[00:00:00] Speaker 00:
16, 26, 95, didn't rate Francis.

[00:00:51] Speaker 00:
Mr. Flaxman, whenever you're ready.

[00:01:02] Speaker 05:
May it please the court, I'm Howard Flaxman, on behalf of Appellant Francis.

[00:01:07] Speaker 05:
Thank you for the opportunity to speak today.

[00:01:09] Speaker 05:
Seven years ago, Mitch Francis filed a patent application for a virtual travel magazine, P.F.

[00:01:15] Speaker 05:
Gallagher.

[00:01:16] Speaker 05:
After extended prosecution, an appeal was filed.

[00:01:19] Speaker 05:
the decision was issued by the PTAP.

[00:01:23] Speaker 05:
The reason for the present application has made it this far as a result of the examiners and the PTAP's failure to explain the pertinence of the various cited references in a manner sufficient for the appellant to fully understand the rejection and to respond in a known manner.

[00:01:43] Speaker 05:
This was compounded by the PTAP's decision sustaining the rejection with even less explanation

[00:01:49] Speaker 05:
than was provided by the examiner.

[00:01:53] Speaker 05:
I've been a PAD practitioner for over 25 years and an examiner for three years.

[00:01:58] Speaker 05:
As such, I dealt with these issues daily.

[00:02:01] Speaker 05:
Fortunately, the vast majority of examiners are very good, provide comprehensive office actions.

[00:02:08] Speaker 05:
However, there are instances where, for whatever reason, examiners refuse to provide details despite our request for further explanation.

[00:02:18] Speaker 05:
I suspect they sometimes believe we as patent attorneys are being too adversarial.

[00:02:24] Speaker 00:
Well, rather than analyzing what they do in general, what is it specifically that you think the patent op that was not sufficiently articulated as a basis for the final decision?

[00:02:36] Speaker 00:
Sure.

[00:02:36] Speaker 00:
I mean, they pointed to the specific references, specific paragraphs, and those references with respect to the disclosures.

[00:02:43] Speaker 00:
So I know you disagree with their result.

[00:02:46] Speaker 00:
But what was deficient in terms of their analysis?

[00:02:51] Speaker 00:
Sure.

[00:02:55] Speaker 03:
Start with video clip.

[00:02:57] Speaker 03:
What's that?

[00:02:57] Speaker 03:
Video clip.

[00:02:59] Speaker 03:
Yep.

[00:02:59] Speaker 03:
That's one of them.

[00:03:00] Speaker 03:
That's paragraph 43 in Rose.

[00:03:04] Speaker 03:
That's out line 16.

[00:03:06] Speaker 03:
Sure.

[00:03:07] Speaker 03:
If that shows the video, that shows that limitation, right?

[00:03:12] Speaker 03:
Okay, so if the examiner, when they said rows 43, had said video line 16, you wouldn't be complaining.

[00:03:20] Speaker 05:
I think we would still be complaining, Your Honor.

[00:03:23] Speaker 05:
Because in presenting a rejection, it's not enough just to create a shopping list of references and go out and find those elements in various references.

[00:03:34] Speaker 05:
You have to combine them

[00:03:36] Speaker 05:
in a way that fulfills the obligations of KSR.

[00:03:40] Speaker 03:
What I did is I went through rows 43, line 16.

[00:03:48] Speaker 03:
That's the booking and reservation.

[00:03:50] Speaker 03:
That's rows 59, line 2 and following.

[00:03:55] Speaker 03:
Reviewing rates, that's rows 56, line 15.

[00:03:58] Speaker 03:
reviewing reviews.

[00:04:00] Speaker 03:
That's rows 57, lines 17-18, rows 58, lines 8-9.

[00:04:05] Speaker 03:
Options shown in a window, that's rows 59, lines 1-4 relating back, right?

[00:04:11] Speaker 03:
So they're all there.

[00:04:14] Speaker 03:
So, instead of the examiner having said what I just said, and then the board saying it again, because you don't want the board just to agree with the examiner.

[00:04:24] Speaker 03:
The board says it chapter and verse.

[00:04:26] Speaker 03:
Then you say, what would be missing was what the fans put together.

[00:04:30] Speaker 03:
I mean, your argument is that these specific limitations, one, two, three, four, five, were nowhere found in the priority.

[00:04:41] Speaker 05:
Right.

[00:04:42] Speaker 05:
And there's one additional limitation that's part of that clause that says that the selected options being provided for viewing by the consumer

[00:04:51] Speaker 05:
in the form of windows displayed within the virtual trapdoor.

[00:04:55] Speaker 03:
Well, that, I think, is, that's Rose 59 lines long to forward.

[00:05:01] Speaker 03:
We're deferring back to figures 8 and 9.

[00:05:03] Speaker 06:
OK.

[00:05:04] Speaker 03:
I mean, figure 8 and 9 is a slam dunk.

[00:05:07] Speaker 03:
I mean, it's a window.

[00:05:08] Speaker 03:
The 9 opens up from 8.

[00:05:12] Speaker 05:
Well, I respectfully disagree.

[00:05:16] Speaker 05:
Rose deals with a web page.

[00:05:18] Speaker 05:
OK.

[00:05:19] Speaker 05:
And it's interesting to note that web is owned by OpenTable, so anybody who's made reservations through OpenTable might be familiar with how it works.

[00:05:28] Speaker 05:
It requires you to have a banner on the left side, or the ROSE application, which is very typical.

[00:05:34] Speaker 05:
And you click on various hyperlinks and it pops up a whole new web page with that information, whether it be a video, whether it be reviews and breaks, whether it be further information.

[00:05:50] Speaker 05:
Now, what the inventor was trying to do here was to create a virtual magazine that took the user beyond the conventional website, which people find difficult to use, and brought them to a world that replicated the travel magazine that you normally find when you get to your hotel.

[00:06:11] Speaker 05:
If you're traveling somewhere, you get to the hotel.

[00:06:13] Speaker 05:
There's a travel magazine.

[00:06:14] Speaker 05:
You flip through it.

[00:06:15] Speaker 05:
It's got entertainment.

[00:06:17] Speaker 05:
It's got shows, it's got hotels, restaurants.

[00:06:21] Speaker 05:
You can flip through it.

[00:06:22] Speaker 05:
In doing this was of the feeling that if you could provide this in a video format or an internet format, consumers could go and on their way to their destination, look at the materials, figure out where they wanted to go, what they wanted to do.

[00:06:43] Speaker 05:
And the next step would be, you can make reservations as you're traveling.

[00:06:48] Speaker 05:
You can book a hotel as you're going to your destination.

[00:06:52] Speaker 05:
Now, the key to all this is that it has to feel like a magazine.

[00:06:57] Speaker 05:
And it really, at the end of the day, has to feel like a magazine, not like a website.

[00:07:02] Speaker 05:
So that last clause about the videos, the rates, and all that being within the same window as the magazine is not a throwaway clause.

[00:07:13] Speaker 05:
It's something actually very important to the invention.

[00:07:17] Speaker 05:
Which is that, if in fact you were to look at a video, let's say.

[00:07:27] Speaker 05:
Let's say you're thinking about going to a show and watch a video.

[00:07:30] Speaker 05:
Well, if you click on that video and you go to a whole other web page, you go to YouTube.

[00:07:35] Speaker 05:
You're not getting the magazine experience.

[00:07:37] Speaker 05:
This is not like sitting in your hotel room flipping through a magazine and creating that experience.

[00:07:43] Speaker 01:
What exact language do you think calls that out in ClientQuiz3?

[00:07:47] Speaker 01:
Is it entertainment booking?

[00:07:50] Speaker 01:
Is it the language of booking magazine?

[00:07:52] Speaker 05:
No, it's the very last sentence.

[00:07:55] Speaker 05:
Selected options being provided for viewing by the consumer in the form of windows displayed within the virtual travel restaurant entertainment booking magazine.

[00:08:05] Speaker 05:
And if you read that in conjunction with the specification, I mean, the background of the invention is very clear that web pages have problems.

[00:08:15] Speaker 05:
And the background of the invention tells the story that I was just telling, is that these places, web pages exist.

[00:08:25] Speaker 05:
We're not claiming to have invented videos, any of that.

[00:08:31] Speaker 05:
But this idea of bringing somebody into the world of a virtual magazine didn't exist.

[00:08:36] Speaker 05:
And Rose doesn't disclose it.

[00:08:39] Speaker 05:
Suri doesn't disclose it.

[00:08:41] Speaker 05:
And that's why the combination of the elements and why they would be pulled together is so important to this invention.

[00:08:50] Speaker 05:
If that answers your question.

[00:08:52] Speaker 03:
Yeah, but I want to understand why OpenTable isn't doing the same thing for you in connection with

[00:08:57] Speaker 03:
being able to book a reservation at a table as you're moving through one city after another.

[00:09:04] Speaker 03:
You're in your car, you're zooming along.

[00:09:06] Speaker 03:
It's basically like a magazine for reservations.

[00:09:09] Speaker 03:
You're actually opening Zagat.

[00:09:12] Speaker 05:
But they don't.

[00:09:13] Speaker 05:
They provide you a web page.

[00:09:15] Speaker 05:
That's an experience.

[00:09:18] Speaker 03:
Well, they provide you with something that's replicating.

[00:09:21] Speaker 03:
It's a virtual

[00:09:25] Speaker 03:
search engine that searches into, say, Zagat?

[00:09:31] Speaker 03:
Sure.

[00:09:32] Speaker 05:
Once again, but I'll return to the point that in our background we acknowledged that those existed, that the webpages for reservations existed prior to this.

[00:09:48] Speaker 05:
But what didn't exist was the idea of bringing the magazine experience

[00:09:54] Speaker 05:
The travel magazine experience, I should say, because Basurgi does talk about, you know, flipping pages and all that.

[00:10:00] Speaker 05:
The travel magazine experience to the consumers.

[00:10:04] Speaker 03:
And that's where I think the invention lies, and that's where our problem with the way it was addressed by the panelists is... Well, it's a travel magazine experience plus, because the travel magazine, I read travel and leisure magazines at home, but they don't allow me to put my finger on something and get a reservation.

[00:10:21] Speaker 05:
No, it's a travel magazine that's even better than a travel magazine, yes.

[00:10:25] Speaker 05:
I mean, exactly.

[00:10:32] Speaker 05:
And what our problem with the rejection from the patent office, and like I said, we deal with it daily.

[00:10:37] Speaker 05:
And we run into these situations on a regular basis where it's almost a standoff between us as the patent attorney and the examiner as to who's going to break first and give more.

[00:10:51] Speaker 05:
The examiner gives us the reference to the specific

[00:10:54] Speaker 05:
columns and lines.

[00:10:57] Speaker 05:
We come back and say, oh, we've read it, but we don't really see it.

[00:10:59] Speaker 05:
Because we as patent attorneys don't want to do the examiner's work.

[00:11:03] Speaker 05:
If we read that, we can interpret it in much the same way the solicitor has.

[00:11:08] Speaker 05:
I mean, the solicitor has reviewed those articles and created a very extensive argument for opposites.

[00:11:15] Speaker 05:
But that's not what the examiner did.

[00:11:17] Speaker 03:
Well, you seem to have, I mean, right now it seems to me that you've got getting most of your eggs

[00:11:22] Speaker 03:
in the final basket, which is the window displayed within the magazine.

[00:11:29] Speaker 03:
That's where I hear you.

[00:11:33] Speaker 03:
We've identified where the other limitations lie.

[00:11:38] Speaker 03:
I hear you, but I'm listening to your eggs in the window basket.

[00:11:43] Speaker 03:
So, assuming it's there, can you point to me in the record or something in here where you traverse the rejection by saying, hey, wait a second, you don't understand the window limitation?

[00:11:55] Speaker 05:
Yes, we did it multiple times.

[00:11:58] Speaker 03:
Mike, can you give me a where, a judge's guide, where are you complaining that the examiner simply doesn't understand the significance of this final limitation about the window that opens in the magazine?

[00:12:17] Speaker 04:
I should have it on the top of my tongue.

[00:12:31] Speaker 05:
We talked about it at appendix 184, 207 to 208.

[00:12:35] Speaker 05:
I'm not sure where those are.

[00:12:38] Speaker 05:
I have my notes here.

[00:12:40] Speaker 05:
I know we responded to it in our reply brief to the examiner's answer, explaining that the Windows clause was never addressed

[00:12:55] Speaker 03:
And 184, you don't specifically point out the window.

[00:13:00] Speaker 05:
Right.

[00:13:01] Speaker 05:
I'm into my rebuttal period.

[00:13:03] Speaker 05:
If you will excuse me for a moment.

[00:13:06] Speaker 05:
Okay, go ahead and mean that.

[00:13:10] Speaker 05:
During my period.

[00:13:30] Speaker 02:
Just starting with this windows argument that my friend made, that was not made below.

[00:13:40] Speaker 02:
There was nothing in the brief to the board that called out to the board or the examiner that somehow the windows part of the limitation was not met.

[00:13:56] Speaker 02:
The briefing, actually, on this whole last links limitation was fairly short as well.

[00:14:01] Speaker 02:
Much of the briefing below concerned other aspects of the rejection.

[00:14:07] Speaker 02:
And it was really just at the end, there's a paragraph in Francis's briefing that says, you rely on these paragraphs.

[00:14:15] Speaker 02:
We don't see it.

[00:14:16] Speaker 02:
They talk about a web module, but we don't understand what it means.

[00:14:20] Speaker 02:
And there's nothing that calls out this particular Windows argument.

[00:14:24] Speaker 02:
And in fact, I found it somewhat hard to discern even from the briefs to this court.

[00:14:30] Speaker 03:
Maybe it was made more... Whose burden is it to be specific in this game we're playing?

[00:14:36] Speaker 03:
Isn't it the examiner's burden to be specific?

[00:14:38] Speaker 02:
It is the examiner's burden to be specific.

[00:14:41] Speaker 02:
And here, because the reference was so clear, and because those paragraphs...

[00:14:48] Speaker 03:
You're reciting what I recited, but I mean, it's sure the matter is on the windows limitation.

[00:14:54] Speaker 03:
The only way I can find the windows limitation is... Let's see, it's in rows 59, lines 1 to 4, kicking back to figures 8 and 9.

[00:15:08] Speaker 03:
And so, figure 8 and 9 shows that's open-tabled, right?

[00:15:15] Speaker 03:
That's the windows not being opened in the magazine.

[00:15:18] Speaker 03:
Is it?

[00:15:19] Speaker 02:
Well... No.

[00:15:22] Speaker 02:
Figures 8 and 9, I think it is showing the windows that are open in the next... Right?

[00:15:27] Speaker 03:
8 and 9 is what opens when you click on the table reservation, 177 and figure 8.

[00:15:35] Speaker 02:
Right.

[00:15:37] Speaker 02:
So if you look at 9, you still have... At least I have two answers.

[00:15:42] Speaker 02:
The first one is, if you look at figure 9,

[00:15:45] Speaker 02:
it still shows the same sidebar that you had in the previous window, with menu, specials, wine list, photos, reviews, et cetera.

[00:15:52] Speaker 02:
And it's got the same font in the same format.

[00:15:56] Speaker 02:
The tabs look the same.

[00:15:58] Speaker 02:
So that's an indication that it's in the same magazine, if you're comparing the year nine to figure eight.

[00:16:04] Speaker 02:
And then also, generally, what is a magazine?

[00:16:08] Speaker 02:
The magazine is just all the pages that are shown.

[00:16:12] Speaker 02:
And this is in the magazine, whether it

[00:16:15] Speaker 02:
You get that it looks like a paper magazine from Bozergi.

[00:16:21] Speaker 03:
For purposes of open table, figure eight is the magazine.

[00:16:24] Speaker 03:
And then you open things in the magazine if indeed figure nine is opening right on top of figure eight.

[00:16:35] Speaker 02:
Either way, if it's opening right on top of figure eight or if it's not opening right on top of figure eight, it's still

[00:16:43] Speaker 02:
in the magazine, because the magazine is simply what shows up on the screen.

[00:16:48] Speaker 02:
You have the same, probably the same web, beginning of the web address.

[00:16:53] Speaker 02:
There are each pages in the magazine, and this was actually... I mean, there's an argument here, there's a new basic argument.

[00:17:02] Speaker 03:
It's a question that's like the one you were saying here in the court for the last argument, the question of what being shown.

[00:17:09] Speaker 03:
I mean, for purposes of the last argument, let's assume that the board had said, well, if you want to see a reason to combine, go look at the Clevenger Declaration, period.

[00:17:19] Speaker 03:
That's all they said.

[00:17:20] Speaker 03:
Didn't tell you anything in it.

[00:17:21] Speaker 03:
That would probably be insufficient.

[00:17:25] Speaker 02:
It would depend on the facts.

[00:17:26] Speaker 02:
I think if the Clevenger Declaration, paragraph two, said the reason to combine is, and I tried not to listen to that case as much as possible, but if, you know,

[00:17:36] Speaker 02:
The things are modular, and it's like Asano and KSR.

[00:17:40] Speaker 03:
So what you're saying is it okay for both the examiner and the word to use shorthand, where when you translate the shorthand, you come up with the explanation.

[00:17:52] Speaker 02:
Yes, Your Honor.

[00:17:53] Speaker 02:
If it's clear enough, and it is a shorthand, really there wasn't much more for the examiner to do here than to just recite.

[00:18:01] Speaker 03:
Well, you could have done what I did.

[00:18:02] Speaker 03:
They could tell you which line it arose.

[00:18:05] Speaker 02:
that they could have said which line, and I admire your honor for doing that because there weren't line numbers, and so you had to go and make your own line numbers, usually when they're simple paragraph numbers.

[00:18:16] Speaker 03:
There are a few tasks at which I'm going to excel.

[00:18:20] Speaker 02:
But beyond creating line numbers, they did cite to the specific paragraphs.

[00:18:25] Speaker 02:
There aren't very many of them, and really, other than just writing out those paragraphs, there isn't a whole lot more to say.

[00:18:32] Speaker 02:
I'm a little bit surprised about this.

[00:18:35] Speaker 02:
I'm not sure, actually, to this day if the argument on the windows is that the windows, your argument, that the windows need to look like they're in the magazine, or if the argument is that because the reference didn't discuss that, explicitly discuss a window for anything other than reservations, that doesn't disclose the argument.

[00:18:55] Speaker 03:
What I couldn't tell was whether or not opening

[00:18:57] Speaker 03:
For example, in Amazon, you open a window and it goes off of Amazon's website to somebody else's.

[00:19:04] Speaker 03:
I couldn't tell whether this, by opening it in the magazine, meant that it had to stay all in the magazine, or whether you could open it in the magazine and nonetheless transfer electronically to somebody else's site for making the reservation.

[00:19:17] Speaker 02:
Right.

[00:19:17] Speaker 02:
And that's one...

[00:19:20] Speaker 02:
not sure to this day, but if that's what it is, then I think... Well, let me come back.

[00:19:23] Speaker 03:
Whose burden is it to answer the questions that you and I are asking you?

[00:19:27] Speaker 03:
Does the examiner have to tell you how he understands the window, the window opening in the magazine, and to say, I believe that in this claim it means opening clearly within the magazine, not going to an external source, and therefore I find OpenTable does the same thing?

[00:19:47] Speaker 02:
It is the examiner's burden to make the prima facie case, but it's not the examiner's burden to come up with every single, I don't want to say crazy, but every single potentially unsupported argument that someone might come up with and need it.

[00:20:02] Speaker 03:
How do we know?

[00:20:03] Speaker 03:
Is there a case law that tells us exactly what the nature of the examiner's burden is in understanding what the claim is and then being able to tell you why the prior order does or doesn't read on the claim?

[00:20:17] Speaker 02:
Well, we do have the CFR site that gives the examiner's burden is to say what the, give a reference, cite to the specific sections of the reference, and if not apparent, explain the significance.

[00:20:32] Speaker 02:
And certainly in a complex technical case where there might be more doubt about what the reference teaches, one might need to give an explanation beyond citing to the specific paragraphs of the reference.

[00:20:45] Speaker 02:
But I would submit that here,

[00:20:47] Speaker 02:
This is pretty simple.

[00:20:49] Speaker 02:
You just look at the part of the specification.

[00:20:52] Speaker 02:
It cites to the figures.

[00:20:54] Speaker 02:
And that there really isn't much more to say here that isn't apparent from the reference itself.

[00:21:00] Speaker 01:
It's your position that the Windows argument wasn't made before the examiner, right?

[00:21:05] Speaker 01:
And so had it been, though, let's just assume for a minute that it was very clearly made before the examiner, that at that point would the examiner have some sort of duty to respond to that?

[00:21:16] Speaker 02:
Yes, and I'm struggling to figure out exactly where it's from, but yes, they would.

[00:21:20] Speaker 02:
I mean, if the Windows argument were clearly made, the examiner should respond to it and explain.

[00:21:27] Speaker 02:
I guess it would stem from it's not apparent anymore.

[00:21:31] Speaker 03:
If you traverse a rejection successfully, then you're going to win.

[00:21:36] Speaker 03:
If we see that, see examples of that occasionally.

[00:21:40] Speaker 02:
Right, and that would be why one would expect the examiner to address it and say are they convinced or not by the traversing of the... Was there an interview during this course of this prosecution history at all?

[00:21:52] Speaker 01:
Not that it's required that someone have an interview on this jury.

[00:21:55] Speaker 02:
There's a call saying one here.

[00:21:56] Speaker 02:
That I'd have to double check, but I don't think it should be in the record, and I don't think there was one.

[00:22:03] Speaker 02:
can ask my friend here to confirm, but I'm fairly certain.

[00:22:08] Speaker 03:
Well, your view of the way the system works is the examiner makes a prima facie case for his or her rejection, and then the burden of going forward transfers back to the applicant, who then traverses.

[00:22:21] Speaker 03:
And on the grounds of the traverse, then put the examiner back into a burden of coming forward.

[00:22:28] Speaker 02:
Yes, if the traverse raises some new issue.

[00:22:33] Speaker 03:
In this record, we don't see a dialogue of that sort with respect to the window of limitation.

[00:22:38] Speaker 03:
At least I didn't see it, and we asked him to look.

[00:22:42] Speaker 02:
If you look at page appendix 171 through 172, that's the brief by Francis to the fore.

[00:22:53] Speaker 02:
Those are the pages that are most relevant to this limitation.

[00:22:57] Speaker 02:
It starts at the bottom of 171.

[00:22:59] Speaker 02:
This is still further claimed.

[00:23:02] Speaker 02:
One requires, and he lists the limitation.

[00:23:04] Speaker 02:
And the limitation is the whole last bit.

[00:23:08] Speaker 03:
The Windows limitation is mentioned twice in a generic way.

[00:23:12] Speaker 03:
I'm sorry, can you hear me?

[00:23:13] Speaker 03:
The Windows limitation is mentioned twice, one on 172, one on 171, in a generic way.

[00:23:19] Speaker 02:
In a generic way, because there's a lot in that limitation.

[00:23:22] Speaker 02:
So it just says none of the things in the limitation are met,

[00:23:25] Speaker 02:
The links to each of the hotels, restaurants, attractions, graphical user interface provide links offering an option of watching video promo, booking or reservation, viewing rates and reviews.

[00:23:34] Speaker 02:
Selected options being provided for viewing by the consumer from Windows, which is part of it.

[00:23:40] Speaker 02:
Then it just says that new features need to be disclosed and are suggested by Rosa Pasergi.

[00:23:45] Speaker 02:
The examiner says look at paragraphs 43, 55 through 59, but 43 relates to a web helper module and doesn't teach the required feature.

[00:23:54] Speaker 02:
And 50 through 59, I've been reviewed and do not prepare to close these limitations.

[00:23:59] Speaker 02:
And then it just sort of sums up.

[00:24:00] Speaker 02:
So to me, if I would read anything from this, it's that they think that the web helper module doesn't disclose video, which is what I thought maybe they were arguing here.

[00:24:08] Speaker 02:
Was there maybe going to be their primary argument?

[00:24:10] Speaker 02:
But it does.

[00:24:11] Speaker 02:
And it says it very plainly in paragraph 43 of video clips.

[00:24:15] Speaker 02:
So beyond that, and then looking at the reply, and then I can flip to reply, but there wasn't much more

[00:24:24] Speaker 02:
Here it's on appendix 190 to 191.

[00:24:30] Speaker 02:
And that, again, doesn't call out the windows part of that limitation.

[00:24:34] Speaker 02:
It just says the examiner didn't say enough.

[00:24:40] Speaker 02:
And where there's no, especially where there is no, I can see the concern that maybe the examiner could say more, but where there is no suggestion that there's anything wrong with it substantively, it seems not

[00:24:53] Speaker 02:
an ideal case to be concerned about that.

[00:24:57] Speaker 01:
It seems like both the applicant and the patent examiner are talking more in generalities with respect to the limitation.

[00:25:06] Speaker 01:
The limitation is met at these paragraphs.

[00:25:08] Speaker 01:
The limitation is not met without specifying exactly what about the limitation is not met.

[00:25:14] Speaker 01:
And it's like a five line limitation.

[00:25:17] Speaker 02:
Yeah, I see that.

[00:25:19] Speaker 02:
I also think that here where the

[00:25:22] Speaker 02:
fire, I guess, was focused.

[00:25:23] Speaker 02:
If you look at the briefing to the board, there's lots of pages on other issues.

[00:25:29] Speaker 02:
And I think that responding in time to the amount of weight that is given to it by the applicant or by the appellant is rational when there is such a tight deadline for the board.

[00:25:43] Speaker 02:
And it seems like this is the end.

[00:25:45] Speaker 02:
And it was the final argument in the brief, the very final argument, which wasn't given much attention.

[00:25:51] Speaker 02:
Then maybe it was reasonable for the examiner and the board also not to give it an extra boardage.

[00:26:03] Speaker 02:
Unless there's anything else, Your Honor.

[00:26:05] Speaker ?:
Thank you.

[00:26:20] Speaker 05:
OK.

[00:26:21] Speaker 05:
Returning to Judge Stoll's question with regard to the interview, there was not an interview conducted in this application.

[00:26:29] Speaker 05:
I can tell you from personal experience why not.

[00:26:31] Speaker 05:
Interviews are generally very helpful in remedying issues.

[00:26:37] Speaker 05:
My experience has told me for many years that when you have an examiner who is doing what this examiner did, which is basically copying the claim and putting

[00:26:51] Speaker 05:
bunch of reference rooms next to it.

[00:26:53] Speaker 05:
If they don't move from that after one or two office actions, that they're not going to move.

[00:27:00] Speaker 05:
When I go in for an interview, I don't want to have an argument with the examiner.

[00:27:03] Speaker 05:
I want to have something concrete.

[00:27:04] Speaker 01:
Where is it in the appendix that you raised your window argument?

[00:27:07] Speaker 01:
Oh.

[00:27:09] Speaker 01:
Before you had an examiner and then before the board.

[00:27:11] Speaker 05:
Sure.

[00:27:13] Speaker 05:
It was first raised in an amendment on appendix 126.

[00:27:18] Speaker 05:
in the pre-appeal brief at appendix 146.

[00:27:20] Speaker 03:
Wait, wait, wait.

[00:27:22] Speaker 03:
126?

[00:27:23] Speaker 03:
And where is it all 126?

[00:27:25] Speaker 05:
Now, I can tell you, each time that it is presented, it is presented as a lot.

[00:27:33] Speaker 05:
The third clause.

[00:27:34] Speaker 03:
A quotation of all the limitations.

[00:27:36] Speaker 03:
Exactly.

[00:27:37] Speaker 05:
And that goes back to my answer.

[00:27:41] Speaker 03:
Where in the record did you refer to the windows limitation with some flesh on it?

[00:27:48] Speaker 03:
Yeah, rather than just citing it as a fact.

[00:27:52] Speaker 03:
I want a fleshy reference.

[00:27:56] Speaker 05:
In hindsight, we didn't get into it in as much flesh because we did not have a rejection.

[00:28:00] Speaker 03:
I want to know about any flesh.

[00:28:01] Speaker 05:
A pound, you know.

[00:28:03] Speaker 05:
Well, we talked about the web module not addressing that limitation.

[00:28:06] Speaker 05:
Our problem was, from the beginning, that we didn't know where the examiner was coming from with the rejection.

[00:28:15] Speaker 05:
We tried to make the point that, hey,

[00:28:18] Speaker 05:
We've read it, we don't see it, we need a further explanation.

[00:28:21] Speaker 01:
Why wouldn't you specifically point out where the reference doesn't teach relative to the claim?

[00:28:26] Speaker 01:
Why wouldn't you point that out?

[00:28:27] Speaker 01:
You can't, you don't see it.

[00:28:29] Speaker 01:
There's one reference being relied on by the patent examiner.

[00:28:33] Speaker 01:
One reference being relied on and then you read that reference and then it's your burden to respond and explain why that reference does not teach the specific limitations.

[00:28:44] Speaker 01:
I don't understand why

[00:28:45] Speaker 01:
that couldn't be done given the citation of paragraphs by the examiner.

[00:28:50] Speaker 05:
I can explain from a patent practitioner's perspective.

[00:28:53] Speaker 05:
No, just in this case.

[00:28:54] Speaker 01:
I don't want to go by your general.

[00:28:55] Speaker 05:
In this case?

[00:28:56] Speaker 05:
Okay.

[00:28:57] Speaker 05:
And it applies to generalities, is that I see it as the burden of the patent office to make their prima facie rejection.

[00:29:06] Speaker 05:
They have to fill the obligations of KSR and give me a reasoned explanation for why

[00:29:11] Speaker 05:
those references read upon the priority and why, in fact, it would be obvious.

[00:29:16] Speaker 05:
If we go down to, you know, CFR 1.104, I mean, it's pretty clear that it's the examiner's obligation to describe it.

[00:29:25] Speaker 01:
Okay, so there's one reference being relied on.

[00:29:27] Speaker 01:
Specific paragraphs are cited for the particular limitation.

[00:29:31] Speaker 01:
And you're saying that doesn't meet the regulation.

[00:29:33] Speaker 01:
But just for a minute, backing away from whether it meets the regulation or not, why couldn't you respond to it?

[00:29:39] Speaker 05:
I could have, but it would have required me to guess at what the examiner was basing the rejection upon, which, in my point of view, is doing the examiner's job and is not something that's necessary for us to do.

[00:29:51] Speaker 03:
Aren't I correct that your original view was that Rose wasn't like even pertinent priority?

[00:29:56] Speaker 03:
Well, it's the primary, right?

[00:29:57] Speaker 03:
But you wanted it off the table.

[00:30:00] Speaker 05:
Yeah, I would have loved that.

[00:30:02] Speaker 05:
You lost that argument.

[00:30:03] Speaker 03:
I lost that argument.

[00:30:04] Speaker 03:
So, when the examiner comes back and says, paragraph 43 of Rose,

[00:30:09] Speaker 03:
Why couldn't you have said, where do you find any of these and then give your kitchen sink list of the six limitations?

[00:30:17] Speaker 03:
Where are any of those?

[00:30:19] Speaker 03:
And I don't see that in 43.

[00:30:22] Speaker 05:
I guess we were speaking past each other because, in my mind, when I explained to the examiner that I've reviewed those paragraphs, and I'm unable to find the combination of elements being claimed... Well, when you say you couldn't find the combination, that's different from not finding the limitations.

[00:30:38] Speaker 03:
That is true.

[00:30:39] Speaker 03:
So your argument is many layers.

[00:30:41] Speaker 03:
First, Rose doesn't count, Rose doesn't teach the specific limitations, doesn't teach the combinational limitations, but you're not saying to the examiner any of those.

[00:30:51] Speaker 03:
All you're saying is Rose doesn't apply.

[00:30:55] Speaker 03:
When he comes back and cites you, as Judge Saul was saying.

[00:30:58] Speaker 05:
As I said before, examiners and practitioners butt heads in this manner where the examiner is giving me nothing more,

[00:31:06] Speaker 03:
I would make the comment that I don't see in this reference... The problem is, you're now left without a fleshy response to a rejection.

[00:31:21] Speaker 03:
And so, we don't know where the examiner came up, because you simply said, well, the limitations are shown.

[00:31:32] Speaker 03:
Rather than saying, tell me where in, where does it teach you?

[00:31:36] Speaker 03:
that would force him to come forward and tell you where.

[00:31:39] Speaker 05:
But I still think the burden falls on the Patent Office to make that prima facie rejection beforehand.

[00:31:44] Speaker 03:
I don't think that... That's the question for us is whether or not a prima facie rejection was made by citing the paragraphs of prayer.

[00:31:52] Speaker 05:
I don't think the examiner ever got to that point of giving me the prima facie rejection that I needed in order to respond in a knowing manner.

[00:32:01] Speaker 05:
For me to respond in the manner

[00:32:03] Speaker 03:
you guys are suggesting, would have required me to prepare something... Well, you would have told us what your interpretation of the windows was.

[00:32:13] Speaker 03:
Like, was it actually opening entirely within the magazine, or was it also meant to reach opening outside the magazine at the home side of the person you're making the reservation for?

[00:32:23] Speaker 03:
Presumably, you want your claim to be broad, right?

[00:32:28] Speaker 03:
But you never told the examiner that.

[00:32:30] Speaker 05:
No, we spoke past each other.

[00:32:32] Speaker 05:
I would agree on that.

[00:32:34] Speaker 05:
But the question comes down to who's got the ultimate burden of making the recaption.

[00:32:41] Speaker 00:
Thank you very much.

[00:32:43] Speaker 00:
Thank you.