[00:01:33] Speaker 01:
Mr. Perum, please proceed.

[00:01:35] Speaker 02:
Thank you, Your Honor.

[00:01:36] Speaker 02:
May it please the Court, I'm here on behalf of Mr. William H. Radcliffe, appealing from the final decision of the Patanopoulos Board of Appeals, and who rejected his claims on a process for producing butanol.

[00:01:54] Speaker 02:
In the page 8 of the Appellant's Brief, there's an italicized portion

[00:02:01] Speaker 02:
of the sole independent claim.

[00:02:06] Speaker 02:
That italicized portion shows the key points of Mr. Radcliffe's process for efficiently producing butanol by using a synergistic effect of many different processes.

[00:02:23] Speaker 02:
Higher quality of butanol and other biofuels is achieved by producing

[00:02:31] Speaker 02:
the material that contains much less water and uses the material to produce the butanol more effectively than the prior art.

[00:02:51] Speaker 02:
The appendix, the appellant pages 21 and 22, sets forth the advantage of butanol as a biofuel

[00:03:02] Speaker 02:
Appendix page 23, first full paragraph shows the butanol efficiency.

[00:03:09] Speaker 03:
The last full paragraph... I'm sorry, does the claim say the word butanol?

[00:03:13] Speaker 02:
No, claim one does not say the word butanol.

[00:03:16] Speaker 03:
It says biofuel, right?

[00:03:17] Speaker 03:
Yes, sir.

[00:03:18] Speaker 03:
And alcohol?

[00:03:19] Speaker 03:
Yes, sir.

[00:03:20] Speaker 03:
Okay.

[00:03:26] Speaker 02:
But the but of the butanol advantages are shown.

[00:03:31] Speaker 02:
The synergistic effect of producing the biofuel is explained in the appendix on page 29.

[00:03:39] Speaker 02:
The advantages of using artichokes over corn is clearly shown in that artichokes can produce 40 billion gallons of butanol over the same

[00:03:55] Speaker 02:
area of corn that produces only 12 billion gallons of butanol.

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The process also provides, as shown in the appendix on page 31, that the algae treatment by this process creates an 89 percent efficiency with the algae and thereby there is

[00:04:17] Speaker 02:
the process greater than that shown by the prior art.

[00:04:21] Speaker 01:
Okay, well, Council, it would really help me if you focused on what was wrong with the board's opinion instead of just telling me what you think about the state of the patented invention.

[00:04:32] Speaker 01:
Yes, ma'am.

[00:04:37] Speaker 02:
Euler, a primary reference used in six of the rejections, relates to biodiesel.

[00:04:47] Speaker 02:
It mentions biofuel, bioalcohol, in a negative fashion.

[00:04:53] Speaker 02:
In paragraph 80 of the reference, it says that the biofuel produced is, the biodiesel is preferred over bioalcohol.

[00:05:06] Speaker 02:
The claims from 1 to 3, 5 to 8, 11, 13 to 17 and 19,

[00:05:15] Speaker 02:
Are we taking over Euler and Bill Edelman and Royale?

[00:05:19] Speaker 03:
I'm sorry, did you say paragraph 80 of Euler?

[00:05:22] Speaker 03:
Say again, please?

[00:05:23] Speaker 03:
Did you say paragraph 80 of Euler said was teaching away from biofuel and chose biodiesel over biofuel?

[00:05:34] Speaker 03:
Yeah, yeah.

[00:05:36] Speaker 03:
Okay, we're in paragraph 80.

[00:06:50] Speaker 02:
Where is that now?

[00:07:30] Speaker 02:
Here we go.

[00:07:46] Speaker 02:
Here we go, I'm sorry.

[00:07:48] Speaker 02:
Paragraph 88.

[00:07:54] Speaker 02:
The final products from a process presented herein are large amounts of proportions of bioethanol and possibly lesser amounts of proportions of bioethanol.

[00:08:05] Speaker 02:
We don't have any excess production that's used for biodiesel.

[00:08:09] Speaker 02:
If direct hydrogenation is used, no alcohol will then be produced.

[00:08:15] Speaker 02:
So, Euler, in paragraph 80, I apologize for making the mistake.

[00:08:20] Speaker 03:
I'm sorry, what's your paragraph?

[00:08:22] Speaker 03:
88.

[00:08:22] Speaker 03:
88, okay.

[00:08:23] Speaker 02:
I'm sorry.

[00:08:30] Speaker 02:
So Euler is clearly teaching away from the use of ethanol or alcohol in this matter.

[00:08:41] Speaker 02:
By teaching away from the use of alcohol, applicants' process cannot be rendered obvious using Euler as a primary reference.

[00:08:53] Speaker 02:
When some of the other claims of applicant

[00:09:00] Speaker 02:
relate to butanol.

[00:09:02] Speaker 02:
Now, going down the list of six rejections using Euler, claims 1 to 3, 5 to 8, 11 to 11, 13 to 17, and 19 are Euler and Beaux Edelman taken with Royal.

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1 to 3, Euler, Edelman, Royal, taken with Christensen.

[00:09:26] Speaker 02:
Claims 1 to 2, Euler, Edelman, Royal, taken with Alwine.

[00:09:31] Speaker 02:
Claims 1 and 9, Weiler, Edelman, and Royall, taken with Cox.

[00:09:36] Speaker 02:
Claims 1, 19, and 20, Weiler, Edelman, Royall, Christensen, and Sheeta.

[00:09:43] Speaker 02:
Now, if you look at the rejection of claim 1 over Weiler, Edelman, and Royall, and you consider the rejection of claim 2, rejecting claim 1 over those three references in addition to Christensen, or claims 1 and 2

[00:10:01] Speaker 02:
Those claim one being rejected over Euler, taken with Ahwing, came one and nine, those same rejected and taken with Cox.

[00:10:13] Speaker 02:
It indicates, and of course, claims 119 to 20, it indicates a weakness in the rejection.

[00:10:24] Speaker 01:
Because if Euler- But the examiner made a fact finding to the contrary and the board adopted it.

[00:10:30] Speaker 01:
The examiner made a fact-finding to the contrary, whether or not a reference teaches away is a question of fact.

[00:10:37] Speaker 01:
The examiner made a fact-finding that this reference does not teach away.

[00:10:41] Speaker 01:
He cited, among other things, Figure 1, which shows alcohol production at Items 36, 44, and 48, and also at Paragraph 79, that oiler teachers at Butanol

[00:10:57] Speaker 01:
can be produced in place of ethanol.

[00:10:59] Speaker 01:
So it's not even just alcohol generally, but this reference even says butanol can be produced in particular.

[00:11:07] Speaker 01:
So I understand that you think that there is sort of a discouragement of alcohol production in favor of biodiesel, but the examiner made a contrary fact finding based on several disclosures in this reference.

[00:11:20] Speaker 01:
Given our deferential standard of review, I'm not sure how we can set that aside.

[00:11:25] Speaker 02:
Well, ma'am, Your Honor.

[00:11:28] Speaker 02:
The way this can be set aside is that the examiner was clearing an error.

[00:11:36] Speaker 02:
He does not set forth how and why the process in Euler is superior to the process set forth by the appellant.

[00:11:51] Speaker 01:
The appellant clearly sets forth... He is not required that the process in the prior art be superior to the patented product.

[00:11:58] Speaker 01:
in order to defeat the validity of the patent claims, it's only necessary that it be obvious.

[00:12:06] Speaker 01:
Superiority is not a relevant criteria.

[00:12:09] Speaker 01:
It can be inferior and still defeat patent claims.

[00:12:13] Speaker 02:
Yes, Your Honor, but if you've got a process that combines several different features as the appellant does and gets a better product more efficiently from the same

[00:12:28] Speaker 02:
amount of land, the same amount of goods, and gets the results that the applicant does with the more efficient product, then the finding of fact fails because of the superiority and major synergistic effect of the applicant's combination of the processes to achieve the desired results of producing an effective biofuel.

[00:12:57] Speaker 02:
So I'll rest at this point, and there may remain time for rebuttal.

[00:13:00] Speaker 01:
Okay, Mr. Perrone.

[00:13:01] Speaker 01:
Ms.

[00:13:02] Speaker 01:
Nelson?

[00:13:07] Speaker 00:
Good morning, Your Honors.

[00:13:08] Speaker 00:
May it please the Court?

[00:13:11] Speaker 00:
Ratkoff claims here, in very general terms, in Claim 1, a combination of four processes, each of which was well known in the prior art.

[00:13:19] Speaker 00:
In fact, both Euler and Bush teach combining three of those processes

[00:13:23] Speaker 01:
sees the... In fact, claim one is directed to any alcohol, right?

[00:13:27] Speaker 01:
It's not even just directed to... Right.

[00:13:28] Speaker 00:
It's directed to any alcohol.

[00:13:30] Speaker 00:
And both of those references teach an algal process, a fermentation process, and an incineration process meeting each of the claim limitations.

[00:13:38] Speaker 00:
Royal then teaches using steam generated from incineration of fermentation residue material

[00:13:47] Speaker 00:
to produce electricity.

[00:13:49] Speaker 01:
Was there any evidence, Ms.

[00:13:51] Speaker 01:
Nelson here, of unexpected results or secondary considerations?

[00:13:55] Speaker 01:
Because I understood Mr. Perrone at the end to suggest that he thought fact findings could be overcome because of a much greater efficiency achieved by the production methods of the patents.

[00:14:05] Speaker 01:
Was there secondary consideration evidence that was entered into here?

[00:14:09] Speaker 00:
There was not any such evidence presented before either the examiner or the board.

[00:14:15] Speaker 00:
None of that is claimed.

[00:14:17] Speaker 00:
In fact, in claim one, butanol is not claimed.

[00:14:19] Speaker 00:
Artichokes aren't claimed.

[00:14:21] Speaker 00:
Efficiency is not claimed in any of the claims.

[00:14:24] Speaker 00:
And there's just simply no evidence to suggest that they are achieving higher efficiencies.

[00:14:28] Speaker 00:
And as you've stated, Judge Moor, Euler has more than sufficient ample evidence to suggest production of bioethanol.

[00:14:39] Speaker 00:
In fact, at the field of the invention at paragraph two and also in paragraph 66,

[00:14:44] Speaker 00:
It explains that the invention can be used either for biodiesel or bioethanol production.

[00:14:50] Speaker 00:
Paragraph 77 to 79, when they discuss fermentation, describe ethanol, or actually alcohol generally in ethanol, and figure one depicts very pointedly production of ethanol.

[00:15:01] Speaker 00:
So there's simply no teaching away, no discouragement or criticism of biodiesel production.

[00:15:08] Speaker 00:
if there are no additional questions.

[00:15:13] Speaker 01:
Okay, thank you, Ms.

[00:15:13] Speaker 01:
Nelson.

[00:15:14] Speaker 01:
Mr. Perrone, you have your rebuttal time.

[00:15:16] Speaker 02:
Thank you, Your Honor.

[00:15:23] Speaker 02:
Again, Euler does not disclose appellant's efficiency in producing the butanol or the alcohol.

[00:15:36] Speaker 02:
It's in the specification that you can get three times as much butanol out of the same area of artichokes with this process that you can with corn.

[00:15:47] Speaker 02:
It's in the specification that you can get more efficient production of butanol.

[00:15:54] Speaker 02:
There is no teaching in the combination of references that says that appellant's efficiencies can be met.

[00:16:07] Speaker 02:
If you add one plus one and get two or three, it's completely and totally unpatentable.

[00:16:15] Speaker 02:
What the Patent Office has failed to recognize in this case, Appellant has added one plus one and gotten about five.

[00:16:26] Speaker 02:
The five comes from the efficiencies of producing the butanol more efficiently at a higher quantity

[00:16:37] Speaker 02:
than the prior it shows.

[00:16:40] Speaker 03:
The Patent Office.

[00:16:42] Speaker 03:
Which element of the claim, claim one, specifically drives that outcome of one plus one equal five?

[00:16:55] Speaker 02:
The established parts of the claim in the appellants brief on page eight, I believe.

[00:17:11] Speaker 02:
Yes.

[00:17:12] Speaker 03:
Page eight.

[00:17:13] Speaker 02:
I'm page, excuse me, page nine of the brief.

[00:17:15] Speaker 02:
Excuse me, my mistake.

[00:17:34] Speaker 02:
But this combination of the various processes shown by appellant theory

[00:17:40] Speaker 02:
is not shown in the prior act.

[00:17:43] Speaker 02:
Like I said, claim one is rejected three different times, or five different times, over five different combinations of references.

[00:17:58] Speaker 02:
But the addition of Christensen to claim one, the addition of Cox to claim one, the addition of Anwayne to claim one, the addition of

[00:18:10] Speaker 02:
Christensen and Tsuchida, to claim one, in a rejection, in addition to Euler, Edelman, and Royall, indicates the defective part of the combination of Euler, Edelman, and Royall.

[00:18:24] Speaker 02:
The examiner admits it by using a third, fourth, and fifth references, in some cases, with those references to reject the same claim.

[00:18:40] Speaker 02:
Euler, Edelman, and Royall is a good rejection of claim one.

[00:18:45] Speaker 02:
How can Euler, Edelman, and Royall in Ewing be a good rejection?

[00:18:52] Speaker 02:
Euler, Edelman, and Royall in Christensen be a good rejection?

[00:18:56] Speaker 02:
Euler, Edelman, and Royall in Christensen in Cheetah be a good rejection of claim one?

[00:19:01] Speaker 02:
And Bush has the same problem.

[00:19:03] Speaker 02:
Bush produces ethanol, no teaching of butanol,

[00:19:10] Speaker 02:
And the Bush rejections have the same problem.

[00:19:16] Speaker 02:
They're used to reject claim one in more than one case, and they cite several other references.

[00:19:23] Speaker 01:
Mr. Perot, we're out of time.

[00:19:25] Speaker 01:
Do you have a final thought?

[00:19:27] Speaker 02:
Basically, the synergistic effect of African or Pelham's combination of processes creates

[00:19:36] Speaker 02:
A 1 plus 1 equals 5, which merits patentability in this particular case.

[00:19:41] Speaker 02:
The butanol produced is effective.

[00:19:43] Speaker 02:
The butanol produced is good.

[00:19:46] Speaker 02:
The alcohols produced in this process require very little treatment beyond what has been done.

[00:19:56] Speaker 02:
So having the combination of processes patched together by the patent office

[00:20:07] Speaker 02:
by this reference and that reference and the other reference, does not show applicants particular combination to produce the efficiencies.

[00:20:15] Speaker 02:
You can't put artichokes in a claim.

[00:20:18] Speaker 02:
You can't put the, thereby producing three times as much butanol as the prior art shows.

[00:20:28] Speaker 02:
It's in the spec.

[00:20:29] Speaker 02:
The steps are shown.

[00:20:31] Speaker 02:
It has never been rebutted by the patent office.

[00:20:35] Speaker 01:
Okay, Mr. Frone, I thank both counsel for their argument.

[00:20:37] Speaker 01:
The case is submitted.