[00:00:30] Speaker 00:
Good morning, Your Honor.

[00:00:31] Speaker 01:
Good morning.

[00:00:32] Speaker 01:
Please proceed.

[00:00:33] Speaker 00:
May I place the court?

[00:00:34] Speaker 00:
The technology at issue today is perhaps less complex than what the PTO sees on a daily basis and what comes before this court every day.

[00:00:42] Speaker 00:
However, the appellants believe that the board oversimplified the technology at issue and in doing so made several legal errors.

[00:00:53] Speaker 00:
The first one I want to talk about is the issue of claim construction with regards to claim one, where claim one

[00:01:00] Speaker 00:
specifies a damper plate that's situated within a conduit, and then it specifies that the outer periphery of that damper plate defines an area that occupies a majority of, or at least a majority of, but substantially less than all of the inner area of that conduit.

[00:01:20] Speaker 00:
Now, there's no dispute that the outer periphery has to occupy more than 50%.

[00:01:25] Speaker 00:
That follows from the use of the term a majority of.

[00:01:29] Speaker 00:
And there's also no dispute that in some embodiments, at least, it can occupy an area that is greater than 80%.

[00:01:37] Speaker 00:
The board addressed that in terms of claim differentiation.

[00:01:41] Speaker 00:
The specification actually addresses that even more clearly by making an explicit statement that says damper plates, according to embodiments of the present invention, have the periphery dimension to occupy less than about 80% when closed.

[00:01:55] Speaker 04:
Although a somewhat larger... You agree, though, that claim one covers something that's greater than 80% of the cross-sectional area?

[00:02:02] Speaker 00:
It can.

[00:02:03] Speaker 04:
And I think the same... You say it can.

[00:02:05] Speaker 04:
It encompasses something greater than 80%.

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

[00:02:08] Speaker 04:
OK.

[00:02:09] Speaker 04:
So is there anything in the spec that helps us, through definition or something else, understand what does it mean to be substantially less than all of the cross-sectional area?

[00:02:20] Speaker 00:
Well, there is.

[00:02:20] Speaker 04:
I'm trying to understand how do we

[00:02:25] Speaker 04:
What's your proposed construction for the word substantially?

[00:02:29] Speaker 00:
Well, I think it's informed in the first instance by the application's instance.

[00:02:34] Speaker 04:
Could you give us an articulation?

[00:02:36] Speaker 04:
Because substantially is a classic fudge word in patent parlance.

[00:02:43] Speaker 04:
Let's not kid ourselves.

[00:02:44] Speaker 04:
Let's confess and be honest here.

[00:02:47] Speaker 04:
So how do we understand, for purposes of this case, how to construe the word substantially?

[00:02:55] Speaker 04:
Substantially less than all.

[00:02:57] Speaker 00:
You have to follow the rule that you do go to the specification and find out whether it provides guidance to the person of ordinary skill in the arc so that they can figure out, without undue experimentation, exactly where the limits of that limitation fall.

[00:03:11] Speaker 00:
In this case, the specification first says, OK, we're talking about something that might go over 80%, but somewhat.

[00:03:19] Speaker 00:
So I think it's clear from there.

[00:03:21] Speaker 00:
We're not talking about 90%, 95%, 98%.

[00:03:24] Speaker 04:
It gives further guidance.

[00:03:25] Speaker 04:
Why not?

[00:03:26] Speaker 04:
Just to play devil's advocate.

[00:03:29] Speaker 04:
Why not?

[00:03:30] Speaker 00:
I think you get that when you read the application as a whole, that it is clear that those would not satisfy the criterion of eliminating clogging around the outer periphery of the damper plate and reducing erosion of the walls.

[00:03:48] Speaker 04:
Is there something in the spec that tells us that a plate that covers 95%

[00:03:54] Speaker 04:
or even 98% of the cross-sectional area would defeat the goal of avoiding clogging, avoiding erosion of the walls?

[00:04:05] Speaker 00:
There's nothing that explicitly says that.

[00:04:07] Speaker 00:
But there are several examples that range from areas of 56% up to 80%.

[00:04:14] Speaker 00:
And then you've got this statement I was just referring to that says somewhat larger than 80% may be acceptable in some cases.

[00:04:20] Speaker 00:
I think that signals pretty clearly to the person of ordinary skill in the art

[00:04:24] Speaker 00:
then venturing very far beyond 80% will get you into trouble.

[00:04:31] Speaker 00:
So moving on, when the board interprets this claim, they end up interpreting it as effectively requiring- I guess are you saying that 90% is outside the claim?

[00:04:45] Speaker 00:
I'm saying that a person of ordinary skill and the art would have to decide whether 90% was outside of the boundaries of the claim.

[00:04:52] Speaker 00:
I believe from the language of the specification that 90% is very likely outside the bounds of the claim.

[00:05:00] Speaker 03:
OK.

[00:05:02] Speaker 00:
Now.

[00:05:03] Speaker 03:
The board was, without dispute from you, applying a broadest reasonable interpretation standard here.

[00:05:12] Speaker 03:
The whole point of that is to reduce, to the extent possible, the over-deterrence

[00:05:21] Speaker 03:
of how a skilled artisan, of what a skilled artisan might decide not to do because although I'm not sure of the reading, it's reasonable to read it in a certain way.

[00:05:37] Speaker 03:
And the problem I guess I'm having is I don't see what provides a skilled artisan reasonable assurance that anything

[00:05:50] Speaker 03:
less than a gap, a phrase used twice in the spec, once in the summary and then once, I think, in paragraph 21, isn't the only reasonable broadest interpretation because anything else is, as you just said, something a skilled artisan would have to figure out, but how?

[00:06:18] Speaker 00:
With regards to how, I think the specification does explain how that's done.

[00:06:23] Speaker 00:
It's by factoring in concerns about the clogging around the borders and erosion of the conduit walls.

[00:06:30] Speaker 03:
Why wouldn't it be reasonable for a skilled artisan to read this back and say the mentions of avoidance of clogging and erosion are not actually definitional at all.

[00:06:46] Speaker 03:
They are merely descriptions of what the inventors are touting as the expected beneficial property of the structures defined only by the area.

[00:07:05] Speaker 00:
Right.

[00:07:05] Speaker 00:
I think the problem there is that the work substantially is in the claim.

[00:07:10] Speaker 00:
So we have substantially less than to deal with.

[00:07:13] Speaker 00:
We have to go to the specification to find out what that means.

[00:07:16] Speaker 00:
What we've ended up here with is with a claim interpretation that says that anything less than 100% is substantially less than, and it simply reads... Well, I'm not sure.

[00:07:27] Speaker 03:
I think that's what the examiner said, and I'm not sure that's wrong.

[00:07:30] Speaker 03:
I think the board actually seems to have built in a pair of functional qualifications that limit that.

[00:07:38] Speaker 03:
I'm not sure that that's right, but I think the board did not just say any gap.

[00:07:43] Speaker 03:
They also wanted the skilled artisan to go and figure out

[00:07:47] Speaker 03:
whether there was going to be clogging or undue erosion.

[00:07:53] Speaker 00:
Well, right.

[00:07:54] Speaker 00:
They've certainly mentioned clogging and erosion, but then they modified the claim interpretation to say that it needed to provide a gap that would allow an insubstantial amount of fuel to go around the plate or a negligible amount to go around the plate.

[00:08:09] Speaker 03:
And also prevent clogging and erosion.

[00:08:11] Speaker 00:
Right.

[00:08:12] Speaker 00:
But then when they applied it to the priority issue, they completely ignored the clogging and erosion and simply said Redfield has an area that is less than 100% of the area.

[00:08:22] Speaker 03:
I tend to agree that that's a problem.

[00:08:24] Speaker 03:
If you include in the claim, the broadest reasonable interpretation, a clogging and erosion problem, I don't see how you get that out of Redfield.

[00:08:32] Speaker 03:
But I'm not sure that that clogging and erosion piece of the board's paragraph on this properly belongs.

[00:08:42] Speaker 03:
The examiner didn't have that problem because the examiner said, I don't see a stopping point.

[00:08:47] Speaker 03:
As long as there's a gap, some skilled artisan might reasonably read the claim to allow any gap.

[00:08:57] Speaker 00:
Well, the concerns you raise about whether the claim is over-deterrent I think are more properly raised in the context of whether that limitation is sufficiently definite to the person of ordinary skill in the art.

[00:09:11] Speaker 00:
And in fact, in this case, the examiner originally raised indefinite... Well, BRI is built on the concern about over-deterrence, right?

[00:09:18] Speaker 03:
That the right construction is this, but some skilled artisans or competitors or something might reasonably think it's this and therefore not do what's in that gap.

[00:09:31] Speaker 03:
And they shouldn't be deterred from doing what's in that gap.

[00:09:35] Speaker 00:
Well, I think BRI is more directed towards concerns that, you know, the language is necessarily imprecise and during the prosecution phase is when you have the chance to tighten that up.

[00:09:46] Speaker 00:
And it certainly would be reasonable, you know, if the patent office was concerned about the definiteness to require that it be tightened up.

[00:09:54] Speaker 00:
But, you know, again, they did withdraw the indefiniteness rejections and instead moved to this claim construction that simply reads the substantially out of the claims.

[00:10:03] Speaker 00:
You're right, the board did add back in a mention of the clogging and erosion, but then as applied, ignored that completely and said simply the plate in the prior art is smaller than the conduit, and then relied on an actual lack of evidence as to whether there would be any erosion or clogging problems there.

[00:10:25] Speaker 00:
If I would, I'd like to move on to the obviousness issues.

[00:10:30] Speaker 00:
There, the court took as representative claim four, which I think is a good place to be.

[00:10:38] Speaker 00:
It specifies that when you consider the perforations in the damper plate, the damper plate as a whole blocks between 40 to 60% of the conduit when the damper plate is in a closed position.

[00:10:52] Speaker 00:
I don't think there's any dispute that this is quite different than what is shown or discussed in our references, Redfield and Miller.

[00:11:00] Speaker 00:
Where the board went is to say that, well, the person of ordinary skill in the art would have recognized that holes and gaps around the damper plate would affect damping, and therefore it would have been obvious to optimize the damping by adjusting the holes or adjusting the size of those gaps.

[00:11:21] Speaker 00:
The problem with that is that there's no identification either in the references or in the board's analysis

[00:11:28] Speaker 00:
as to what problem they're trying to solve.

[00:11:31] Speaker 00:
And furthermore, there's no reason to believe that when you carried out such an optimization for whatever this unknown purpose is, that you would end up anywhere close to a plate that only blocks 40% to 60% of the conduit.

[00:11:45] Speaker 00:
Now, in the context of the specific part here, we're talking about stovepipe dampers.

[00:11:50] Speaker 00:
And I think common sense suggests that a stovepipe damper that at its most damping configuration only blocks 50% of the stovepipe

[00:11:58] Speaker 00:
is probably not a very effective damper.

[00:12:03] Speaker 04:
Did you put on any kind of declaration evidence to explain the unexpected results or the criticality of this particular range of damping?

[00:12:14] Speaker 00:
Right.

[00:12:15] Speaker 00:
I think the criticality is demonstrated in the specifications description of what the problem is that we're trying to address here.

[00:12:22] Speaker 00:
With these holes in the damper plate and with the gap around the plate, we're

[00:12:28] Speaker 00:
We're trying to balance the damping capability, which in this case is not to shut off a stovepipe or open the stovepipe.

[00:12:36] Speaker 00:
It is to balance fuel flow between multiple conduits that are supplying a burner.

[00:12:42] Speaker 00:
That's described in the specification.

[00:12:44] Speaker 00:
We're trying to balance that capability to adjust, do a fine tuning of damping with

[00:12:50] Speaker 00:
a diffusing to avoid this specific problem of coal roping that arises in these conduits.

[00:12:57] Speaker 04:
I thought the examiner and you also acknowledged that people of a skill in the art would understand and appreciate the degree of flow dampening effect you would have in the conduit based on the relative size of the plate and the amount of air that you permit to actually flow through or flow past the plate.

[00:13:21] Speaker 04:
So on that ground, what we have here is something that's called the result effective variable.

[00:13:28] Speaker 04:
And therefore, under the law, it's prima facie obvious to play around with the sizing in order to achieve whatever desired results someone would want.

[00:13:40] Speaker 00:
I don't think it's that simple.

[00:13:43] Speaker 00:
I think under the law, it's prima facie obvious that you need to show critical results.

[00:13:50] Speaker 00:
When the prior conditions, the prior art reveals general conditions that are essentially the same as what you're talking about in your claim, in particular with ranges where you have overlapping or very closely abutting ranges.

[00:14:04] Speaker 00:
Here, the prior art shows damper plates that, while it doesn't discuss the actual dimensions, appear to occupy substantially all

[00:14:12] Speaker 00:
of the inner area of the conduit.

[00:14:15] Speaker 01:
Counsel, you're well into your rebuttal time.

[00:14:17] Speaker 01:
We've asked you a lot of questions, so I'll restore a couple minutes of it.

[00:14:19] Speaker 01:
But if you keep going, it's at your peril.

[00:14:21] Speaker 00:
I appreciate that.

[00:14:23] Speaker 00:
So I don't think that those cases that support this notion of having to provide criticality or unexpected results apply when there is no showing that the priority is even in the same vicinity as the claims at issue.

[00:14:37] Speaker 00:
Thank you very much.

[00:14:45] Speaker 02:
Thank you, Your Honors, and may it please the Court.

[00:14:48] Speaker 02:
I have a few points to make.

[00:14:49] Speaker 02:
As to the word substantially, it's really broad.

[00:14:54] Speaker 02:
And the examples in the specification that go to percentages, specifically inviting the Court's attention to page 33 of the record.

[00:15:03] Speaker 02:
And on those percentages, 33, 76%, that goes to claim 3, less than about 80%, that goes to

[00:15:12] Speaker 02:
claim 3, a dependent claim, not claim 1, which is very broad with the broad term substantially in it.

[00:15:21] Speaker 04:
I guess the other side is saying that those examples underscore that what substantially less than all means or should be understood to mean is something far less than 100%, something much closer to the examples that are provided, which are all in the 50% to 80%

[00:15:42] Speaker 02:
Um, respectfully, no, your honor, because the board did a claim construction using applicant specification, paragraph 21 in his specification in particular, that just said that pulverized particles have to get through a gap.

[00:16:03] Speaker 02:
And these pulverized particles are really small and Redfield has two gaps and Miller teaches

[00:16:13] Speaker 02:
multiple holes.

[00:16:15] Speaker 02:
So you have pulverized particles going at the plate.

[00:16:19] Speaker 02:
And if you look at on page seven of our red leaf, red field is depicted there and has two gaps.

[00:16:28] Speaker 02:
And what the board was saying was there will be instances

[00:16:33] Speaker 02:
where a smaller gap will suffice, given this broad claim and what's in the specification.

[00:16:39] Speaker 04:
There needs to be some flow going around the plate, right?

[00:16:42] Speaker 04:
Yes, Your Honor.

[00:16:43] Speaker 04:
And the board said an insubstantial amount of flow.

[00:16:47] Speaker 04:
And it wasn't clear to me why the board was justified in concluding that having a damping plate that is substantially less than all of the cross-sectional area

[00:17:04] Speaker 04:
translates to permitting merely an insubstantial amount of airflow around the edges of the plate.

[00:17:14] Speaker 02:
Why did they say it like that?

[00:17:17] Speaker 02:
Because there will be times where a lot of the polarized small particles will go through perforations and there will only be

[00:17:26] Speaker 02:
some left.

[00:17:26] Speaker 04:
So at a bare minimum, what the board was saying here... I guess what I'm trying to say is insubstantial amount of airflow around the edges of the plate suggests a really big plate that covers virtually everything of the cross-sectional area of the conduit.

[00:17:48] Speaker 04:
And that sounds not consistent with

[00:17:54] Speaker 04:
a plate that's substantially less than all of the cross-sectional area?

[00:17:59] Speaker 02:
Well, respectfully, again, no, Your Honor, because this part of the board's opinion is going towards the particles.

[00:18:08] Speaker 02:
What is to get through?

[00:18:10] Speaker 02:
And we know for a fact, based on this record, that the board was definitely not saying almost all of the cross-section or virtually all of the cross-section to leave an insubstantial airflow left, because Redfield

[00:18:23] Speaker 02:
and Miller for that fact, but Redfield has dual gaps above and below.

[00:18:30] Speaker 02:
And that was an 1893 reference that had both holes and gaps.

[00:18:37] Speaker 02:
And if anything substantially less than can mean, and Redfield would likely infringe if it issued later, that insubstantial particles are particles left

[00:18:52] Speaker 02:
not going through the perforations.

[00:18:54] Speaker 02:
And that's what the board was reasonably saying.

[00:18:56] Speaker 02:
And the board expressly considered applicants' argument and specification language that if the only function of the gap is to permit or avoid clogging, let me say it correctly, avoid clogging, therefore there will be times, and what the board was saying was in addition

[00:19:21] Speaker 02:
the gap is sufficient.

[00:19:24] Speaker 02:
So this is the bare minimum part that the board said it has to, per the specification, and the specification is broad, does not limit the particle size or the size of the substantially less than gap.

[00:19:37] Speaker 02:
It says that the gap is sufficient.

[00:19:41] Speaker 02:
It has to, at a bare minimum, allow an insubstantial amount of pulverized fuel.

[00:19:49] Speaker 02:
And what we're talking about in

[00:19:51] Speaker 02:
There are depictions also in the specification at figures three and four where these particles, and this is on page 46 and 47 of the record, but these particles are spread out.

[00:20:04] Speaker 02:
There's no requirement in the specification of a rate of flow, and it's just the particles that can't clog.

[00:20:11] Speaker 04:
Let me try again.

[00:20:12] Speaker 04:
I guess my concern is when the board said that substantially less than all of the cross-sectional area

[00:20:20] Speaker 04:
means that the plate can be so big, fat and wide, that only an insubstantial amount of the fuel flow can go around the edges.

[00:20:33] Speaker 04:
That seems to really bias the understanding of the claim to encompass something that virtually covers the entire cross-sectional area.

[00:20:46] Speaker 04:
And if that's the case, I wonder why is that

[00:20:50] Speaker 04:
consistent with a description of a plate that's substantially less than all of the cross-sectional area?

[00:21:00] Speaker 02:
Again, Your Honor, the Board didn't say that it has to be almost the size of the pipe.

[00:21:08] Speaker 02:
The Board said there has to be a gap, and the gap functions per the specification.

[00:21:14] Speaker 02:
After the Board just discussed applicant specification, it said that

[00:21:20] Speaker 02:
something has to get through without clogging.

[00:21:22] Speaker 02:
So the board was giving fidelity to the specification that clogging is to be avoided.

[00:21:33] Speaker 02:
And then what the board went on to say was that we have Redfield, which has multiple gaps and perforations shown in Miller, where you can have multiple perforations.

[00:21:46] Speaker 02:
One or more is expressly in Miller.

[00:21:50] Speaker 02:
Even applicant specification envisions the scenario where only very little must go through the gaps.

[00:21:59] Speaker 02:
And that's what led to the board saying.

[00:22:02] Speaker 04:
Where did Mr. Ferri's application disclose that?

[00:22:08] Speaker 04:
That only very little can go around the edges?

[00:22:14] Speaker 02:
No, Your Honor.

[00:22:15] Speaker 02:
It says avoid.

[00:22:16] Speaker 02:
There are two steps to get to that.

[00:22:18] Speaker 02:
Avoid clogging.

[00:22:20] Speaker 02:
And on page 31 to 32 of the record, the specification discusses that pulverized particles will go through the perforations.

[00:22:35] Speaker 02:
The feature of this invention, more so than the gap, are the perforations that the particles will go through the perforations and that

[00:22:50] Speaker 02:
Specification expressly says, rather than around it, that's at the top of page 32.

[00:22:55] Speaker 02:
So instead of going around it, it goes through.

[00:22:59] Speaker 02:
And the board discussed that and reasonably said that what you need is a sufficient gap.

[00:23:09] Speaker 02:
And that's why we analyzed it in our brief, as at least you have to have a gap

[00:23:19] Speaker 02:
that some particles can get through and giving credence to the specification, clogging will be avoided.

[00:23:27] Speaker 02:
And that was a reasonable construction by the board.

[00:23:30] Speaker 02:
This applicant knows how to articulate numbers.

[00:23:35] Speaker 02:
They're in a lot of the dependent claims.

[00:23:39] Speaker 02:
And claim one is really broad.

[00:23:41] Speaker 02:
It's still during prosecution.

[00:23:43] Speaker 02:
He may be able to amend that down and, though, try to submit evidence

[00:23:49] Speaker 02:
of unexpected results or something else to show that what he's really doing, as one can see in reviewing the claims on page 100 to 101, is that he's changing the size of the plate in the gaps.

[00:24:06] Speaker 02:
And it just says a plurality of perforations, which are in Miller and Redfield.

[00:24:12] Speaker 02:
And all that's going on here is a changing of the variable of plate size

[00:24:18] Speaker 02:
in the pipe, which yields, as KSR says, et cetera, predictable results.

[00:24:24] Speaker 02:
You know that when you reduce the size of the plate, add more holes, you're going to get more airflow.

[00:24:30] Speaker 02:
If you increase it, you may get less airflow.

[00:24:33] Speaker 02:
So nothing unexpected is happening here.

[00:24:36] Speaker 04:
And you're saying that the basis for the rejection of claims three through six, which had all these different percentages on the size of the plate and perforations,

[00:24:48] Speaker 04:
That reasoning applies equally to broad claim one, which is also just about the range and the size of the plate?

[00:24:58] Speaker 02:
It could, Your Honor.

[00:24:59] Speaker 02:
That is consistent with what the board did, that the board said we're going to consider and construe substantially in light of the specification and what the purpose is.

[00:25:12] Speaker 02:
And the purpose was to avoid clogging.

[00:25:15] Speaker 02:
But we have the perforations to help do that.

[00:25:18] Speaker 02:
as well, and these pulverized particles, as I mentioned before, when they're depicted in figures three and four of the application, they're like little arrows.

[00:25:28] Speaker 02:
And they're spread out in terms of going through the cross-sectional area.

[00:25:36] Speaker 02:
And they have a frequency that permits even one at a time to get through.

[00:25:43] Speaker 02:
So his own drawings show that.

[00:25:45] Speaker 02:
And could he have submitted?

[00:25:46] Speaker 02:
or run some experiments and submitted some evidence countering the prima facie case of obviousness here that should these claims issue, there's very broad and this is what this court's case law goes to when you have similar structure in prior art references, establishing a prima facie case.

[00:26:13] Speaker 03:
Maybe he said this already.

[00:26:14] Speaker 03:
What's the pre-emephesia case that Redfield teaches, no clogging, no erosion?

[00:26:25] Speaker 02:
That there are two gaps.

[00:26:28] Speaker 02:
And it shows that things get through both the perforations and the gaps.

[00:26:35] Speaker 02:
And then when you consider Redfield in light of applicant specification,

[00:26:41] Speaker 02:
in the specification, all you have to do is avoid clogging.

[00:26:43] Speaker 02:
So then you consider, well, what's trying to go through?

[00:26:46] Speaker 02:
And as we discussed in our brief, the particles, as shown in figures three and four of his specification, are really small.

[00:26:56] Speaker 02:
They are pulverized.

[00:26:58] Speaker 02:
And they are almost sporadic when you look at, again, if he changed, and maybe you'd have to get a new application finally, but if he changed things such as the size of the particles,

[00:27:11] Speaker 02:
and the rate of flow and things like that.

[00:27:14] Speaker 02:
Or ran experiments showing the priority against his broad claim.

[00:27:19] Speaker 03:
Let me see if I can.

[00:27:21] Speaker 03:
This may just be confusion on my part.

[00:27:23] Speaker 03:
I guess what I keep hearing is, if you look at Redfield, there is a gap.

[00:27:30] Speaker 03:
So inherently, no clogging, no erosion.

[00:27:35] Speaker 03:
Yes.

[00:27:35] Speaker 03:
Because otherwise, I mean, there's nothing in Redfield.

[00:27:37] Speaker 03:
It's one page about clogging and erosion.

[00:27:41] Speaker 03:
So what does that add?

[00:27:43] Speaker 03:
Why did the board think that that was a proper addition, a meaningful addition, to its claim construction if there's always no clogging, no erosion?

[00:27:55] Speaker 03:
Well, the board actually, in its claim construction... In what way does what I think the examiner said, but it doesn't matter whether the examiner said this, any gap will do.

[00:28:12] Speaker 02:
Well, the board didn't say that.

[00:28:14] Speaker 02:
The board said insubstantial, no clogging.

[00:28:20] Speaker 03:
I agree the board didn't say that.

[00:28:21] Speaker 03:
Redfield, it seems to me, teaches any gap.

[00:28:25] Speaker 03:
Full stop doesn't teach anything about clogging or erosion.

[00:28:29] Speaker 03:
So I don't see the prima facie case if clogging and erosion have any meaning at all.

[00:28:35] Speaker 02:
Well, because, Your Honor, when you look at Redfield,

[00:28:40] Speaker 02:
on page 7 of our brief.

[00:28:43] Speaker 02:
I mean, that's a not insignificant gap.

[00:28:48] Speaker 02:
It's not just parallel lines really close together.

[00:28:52] Speaker 02:
It is, for this application, pulverized particles, which have no restriction as to size or rate of flow, that here you have, and respectfully inviting the court's attention,

[00:29:09] Speaker 03:
All Redfield actually says in, I guess we can call it the written description, I don't know if that language is appropriate, but is the edges of the damper are freed from contact with the pipe, and the damper is of a smaller diameter than that of the interior of the pipe.

[00:29:26] Speaker 03:
Any gap.

[00:29:28] Speaker 03:
I mean, if you're going to draw a picture, you've got to have a gap.

[00:29:31] Speaker 03:
That's at least what it is in figure one, or you wouldn't even see that there's a gap.

[00:29:37] Speaker 03:
So I don't read anything into the size of the gap in figure one.

[00:29:42] Speaker 03:
And the written description just says, don't have contact.

[00:29:46] Speaker 03:
So I guess I just keep wondering, either clogging and erosion are meaningless, or if they're meaningful, I don't see it being taught in Redfield.

[00:30:01] Speaker 02:
They are meaningful to the extent that there are.

[00:30:06] Speaker 02:
any remaining particles that did not go through the perforations.

[00:30:11] Speaker 02:
And as the board said, these particles can go around.

[00:30:17] Speaker 02:
And as applicant specification shows, these particles are very small and sporadic.

[00:30:24] Speaker 02:
And they can get through Redfield's gap, at least shifting the burden to come back and either amend your claim with unexpected results or show us something unexpected, because here,

[00:30:37] Speaker 02:
Redfield and Miller have space in between, and it's not specified how much has to go through these gaps.

[00:30:46] Speaker 04:
And gap is not in the claim.

[00:30:47] Speaker 04:
The construction to avoid clogging and erosion is a goal that was identified and specified in the specification, which is why the board used that as part of the claim construction.

[00:31:05] Speaker 04:
specification doesn't go further as to what really is needed to avoid clogging and erosion.

[00:31:12] Speaker 04:
And if we're talking about something like smoke, well, smoke doesn't need a very big gap in order to move through and pass an obstruction.

[00:31:25] Speaker 02:
I absolutely agree, Your Honor.

[00:31:26] Speaker 02:
Or, I can add to that, something that is pulverized.

[00:31:30] Speaker 02:
This application says this coal is

[00:31:34] Speaker 02:
pulverized, which means crushed.

[00:31:36] Speaker 02:
It is really small.

[00:31:38] Speaker 02:
And applicant specification shows these really small particles, which is why the board and examiner thought that a prima facie case was established based on Redfield and Miller that have gaps.

[00:31:52] Speaker 02:
And the applicant should at least have to come back.

[00:31:54] Speaker 01:
OK, Mr. Piccolo, we're well over our time.

[00:31:57] Speaker 01:
I need to let opposing counsel have his rebuttal.

[00:32:00] Speaker 01:
Thank you, Your Honor.

[00:32:01] Speaker 01:
I have an extra minute, please, because Mr. Piccolo went over.

[00:32:06] Speaker 00:
Thank you, and I'll be very brief.

[00:32:08] Speaker 00:
First, with regards to the size of the particles, I don't think that the figures in the specification purport to describe the size or even the density of the particles.

[00:32:19] Speaker 00:
Those figures instead just show where the paths of flow can occur.

[00:32:24] Speaker 00:
And in fact, the board made no findings at all on the size of the particles, and there really is no basis in the board's decision or the record for

[00:32:33] Speaker 00:
adding the language suggesting that it's only necessary for an insubstantial amount of fuel to flow around the damper plate.

[00:32:43] Speaker 00:
With regards to the prima facie case, with respect to claims that specify ranges, I do think we need to fall back on KSR versus Teleflex and the court's holding there that there

[00:33:01] Speaker 00:
Effectively, there has to be a reason to modify the prior art to arrive at the claimed invention.

[00:33:07] Speaker 00:
The cases that are cited that deal with the criticality of ranges, whether it's Woodard or Enrave Bash or so on, they're not inconsistent with that because they describe situations where the range overlaps or the range abuts it.

[00:33:22] Speaker 00:
And they also explicitly describe situations where the goals of optimization or the problems that are being solved

[00:33:30] Speaker 00:
are exactly the same.

[00:33:32] Speaker 00:
Here, the problems in a stovepipe damper are quite different than the problems you might find.

[00:33:36] Speaker 04:
But there are cases.

[00:33:37] Speaker 04:
I mean, of course, there's cases like Woodruff and others that talk about when you have an overlapping range or abutting ranges that's prima facie obvious.

[00:33:46] Speaker 04:
But then there's other cases where you don't need an abutting or overlapping range.

[00:33:50] Speaker 04:
You could just have an appreciation that a given attribute has a certain property connected to it.

[00:33:58] Speaker 04:
And then once you

[00:33:59] Speaker 04:
once people of skill and the art understand that, then it becomes prima facie obvious to play with that attribute, whether it's a weight percentage or a temperature or a size, to move it around back and forth to land at a particular number that is your particular preference.

[00:34:24] Speaker 00:
Well, and I agree.

[00:34:26] Speaker 00:
But the issue is that there

[00:34:28] Speaker 00:
There's no reason to believe that anybody's particular preference in the stovepipe art is going to be something that is 40 to 60% obstructed, as specified by claim four.

[00:34:38] Speaker 00:
There has to be... But that's the rebuttal that you have to make in this... Well, I don't think... I think otherwise, though, you do run afoul of KSR's rule that there has to be a reason for performant modification.

[00:34:54] Speaker 00:
We don't do these optimizations without a goal in mind.

[00:34:58] Speaker 00:
It is true that it will affect flow damping, but there's nothing in the evidence to suggest what an optimal level of flow damping is.

[00:35:07] Speaker 00:
And in fact, all of the cited references show or suggest that a maximal flow damping that is desired is one that comes from a damper plate that occupies pretty much all of the conduit area.

[00:35:18] Speaker 01:
Okay, Council, I think we have your argument.

[00:35:21] Speaker 01:
I think both Council for the arguments today, in this case, is submitted.