[00:00:56] Speaker 01:
You really want to be sure, take your time.

[00:01:41] Speaker 03:
Please proceed whenever you're ready.

[00:01:47] Speaker 01:
Good morning, Your Honor.

[00:01:49] Speaker 01:
This is James Prosser for Appellant.

[00:01:55] Speaker 01:
We believe, for at least two reasons that I'll discuss today, that the rejection of claims 1 through 28 is not proper, and that we meet the substantial evidence standards in trying to establish that.

[00:02:11] Speaker 01:
The first reason which the board has basically just ignored, the present invention, this invention, the use of fatty acid triglycerides does more than just generate fatty acids.

[00:02:37] Speaker 01:
None of the references

[00:02:39] Speaker 01:
incidentally, it's a biodiesel fuel.

[00:02:42] Speaker 01:
None of the references consider that this other stuff could be present.

[00:02:46] Speaker 01:
The rejection is just streamlined, you know, using the two references in a linear fashion that you're making what we call in the art a polyethoxylated fatty acid and that's it.

[00:02:59] Speaker 01:
I tried to point out that there's more than that going on.

[00:03:02] Speaker 01:
So the board has just ignored it basically.

[00:03:06] Speaker 01:
The second point is,

[00:03:07] Speaker 01:
This is a multi-step chemical process.

[00:03:11] Speaker 01:
Chemical processes usually are complicated.

[00:03:14] Speaker 01:
Two main references, Erner and Maurer, basically are two-step processes.

[00:03:24] Speaker 01:
So the board tries to, you know, refabricate those two references in coming up with our five-step process, process that we sequentially make four

[00:03:37] Speaker 01:
intermediate reaction compositions, and then finally extract the biodiesel fuel.

[00:03:48] Speaker 01:
So I think the way I'd like to go through the analysis, if I could direct your attention to the patent office's claim chart that they provided in their brief, which is on page 15, we'll sort of go through the steps involved.

[00:04:07] Speaker 02:
Well, I know time is short, but it seemed to me that what the board was particularly concerned about was the comparative data, and that there was no explicit data showing that there was something significant about adding the epoxide in two steps rather than continuously, as in the prior art.

[00:04:33] Speaker 01:
That partly

[00:04:37] Speaker 01:
Those statements have to do with unexpected results.

[00:04:41] Speaker 01:
Yes.

[00:04:43] Speaker 01:
That's not a point that we're going to emphasize today.

[00:04:46] Speaker 01:
But to answer your question, there is comparative data.

[00:04:49] Speaker 01:
And I come from Detroit, so the auto business is what we do there.

[00:04:54] Speaker 01:
Those were done by a firm that does these kind of tests.

[00:04:58] Speaker 01:
They compared it to the fuel, which is the state of the art, as they viewed it at the time the tests were done.

[00:05:06] Speaker 01:
we found an advantage, something like one to four miles per gallon.

[00:05:11] Speaker 01:
Probably the most of the world, though, doesn't sound like a very big number.

[00:05:15] Speaker 01:
But if you're in the auto industry, you know that every incremental improvement is a big deal.

[00:05:20] Speaker 01:
It usually takes millions of dollars worth of research.

[00:05:23] Speaker 01:
But that's really not the argument that I want to emphasize today.

[00:05:29] Speaker 01:
What I want to emphasize today is there's a certain camp that we are making a different product.

[00:05:33] Speaker 01:
It is not the simple products.

[00:05:35] Speaker 01:
of Erner and Maurer, which, again, are just poly-oxylated fatty acids.

[00:05:42] Speaker 01:
Ours is much more complicated.

[00:05:44] Speaker 01:
And it's much more complicated because we're starting out with fatty acid glyceride.

[00:05:56] Speaker 01:
So in their analysis, I probably guided the examiner to his analysis somewhat inadvertently.

[00:06:06] Speaker 01:
But if we look at the claim chart, we're reacting a fatty acid glyceride containing composition in a reaction promoter.

[00:06:15] Speaker 01:
So the office uses Erner and then take judicial notice of the fact that the hydrolysis of a triglyceride produces a free fatty acid.

[00:06:29] Speaker 01:
I don't contest that.

[00:06:32] Speaker 01:
I mean, it'd be sort of silly to, because

[00:06:34] Speaker 01:
The only way you get free fatty acids is by hydrolyzing an oil, triglyceride.

[00:06:40] Speaker 01:
There's no doubt.

[00:06:41] Speaker 01:
So I don't contest it.

[00:06:43] Speaker 01:
What I do contest is when you're trying to make the choice of, let's use this as a starting material, triglyceride, which is not a fatty acid.

[00:06:53] Speaker 01:
It has a part in there that can become a fatty acid.

[00:06:56] Speaker 01:
But it's not a fatty acid.

[00:06:58] Speaker 01:
We'd want to look at the primary references, Erner and Maurer, and say, yeah, let's

[00:07:03] Speaker 01:
Let's use that.

[00:07:05] Speaker 01:
Now, Patent Office says, well, yeah, you'd make that determination because it's well-known, and it is, that you can hydrolyze triglycerides to make a fatty acid.

[00:07:20] Speaker 01:
But they neglect the other part.

[00:07:22] Speaker 01:
They read out, after that assertion, they read out the glyceride part.

[00:07:27] Speaker 01:
It has to be there.

[00:07:28] Speaker 01:
I mean, it didn't magically, in the hydrolysis, disappear.

[00:07:32] Speaker 01:
None of the references discuss that.

[00:07:34] Speaker 01:
So then the question becomes.

[00:07:36] Speaker 03:
I'm sorry, where is it that you're saying they're reading out the glyceride?

[00:07:40] Speaker 01:
Well, I'm arguing that.

[00:07:43] Speaker 01:
Because they never consider, while we try to point out to them, that there's other stuff going on here, other moieties.

[00:07:52] Speaker 03:
But how are they reading it out?

[00:07:53] Speaker 03:
I'm sorry, I'm just not following.

[00:07:55] Speaker 03:
Could you explain how they're reading out the glyceride from the plant?

[00:07:58] Speaker 01:
Well, because when we try to point out, I mean, they're not literally saying we're not

[00:08:03] Speaker 03:
I think their point is that one way to, instead of just starting with free fatty acids, one of Ordinary Scale in the Art would have been motivated to modify the reference to instead start with vegetable oil and include the process of separating out the free fatty acids.

[00:08:19] Speaker 03:
So how were they then, how does that translate into ignoring the limitations?

[00:08:24] Speaker 01:
I don't really think that was quite the rejection.

[00:08:27] Speaker 01:
I mean, I think it's a little different.

[00:08:30] Speaker 01:
When the examiner made the rejection,

[00:08:32] Speaker 01:
It was Erner in view of Maurer.

[00:08:36] Speaker 01:
And then this was during the appeal and prosecution.

[00:08:41] Speaker 01:
Then he makes this argument about, well, hydrolysis involves free radicals.

[00:08:47] Speaker 01:
He made it up.

[00:08:48] Speaker 01:
And I probably should have kept quiet, but I couldn't keep quiet about it because it was just like fantasy.

[00:08:56] Speaker 01:
So I pointed out to him that it's not a radical reaction.

[00:09:00] Speaker 01:
It can't be.

[00:09:02] Speaker 01:
And I said, you know, hydrolysis is usually acid or base catalyzed.

[00:09:06] Speaker 01:
So then he went back and found a reference, which I still think is constrained, that in supercritical water, you can have hydrogen and OH-based ions generated.

[00:09:21] Speaker 01:
So I give him credit for doing that.

[00:09:22] Speaker 01:
I didn't think it was central to getting this case allowed.

[00:09:28] Speaker 01:
Plus, we didn't want to amend the claims, which

[00:09:30] Speaker 01:
maybe would have been a logical way to proceed.

[00:09:33] Speaker 01:
We thought these claims were allowed for these two reasons.

[00:09:37] Speaker 01:
So we went on.

[00:09:39] Speaker 01:
So they use it as, all they use these references for is to take judicial, or sorry, official notice that water hydrolyzes triglycerides.

[00:09:53] Speaker 01:
We agree.

[00:09:54] Speaker 01:
But the point is, would you choose

[00:09:59] Speaker 01:
a triglyceride as your starting material for a biodiesel fuel, when the reference, I mean, it's one skill in the art would say, well, yeah, okay, it can potentially generate fatty acids, but do we want that other junk around?

[00:10:16] Speaker 01:
I mean, it's really a contaminant from the perspective of Erner and Maurer.

[00:10:21] Speaker 01:
So, I mean, that's the issue.

[00:10:22] Speaker 03:
Is there an argument that Erner and Maurer teach away from doing it?

[00:10:26] Speaker 01:
Well, all they talk about in central to those patents is that these are pure reactions.

[00:10:34] Speaker 01:
We can look at, I think, page six column.

[00:10:37] Speaker 01:
Well, if you want, I could cite to it.

[00:10:40] Speaker 01:
But I could tell you what they say.

[00:10:42] Speaker 01:
They really just talk about, and the primary reference earned in particular, doing this ethoxylation with a carboxylic acid, which can be derived from

[00:10:54] Speaker 01:
a fatty triglyceride.

[00:10:57] Speaker 01:
Everybody knows that, so it's not controversial.

[00:10:59] Speaker 01:
That's the only way to get them.

[00:11:02] Speaker 01:
But as I say, use a triglyceride.

[00:11:06] Speaker 01:
It is actually a very pure reaction.

[00:11:07] Speaker 01:
Don't use a solvent.

[00:11:09] Speaker 01:
It's sort of instructive, I think, that they don't use a solvent in that reaction.

[00:11:19] Speaker 01:
So the question is,

[00:11:21] Speaker 01:
Now, suddenly, if you use a triglyceride, you're injecting into that reaction, which they need this pure form to have an efficient bio diesel fuel, other compounds, the glyceride bar, so to speak.

[00:11:36] Speaker 01:
So this is why I don't think it's obvious to do this.

[00:11:40] Speaker 01:
Why is it not obvious to do this?

[00:11:41] Speaker 01:
Because you get a very different product.

[00:11:45] Speaker 01:
You basically get a mixture of a bunch of stuff, which is what our invention is and what

[00:11:50] Speaker 01:
These two references do not teach.

[00:11:52] Speaker 03:
Those extra things that we're talking about in the claimed invention, they don't have any particular properties that help in how the biodiesel fuel works, right?

[00:12:07] Speaker 01:
That's not true.

[00:12:08] Speaker 03:
No?

[00:12:08] Speaker 03:
OK.

[00:12:08] Speaker 03:
What are they?

[00:12:09] Speaker 01:
I mean, we didn't particularly make this argument.

[00:12:12] Speaker 01:
But in reality, they do.

[00:12:14] Speaker 03:
First of all, You did make this argument.

[00:12:17] Speaker 03:
I did not.

[00:12:17] Speaker 01:
But I can answer your question.

[00:12:20] Speaker 03:
Is it pointed out in the patent?

[00:12:23] Speaker 01:
I think it's inherent to the fact that these are organic molecules.

[00:12:27] Speaker 01:
So in first order, any organic molecules of fuel to some extent can burn it.

[00:12:33] Speaker 01:
And that's what fuels are.

[00:12:35] Speaker 01:
Carbon, hydrogen bonds, you burn it.

[00:12:38] Speaker 01:
It produces energy.

[00:12:39] Speaker 01:
So they have to affect the properties of it as a fuel.

[00:12:45] Speaker 01:
And also, the application does go into some

[00:12:48] Speaker 01:
discussion, and some of the claims are directed to properties such as viscosity, poor point, and stuff that I know less about.

[00:12:58] Speaker 01:
But these will be affected by what other stuff is in there.

[00:13:03] Speaker 01:
And in this analysis, you know, another key part of the analysis, which is in the claim chart provided by the office, step C, we're now adding in a

[00:13:17] Speaker 01:
to the second intermediate reaction mixture, a solvent and additional reaction promoter.

[00:13:25] Speaker 01:
Now, we point out that in the next step we're going to add an epoxide.

[00:13:30] Speaker 01:
We point out that these are reactive conditions, especially if a reaction promoter and an epoxide come in.

[00:13:38] Speaker 01:
These are going to react.

[00:13:39] Speaker 01:
It's going to form something.

[00:13:42] Speaker 01:
And this is particularly true because

[00:13:50] Speaker 01:
You know, the office, in trying to make this analysis, says the co-solvent such as water and a catalyst.

[00:14:00] Speaker 01:
So setting up reactive conditions, so when that, when that epoxide goes in, it's going to react with the solvent that we added in the previous step.

[00:14:16] Speaker 01:
This also, you're getting more junk, so to speak.

[00:14:18] Speaker 01:
You don't have to be a chemist to understand this.

[00:14:20] Speaker 01:
This is going to be reflected in the final product.

[00:14:24] Speaker 01:
We're different.

[00:14:26] Speaker 01:
I mean, this seems to be an undesirable outcome for Erner and Maurer.

[00:14:30] Speaker 01:
For us, it's what we're doing.

[00:14:33] Speaker 00:
You're into eerie battles, so why don't we hear from the government?

[00:14:36] Speaker 00:
That's OK.

[00:14:37] Speaker 00:
And we'll see what we can do.

[00:14:39] Speaker ?:
OK.

[00:14:55] Speaker 02:
Good morning.

[00:14:56] Speaker 00:
Good morning.

[00:14:56] Speaker 00:
Your honors may place the court.

[00:14:58] Speaker 00:
Here, substantial evidence supports the board's finding that representative claim one is obvious in view of Erner and Maurer.

[00:15:05] Speaker 02:
Obviousness is a matter of law, so it's not substantial evidence, it's correctness.

[00:15:12] Speaker 00:
The ultimate finding of obviousness is a matter of law, but what a prior art reference teaches is a matter of fact, and those are reviewed for substantial evidence.

[00:15:21] Speaker 00:
And here, one of his primary, one of my friends.

[00:15:23] Speaker 02:
But there's no dispute as to what's in the prior art.

[00:15:27] Speaker 02:
The dispute is whether it was obvious to combine these two references.

[00:15:32] Speaker 00:
That's correct.

[00:15:34] Speaker 00:
Riccio does not dispute the individual teachings of the prior art references.

[00:15:39] Speaker 00:
Riccio disputes, one of his primary disputes is whether or not there was motivation to combine the Erna reference and the Mara reference.

[00:15:45] Speaker 00:
And the board found that the Erna reference is directed to

[00:15:50] Speaker 00:
reacting dicarboxylic acids with epoxides, including continuous addition of epoxides until a biofuel is formed.

[00:15:58] Speaker 00:
That's the Erna reference.

[00:16:00] Speaker 00:
And the Mara reference is directed to reacting monocarboxylic acids with epoxides, but also in the presence of solvents.

[00:16:07] Speaker 00:
And so because both the Erna reference and the Mara reference are directed to combining similar reactants, as well as producing similar products, in both cases,

[00:16:19] Speaker 00:
hydroalkyl esters, the board found that it would have been obvious for one of skill in the art to look at the teachings of Marr to improve the reaction that Cisco was in.

[00:16:30] Speaker 02:
But neither of those two references did make the combination or make the change.

[00:16:38] Speaker 02:
So how are we to have some sort of presumption with hindsight that it was obvious to put them together?

[00:16:48] Speaker 00:
Well, because the ERA reference is directed to using very similar reactants as the MARA reference, and they both produce the same types of products here.

[00:16:58] Speaker 02:
Maybe all the more reason to be suspicious if neither of those two inventors in two patents, in two references, did make this combination, this additional change that we're told in the record produced a superior product.

[00:17:17] Speaker 02:
I must say that my perception of what the board came up with was their concern that the superiority had not been adequately demonstrated.

[00:17:28] Speaker 00:
Well, here, the superiority had not been adequately demonstrated because the evidence that Rosio submitted before the board was simply a chart showing the different properties of these various biodiesel fuels.

[00:17:40] Speaker 00:
But claim one is directed to a method of producing this biofuel.

[00:17:46] Speaker 00:
RISCIO here did not disclose either method that was used for biodiesel 100 or biodiesel 99 in submitting that biodiesel 100 had superior characteristics.

[00:17:57] Speaker 00:
And therefore, the board found that it could not rely on that data because there is no indication on whether or not biodiesel 100 is commensurate in scope with claim one or whether biodiesel 100 was compared to the closest prior to record, which in that case, the board found that it was EARNR because EARNR is also directed

[00:18:15] Speaker 00:
to starting with a fatty acid glyceride composition and then creating a biofuel to the addition of epoxides.

[00:18:23] Speaker 02:
Was there any reason to disbelieve the data or just that there weren't enough details?

[00:18:29] Speaker 00:
There weren't enough details submitted here.

[00:18:31] Speaker 00:
Here, when Ricio submitted the data, he did not provide any sort of 132 declaration indicating what method was used to formulate those biodiesel fuels.

[00:18:41] Speaker 00:
And because, again, the representative claim one is directed to a method here.

[00:18:46] Speaker 00:
And what's important is whether or not that method was followed.

[00:18:49] Speaker 00:
And because the board could not determine whether or not that method was followed here, it was impossible to look at the data and see whether or not it was actually showing unexpected results as compared to not only commensurate in scope with claim one, but also as compared to the closest prior to record, which here the board found to be earner.

[00:19:10] Speaker 02:
Yes, this is troubling, because the board left, at least for me, the clear impression that but for their criticism of the data, the details, that this was an unexpected result, a significant improvement, something where we know it's different from what the separate references do.

[00:19:37] Speaker 02:
And therefore, with hindsight,

[00:19:39] Speaker 02:
Well, we'll put them together.

[00:19:41] Speaker 02:
The fact that you come up with something better, too bad you didn't convince us.

[00:19:46] Speaker 02:
Not that you didn't convince us there was better.

[00:19:49] Speaker 02:
You just didn't fulfill the technicalities of putting in all of your data.

[00:19:55] Speaker 00:
I don't think the board ever even disputed whether or not the biodiesel 100 had better characteristics than the biodiesel 99.

[00:20:03] Speaker 02:
I think there was a representation.

[00:20:04] Speaker 02:
There was no reason to disbelieve it.

[00:20:06] Speaker 00:
But there was also no representation that biodiesel 100 was actually formulated using the method that's recited in claim one.

[00:20:15] Speaker 00:
And also there is no determination that biodiesel 99 was used with any method that's either disclosed in EARNR or disclosed otherwise.

[00:20:25] Speaker 00:
Mr. Riccio never argued that EARNR was not commercially available or should not be the closest priority of record

[00:20:36] Speaker 00:
Those arguments were never raised before the board.

[00:20:38] Speaker 00:
The other issue that Mr. Riccio relies on today is that the board never started with a fatty acid glyceride containing composition.

[00:20:48] Speaker 00:
And that simply was not the issue that was before the board.

[00:20:53] Speaker 00:
Before the board, Mr. Riccio argued that the claim one is not directed to combining dicarboxylic acids with epoxides.

[00:21:01] Speaker 00:
That was the focus of the argument for the board.

[00:21:04] Speaker 00:
So that argument was never raised before the board.

[00:21:06] Speaker 00:
But nevertheless, Erner discloses, formulating a fuel through the epoxide addition of a free fatty acid that's derived from oil.

[00:21:20] Speaker 00:
And Riscio concedes that oil is a fatty acid glyceride-containing composition.

[00:21:24] Speaker 00:
Are there any further questions?

[00:21:30] Speaker 00:
Thank you, Your Honors.

[00:21:31] Speaker 00:
I reveal my time.

[00:21:36] Speaker 01:
I need a minute, finally.

[00:21:38] Speaker 02:
Sure.

[00:22:23] Speaker 01:
The board just now alleges that the issue that the reaction is more complicated, that there's other stuff going on, was not before the board during the appeal process at the PTAB.

[00:22:37] Speaker 01:
So I would direct the Court's attention to page four of our brief.

[00:22:46] Speaker 01:
It's appendix page number 171.

[00:22:57] Speaker 01:
And so we see the highlighted words before and after.

[00:23:03] Speaker 01:
Next sentence.

[00:23:07] Speaker 01:
At no point does the method of the present invention call for conditions that lead only to the formation of free carboxylic acids.

[00:23:19] Speaker 01:
So that's a statement that we're trying to convince the office that this reaction is more complicated than just

[00:23:25] Speaker 01:
something that produces only a fatty acid.

[00:23:30] Speaker 01:
And one other thing that, maybe this is an important point, but the board's representative sort of mixed up Mauer and Erner, sort of every time I heard it bothered me.

[00:23:41] Speaker 01:
Maybe it's not important, but Erner is a monocobic silica acid, which is more like part of what's going on in our invention.

[00:23:52] Speaker 01:
It's significant that it be a monocobic silica acid

[00:23:56] Speaker 01:
because the long fatty chain has most of the energy content.

[00:24:01] Speaker 01:
Mauer is the dicobic silica acid, so she mixed them up.

[00:24:06] Speaker 01:
And that reference isn't directed at all to a fuel.

[00:24:10] Speaker 01:
It's really for making monomers for a polymeric process.

[00:24:14] Speaker 01:
I'm not arguing that, well, I'm not emphasizing that they're unrelated art, because one thing is one, the other.

[00:24:23] Speaker 01:
They teach what they teach.

[00:24:26] Speaker 01:
And, you know, any chemist say, OK, this is what it says.

[00:24:29] Speaker 01:
So we have to deal with it.

[00:24:31] Speaker 01:
But the thing that the board also brought up, well, before I get there, I'm a little uncomfortable with the emphasis on this unexpected results.

[00:24:42] Speaker 01:
That was only one of our arguments, and probably, to me, the least compelling.

[00:24:48] Speaker 01:
And I pointed out our position.

[00:24:49] Speaker 01:
I mean, we make the representation that the data is our product.

[00:24:56] Speaker 01:
So I mean, I'm essentially certifying that by submitting the briefs and everything else I did.

[00:25:01] Speaker 01:
I don't think it helps anymore to have somebody else say, this is the method and it's our invention.

[00:25:07] Speaker 01:
So that's our assertion.

[00:25:09] Speaker 01:
But again, I'm a little uncomfortable.

[00:25:10] Speaker 01:
I don't view this as the necessarily most important aspect of the invention that the board should consider.

[00:25:19] Speaker 01:
However, another point, the board says, well, you combine these references

[00:25:26] Speaker 01:
Because they have malware improving earner.

[00:25:30] Speaker 01:
How does it improve earner?

[00:25:33] Speaker 01:
What's the improvement?

[00:25:34] Speaker 01:
There's nothing in the briefs that discuss that.

[00:25:39] Speaker 01:
So I think that's all I have to say.

[00:25:44] Speaker 01:
Thank you.

[00:25:44] Speaker 01:
Thank you.

[00:25:45] Speaker 01:
We thank both sides and the case is submitted.