solution.

[00:17:45] Speaker 01:
Now the problem at that point

[00:17:47] Speaker 01:
is that both of those references are entirely silent about how to make a lens.

[00:17:52] Speaker 01:
Neither one of them mentions anything.

[00:17:54] Speaker 01:
I think the Bonnitz reference mentions embossing the microstructures.

[00:17:59] Speaker 01:
So the examiner then goes to the lens art, and in fact a lens art reference that's very close to headlamps, and sees another headlamp lens front

[00:18:08] Speaker 01:
that has microstructures on the front surface that's made through molding.

[00:18:11] Speaker 01:
So the examiner then combines the first two references with the next reference, Linde, but Linde doesn't get into the very technical details that this claim recites, melting the glass, separating the hot gavel glass, putting the hot gavel glass between the two molds.

[00:18:26] Speaker 01:
So the examiner looks deeper and says, okay, I now need to find a reference that teaches all of these details about how the molding process actually works and then goes to Ito.

[00:18:38] Speaker 01:
Ito teaches a successful process to make a glass lens.

[00:18:41] Speaker 01:
Ito is not limited to camera lenses.

[00:18:43] Speaker 01:
In fact, it mentions only camera lenses one time, and it says the glass lenses taught herein can be made to use camera lenses or the like, something like that.

[00:18:52] Speaker 01:
So you have four references, all directed to lenses, three of them directed to headlamps, teachings from each reference as to why one would at least think to put them together, and benefits that you would get from that.

[00:19:06] Speaker 01:
That's a prima facie case.

[00:19:08] Speaker 01:
They have approached this appeal and approached what happened at the Patent Office in a way that all they're trying to do is knock down the prima facie case.

[00:19:17] Speaker 01:
And they just can't do it here because we have teachings specific in these references for the specific reason the examiner puts them together.

[00:19:25] Speaker 01:
It's not as if the examiner is taking one little piece out of each reference and combining them.

[00:19:30] Speaker 01:
The reason the examiner had to look to the method of making patents is because the first two patents about lenses simply didn't talk about how they were made.

[00:19:36] Speaker 01:
So in order to meet the claim limitations, the examiner at least had to look to see how people make lenses.

[00:19:41] Speaker 01:
And the references the examiner found teach exactly the limitations in the claim.

[00:19:46] Speaker 01:
Now they could have come back

[00:19:47] Speaker 01:
and supported some sort of evidence to support their allegations they made to the board that the Bonnitz lens won't work once you put the diffractive layer on the back.

[00:19:56] Speaker 01:
But they didn't do that.

[00:19:57] Speaker 01:
They didn't try to rebut the prima facie case with anything other than just attacking it on its face as a prima facie case, and it's a very strong one.

[00:20:05] Speaker 05:
And do you have an answer to Judge Lowy's question about the 12 years it took to get here?

[00:20:11] Speaker 01:
Well, there are two applications, Your Honor.

[00:20:13] Speaker 01:
There was a first application that was abandoned by them in 2010.

[00:20:17] Speaker 01:
I don't know what happened in that application, but if you compare the claims, even with this application, that are in the publication, that are in the appendix, with what we see now, you'll see there are amendments along the way.

[00:20:28] Speaker 01:
So there were rejections, there were amendments, and yes, we did recall a case from the Board, because after management looked at the case, they decided more work needed to be done, which

[00:20:38] Speaker 01:
I hope is what we should be doing and not just pushing a case up to the board that the examiner's management doesn't think is ready for the board.

[00:20:46] Speaker 01:
This particular application has been pending since 2010, which is a long time.

[00:20:51] Speaker 01:
Opposing counsel mentioned the time period of the board being two years.

[00:20:56] Speaker 01:
That's actually less than it has been and it's coming down from there.

[00:20:59] Speaker 01:
I wish things could go faster, but as we saw from the earlier cases, sometimes they just don't.

[00:21:08] Speaker 01:
Unless this Court has any further questions, I'll yield the remainder of my time.

[00:21:10] Speaker 01:
Thank you.

[00:21:11] Speaker 01:
Thank you.

[00:21:20] Speaker 05:
We'll restore two minutes if we... Thank you, Your Honor.

[00:21:26] Speaker 00:
I had reserved three minutes.

[00:21:27] Speaker 00:
It chose giving me two.

[00:21:29] Speaker 00:
But I'll try.

[00:21:30] Speaker 04:
I don't mind the three, but it's because you used all of your time, including Gary Butler.

[00:21:34] Speaker 00:
Oh, absolutely.

[00:21:35] Speaker 00:
My apologies, Your Honor.

[00:21:37] Speaker 00:
My apologies.

[00:21:39] Speaker 00:
I will be very brief.

[00:21:42] Speaker 00:
First of all, to start off, this court has said, and it's said it multiple times, that if the examiner cannot make out a prima facie case of evidence, then the applicant is entitled to the patent.

[00:21:56] Speaker 00:
That's the end of this.

[00:21:57] Speaker 00:
So it is simply not true to say that this is all about a prima facie case of evidence and then to suggest that we somehow would go back to the board.

[00:22:07] Speaker 00:
We have specifically, Dr. Optics has specifically asked for reversal and that is because the reasons that were provided were not adequate.

[00:22:16] Speaker 00:
It is also not true to say that Dr. Optics did not respond to the arguments that they were made.

[00:22:22] Speaker 00:
There is detailed in the appendix technical reasoning that was provided for rebutting what the examiner said.

[00:22:30] Speaker 00:
It is also not proper to say that Bonnets has all the elements of the patent claims save, and I can't remember exactly what the consideration.

[00:22:39] Speaker 00:
Claim one is a method of manufacturing a lens.

[00:22:42] Speaker 00:
Bonnets isn't a method of manufacturing a lens to arrive at certain points.

[00:22:48] Speaker 00:
It doesn't disclose melting a glass.

[00:22:49] Speaker 00:
It doesn't disclose portioning a gob from the melt.

[00:22:52] Speaker 00:
It doesn't discuss adjusting the temperature of the gob to an appropriate viscosity.

[00:22:57] Speaker 00:
It doesn't discuss providing a mold.

[00:22:59] Speaker 00:
It doesn't talk about feeding the gob into the mold.

[00:23:01] Speaker 00:
The only thing Bonnitz discloses is this concept of having scattering effects on the surface of a lens to address a light-dark boundary.

[00:23:11] Speaker 00:
The last thing that I would like to note for the record is that Gage does discuss something called curvilinear.

[00:23:18] Speaker 00:
So putting something, putting a diffractive structure on something that is not just flat.

[00:23:24] Speaker 00:
However, curvilinear, it does not describe an optical surface.

[00:23:30] Speaker 00:
That's not a description for an optical surface.

[00:23:33] Speaker 00:
So it remains true that there is nothing engaged that leads to this invention.

[00:23:41] Speaker 00:
Respectfully, Dr. Optics seeks reversal

[00:23:46] Speaker 00:
and so that the board may enter the claims as they were submitted.

[00:23:51] Speaker 05:
Thank you.