[00:00:26] Speaker 03:
We will hear argument next in Inray Rockenberger, number 17-1035.

[00:00:32] Speaker 03:
Mr. Fortney?

[00:00:37] Speaker 02:
Yes, thank you, Your Honor.

[00:00:39] Speaker 02:
Thank you for hearing my case.

[00:00:40] Speaker 02:
May it please the court?

[00:00:43] Speaker 02:
At risk of oversimplifying my client's invention, this is the true story of President Venter's and the three approaches to forming a silicon film

[00:00:54] Speaker 02:
from a liquid phase composition, including a liquid phase silane compound.

[00:01:00] Speaker 02:
We use silane ink as a shorthand notation for the composition.

[00:01:04] Speaker 02:
The first approach that the inventors tried was first depositing the silane ink, then followed by irradiation, which is exemplified by the Yodosaka reference, which has been cited against all of the claims and was a reference affirmed by the board.

[00:01:24] Speaker 02:
What the inventors found when they tried to spin coat the silane ink is that the ink spun right off the substrate.

[00:01:32] Speaker 02:
Later when they tried to print the ink, they found that the ink beaded up or flowed in unwanted areas in an unpredictable way.

[00:01:41] Speaker 02:
When they tried using higher molecular weight polysilanes, they still found that if they tried to deposit without irradiation,

[00:01:50] Speaker 02:
They couldn't form a uniform film that was not continuous.

[00:01:54] Speaker 02:
It didn't coat much of the substrate.

[00:01:57] Speaker 02:
So they rejected that approach and tried a second approach in which they pre-irradiated the silane ink, then deposited it.

[00:02:04] Speaker 02:
This is exemplified by the Aoki reference, which the PTAB considers to be closest to the claims, even though it wasn't cited against the claims.

[00:02:13] Speaker 02:
They discovered that pre-irradiation made the ink unstable.

[00:02:17] Speaker 02:
It formed a solid material.

[00:02:19] Speaker 02:
And even after filtration, the solid material reappeared anywhere from a few minutes to a few days later.

[00:02:26] Speaker 02:
Worse than that, the instability of the ink was unpredictable.

[00:02:30] Speaker 02:
Different batches made in the same way would have different properties over time, and they had no way to know or predict what those properties were going to be.

[00:02:41] Speaker 02:
So they realized they can't use that in commercial production.

[00:02:45] Speaker 02:
And they rejected that approach and thought long and hard about how to solve the problems.

[00:02:50] Speaker 02:
And they invented what we call contemporaneous irradiation and deposition, where the silane ink is irradiated during at least some part of the deposition process.

[00:03:02] Speaker 03:
The narrative you just provided about trying out, I'm going to summarize here, but perhaps inaccurately, trying out a process like Aoki, finding

[00:03:16] Speaker 03:
It was unsatisfactory and therefore moving to something else.

[00:03:22] Speaker 03:
I took it that the core of the board's rejection of your unexpected results contention was that you didn't make an unexpected results comparison to Aoki.

[00:03:38] Speaker 03:
So how does the narrative you just gave

[00:03:43] Speaker 03:
fit or not fit with the board's finding of the absence of evidence of a comparison to Aoki, which is what your narrative seems to suggest.

[00:03:54] Speaker 02:
There are several explanations, but I think the most relevant one to answer your question is that a side-by-side comparison with Aoki is impossible.

[00:04:04] Speaker 02:
Pre-irradiation, as I mentioned, changes the composition over time.

[00:04:09] Speaker 02:
And there's no way to really compare

[00:04:13] Speaker 02:
apples to apples between the present invention and Aoki.

[00:04:21] Speaker 02:
There's no way to say the compositions are going to be the same if they're irradiated at different times.

[00:04:26] Speaker 02:
Even if they are irradiated at different times, the compositions may have variances later in time.

[00:04:33] Speaker 02:
So I think that's one reason why we really couldn't do a comparison with Aoki.

[00:04:40] Speaker 02:
We also

[00:04:42] Speaker 02:
disclaimed compositions that have solid-phase materials in them in the application.

[00:04:50] Speaker 02:
Anything that has solid-phase materials in it causes non-uniformities in the film that's produced later.

[00:04:58] Speaker 02:
So that's unacceptable for the applications and electronics that we were considering, that the inventors were considering.

[00:05:11] Speaker 02:
The other thing is, Aoki's just not the closest prior art reference, and I don't think we need to compare against something that's not the closest prior art reference.

[00:05:21] Speaker 02:
We saw that Yudasaka differed from our claims only in the timing of irradiation, whereas Aoki differs from our claims in both the timing and in the composition being deposited.

[00:05:37] Speaker 02:
It's critical.

[00:05:38] Speaker 03:
When you focus on the composition being deposited, are you focusing on a particular compound within the larger class of silanes?

[00:05:48] Speaker 02:
No, Your Honor.

[00:05:49] Speaker 02:
We're focusing on the fact that it has to be a liquid phase composition.

[00:05:53] Speaker 02:
There can't be any solid phase materials present.

[00:05:57] Speaker 02:
That's essential for forming a uniform continuous film.

[00:06:01] Speaker 04:
The closest prior art question, is that a question of fact or a question of law for review purposes?

[00:06:09] Speaker 02:
I was hoping you would know that answer better than me.

[00:06:13] Speaker 02:
I'm viewing it as a question of fact, just to be safe.

[00:06:18] Speaker 02:
I'd be very happy to consider it a question of law, just looking at the first two factors of the gram, the first two gram factors.

[00:06:29] Speaker 00:
It does seem like it would be a question of fact.

[00:06:31] Speaker 02:
OK.

[00:06:32] Speaker 00:
It's analogous to the Graham factors.

[00:06:35] Speaker 02:
Right.

[00:06:35] Speaker 00:
But what about why does the closest prior have to be a single reference?

[00:06:43] Speaker 00:
Why?

[00:06:43] Speaker 00:
I mean, I'm just, why couldn't the closest prior be a couple references?

[00:06:48] Speaker 02:
Sure.

[00:06:49] Speaker 02:
And I think that's the case when the references are, say, equidistant from the claims.

[00:06:55] Speaker 02:
If the differences or the disclosure is equally different.

[00:06:59] Speaker 02:
Our position is that Aoki is more different because of the likelihood of solid phase materials forming in their composition as it's being deposited.

[00:07:13] Speaker 02:
To be honest, we truly don't know whether there are solid phase materials present, but we do know it's possible, and in some cases, very likely.

[00:07:22] Speaker 02:
What we do know about Yudasaka is that it is the same.

[00:07:26] Speaker 02:
There are no solid phase materials present when they deposit.

[00:07:32] Speaker 02:
So for those reasons, we felt that Yudasaka is definitely closer than Aoki.

[00:07:39] Speaker 02:
Could someone take a position that they're equidistant?

[00:07:42] Speaker 02:
Sure.

[00:07:43] Speaker 02:
I'm not sure I'd want to argue that one too strenuously, especially since I only have 10 minutes.

[00:07:57] Speaker 02:
But in any case, I think we have

[00:07:59] Speaker 02:
you know, unexpected results against both references.

[00:08:04] Speaker 02:
As we said, you know, the Aoki, you know, because of the risk of solid phase materials and because that pre-irradiation changes the composition over time in unpredictable ways, that approach just can't be used for any kind of reliable process that you would need in commercial production.

[00:08:25] Speaker 02:
Prior to the invention, there really was no market for this material and no market for these methods.

[00:08:32] Speaker 02:
This invention enables the use of liquid phase.

[00:08:35] Speaker 04:
But coming back to the presiding judge's question about the board's finding that you hadn't made any showing with regard to AOK.

[00:08:46] Speaker 04:
What you told us in the first part of your oral argument is interesting, but it's not of record, right?

[00:08:53] Speaker 02:
No, it is of record.

[00:08:54] Speaker 02:
It's in the declarations that we submitted, at least in the Rockenberger declaration.

[00:09:01] Speaker 04:
Of why it is that Aoki doesn't solve the problem?

[00:09:04] Speaker 02:
Yes, Your Honor.

[00:09:05] Speaker 04:
Can you identify that?

[00:09:06] Speaker 03:
Do you have that?

[00:09:09] Speaker 02:
I don't have it handy, but I'll... In the Rockenberger declaration?

[00:09:13] Speaker 02:
Yes, there is a section of the Rockenberger declaration that specifically addressed Aoki, its deficiencies, and

[00:09:21] Speaker 02:
our improvements relative to the approach of Aoki.

[00:09:26] Speaker 02:
If I may just touch quickly on the findings of fact for which we feel there was either very little or no evidence to support the findings of the board.

[00:09:46] Speaker 02:
The board found that we didn't demonstrate that spin coating without contemporaneous irradiation doesn't work.

[00:09:54] Speaker 02:
In other words, the approach of Yudasaka doesn't work, but we had a lot of direct side-by-side comparisons with at least the composition closest to what we were claiming that embodied Yudasaka that didn't work.

[00:10:14] Speaker 02:
an affirmative statement by two different declarants, saying that every approach that they took to depositing without contemporaneous irradiation didn't work.

[00:10:26] Speaker 02:
That was first made in the Zurcher Declaration, I think, in 2007, and it was affirmed by Dr. Rockenberger later in his declaration.

[00:10:38] Speaker 02:
The board found that there is no evidence that one of ordinary skill in the art would not have been able to make

[00:10:44] Speaker 02:
a film following the procedure disclosed by Yudasaka.

[00:10:48] Speaker 02:
And we didn't challenge that.

[00:10:50] Speaker 02:
That's a non-issue.

[00:10:52] Speaker 02:
In fact, there's an affirmative statement in the Rockenberger Declaration that says that one could have formed a film following Yudasaka.

[00:11:01] Speaker 02:
But we had some variances in what we were doing in order to make our process work.

[00:11:07] Speaker 02:
And we compared our process with the closest process

[00:11:12] Speaker 02:
representative of Yudasaka that's consistent with what we were doing to minimize the number of variables.

[00:11:18] Speaker 02:
We explained the differences and why one following Yudasaka would have been able to form a film and why one following our process but modified to conform with the process of Yudasaka would not have been able to form a film.

[00:11:34] Speaker 02:
Another finding of fact for which there is no evidence was that we didn't submit evidence of unexpected results for silanes other than

[00:11:42] Speaker 02:
cyclopentasilane and polycyclopentasilane.

[00:11:47] Speaker 02:
There's evidence submitted, I think, in the declaration of Rockenberger for a silane called polyheptasilane.

[00:11:55] Speaker 02:
There's also an affirmative statement in the Rockenberger declaration that the results would be expected to be the same for all liquid phase compositions with a liquid phase silane.

[00:12:07] Speaker 02:
It was unambiguous and unqualified.

[00:12:10] Speaker 02:
Another finding of fact for which there was no evidence was the finding that we submitted no evidence of unexpected results for a composition having any solvent or no solvent.

[00:12:22] Speaker 02:
Admittedly, most of the results used a particular cycloalkane solvent, but we did have evidence that other solvents either did work or would work, and we submitted a patent that was filed later.

[00:12:39] Speaker 02:
that disclosed use of a polysilane without solvent to use to form a film.

[00:12:46] Speaker 02:
And I think I heard from Judge Stahl yesterday morning.

[00:12:49] Speaker 02:
An US patent, issued US patent, is presumed valid for whatever it discloses, including for compliance with the enablement requirement.

[00:12:59] Speaker 02:
So we had evidence.

[00:13:00] Speaker 03:
You're about halfway through your rebuttal time.

[00:13:02] Speaker 03:
Maybe you want to save the time and respond to whatever comes up.

[00:13:07] Speaker 02:
OK, well, there are other findings of the fact that if I can quickly touch on the conclusions of law that we thought were fairly clearly erroneous, that PTAP did not consider the evidence of discovery of a problem.

[00:13:29] Speaker 02:
We think that they erroneously looked to Ansel Road, a secondary reference that concerned only organic compounds, for a suggestion that simultaneous irradiation would work in silanes.

[00:13:43] Speaker 02:
But at the time, Ansel Road made their statement.

[00:13:47] Speaker 02:
I think it wasn't known that silanes could even be polymerizable.

[00:13:52] Speaker 02:
This court's repeatedly said that even

[00:13:55] Speaker 02:
distantly homologous compounds within the same class cannot be assumed to have similar behavior.

[00:14:02] Speaker 02:
And these are completely different compounds, so substantively different compounds.

[00:14:07] Speaker 02:
And we think there was definitely an error in deciding that there's no reasonable expectation of success, because prior to the invention, there's so many competing processes going on in simultaneous or contemporaneous irradiation and deposition.

[00:14:23] Speaker 02:
that we had no idea what would work, that it would work.

[00:14:27] Speaker 02:
The rate of polymerization or cross-linking induced by the irradiation would have to be competitive with the rate of deposition.

[00:14:36] Speaker 02:
Aoki and Yudasaka expressly disclosed a minimum of five minutes in the examples that they disclosed.

[00:14:44] Speaker 02:
And deposition takes less than five minutes.

[00:14:46] Speaker 02:
So we really didn't know.

[00:14:48] Speaker 02:
I think one ordinary skill in the art really would not

[00:14:50] Speaker 02:
have a reasonable expectation of success prior to the invention.

[00:14:55] Speaker 02:
And with that, I think I'll see you in 45 seconds of rebuttal time.

[00:14:59] Speaker 04:
If on rebuttal, if you could give us the citation and the record to Rockenberger on AOKI.

[00:15:04] Speaker 02:
Yes, Your Honor.

[00:15:07] Speaker 02:
Thank you.

[00:15:07] Speaker 04:
Thank you.

[00:15:16] Speaker 01:
The board correctly concluded here that Rockenberger's claims were obvious over the combination of Yudasaka and Ansel Road when viewed together with the unexpected results evidence provided by Rockenberger.

[00:15:32] Speaker 01:
In particular, the board correctly found that the unexpected results offered by Rockenberger suffered from several infirmities and the first one that the court was just speaking about

[00:15:42] Speaker 01:
was that it was not compared to the closest prior art, which in this case was Aoki.

[00:15:48] Speaker 01:
The question of what is the closest prior art is a question of fact.

[00:15:52] Speaker 01:
And thus, if the board's determination is supported by substantial evidence, then.

[00:15:59] Speaker 04:
You heard your adversary's explanation when he gave us a little history talk about what his client did by way of testing Aoki, or Aoki-like.

[00:16:09] Speaker 04:
And he says that same story is memorialized in Rockenberger's declaration.

[00:16:16] Speaker 04:
Is that so?

[00:16:17] Speaker 01:
The story that's in Rockenberger's declaration is that they did test the ink.

[00:16:24] Speaker 01:
They did irradiate the ink beforehand, but they did not actually try to spin test it.

[00:16:29] Speaker 01:
They did not try to perform placing it onto the substrate, spinning it, and seeing what the result was.

[00:16:37] Speaker 01:
They just decided that the

[00:16:38] Speaker 01:
liquid was too unpredictable over a period of time, and so they did not actually perform any test beyond the irradiation of it.

[00:16:48] Speaker 01:
So I think in this case, the board was correct to find that they did not provide any tests against the closest priority, which in this case is Aoki.

[00:16:57] Speaker 00:
So in the record at JA 699, paragraph 50 and 51, there is a discussion in that Rockenberger declaration about Aoki, but is it

[00:17:09] Speaker 00:
Is it, I guess it's your position that that was not sufficient.

[00:17:12] Speaker 01:
That's correct.

[00:17:13] Speaker 01:
Because what that information about Aoki is all they were doing was creating the ink.

[00:17:19] Speaker 01:
If you look, it doesn't say they actually tested it.

[00:17:21] Speaker 01:
They just decided that over a period of time, because they viewed it over some extended period of time, the silane solution would continue to polymerize and get greater, higher order silanes in it.

[00:17:37] Speaker 01:
And so it would create some solids in it, and that would create unpredictability with it.

[00:17:44] Speaker 01:
But the way that Aoki teaches the... Sorry, go back to that point.

[00:17:51] Speaker 01:
But there's no evidence in here.

[00:17:52] Speaker 01:
There's nothing that they said they actually used that material to do any kind of testing.

[00:17:57] Speaker 01:
They just presumed that it was different enough and they didn't try to do the actual test.

[00:18:02] Speaker 00:
Do you think if they would have actually tried and failed, that would have been something that would have... They would have had a stronger argument, yes.

[00:18:08] Speaker 01:
And especially because IOKI teaches that, and the board found that IOKI teaches that you use the solution immediately after you irradiate it.

[00:18:17] Speaker 01:
So this, waiting this period of time and seeing how it reacts,

[00:18:20] Speaker 01:
isn't really relevant to what Aoki teaches.

[00:18:23] Speaker 01:
So Aoki teaches the irradiation and then depositing it onto the substrate.

[00:18:31] Speaker 01:
The second thing that Aoki also teaches is filtering.

[00:18:34] Speaker 01:
So if when you created this solution, you did find that there were precipitates in it, the polysilane precipitates, you could just filter that out and you would end up with a liquid solution that you would be able to put onto the substrate and test

[00:18:50] Speaker 01:
That would be the proper test in this case.

[00:18:53] Speaker 01:
Here, the board found that the key here is the timing of the irradiation.

[00:18:59] Speaker 01:
And they looked to the Rockenberger's declaration, they looked to the claims, and they found that the timing that the UV irradiation was happening during at least part of the deposition process was the key to the claimed unexpected results in this case.

[00:19:17] Speaker 01:
And so they found that the important thing was the

[00:19:20] Speaker 01:
placement and the presence of a silent solution that had been irradiated during the deposition process.

[00:19:29] Speaker 01:
And the only prior art that provided that was Aoki here.

[00:19:33] Speaker 01:
And that's why they found that Aoki was the closest prior art.

[00:19:38] Speaker 00:
To the point... Do you have a view on whether the closest prior art has to be a single reference or whether it could include multiple references?

[00:19:54] Speaker 01:
I don't have a view on that.

[00:19:57] Speaker 01:
I think that... I could see a scenario where it could be more than one piece of prior art, but I think in most cases it would be a single piece of prior art that's identified as the... The whole point is that you're supposed to be showing unexpected results.

[00:20:18] Speaker 00:
relative to something so that you have something that's different from the prior art.

[00:20:23] Speaker 00:
I just don't understand why it would have to be always be one reference.

[00:20:27] Speaker 01:
Exactly.

[00:20:27] Speaker 01:
That's the basis of the inquiry of the closest prior artist to really show that it was truly unexpected to one of ordinary skill only art the results that one got.

[00:20:34] Speaker 01:
So in order to do that, you'd look for the closest piece of prior art and that way you can tell whether or not the results that were received by the applicant were truly unexpected to one of ordinary skill only art.

[00:20:48] Speaker 01:
at the time the invention was made.

[00:20:51] Speaker 01:
So I don't think there's a necessary limitation on the number of references that are used for that.

[00:20:58] Speaker 01:
But here, in this case, again, the board found that Ioki was the closest piece of prior.

[00:21:03] Speaker 01:
It's a question of fact, and because of that, and there's substantial evidence to support it, even if a fact finder would come to two different reasonable conclusions, that perhaps Yudasaka was closer,

[00:21:15] Speaker 01:
Ioki was closer, or they were equally distant to each other, then this court should defer to the board's determination that Ioki is the closest prior art, and the board's finding that they did not provide any tests to compare it to Ioki, the process of Ioki.

[00:21:33] Speaker 01:
Therefore, these infirmities prevented it from overcoming the showing of obviousness.

[00:21:47] Speaker 01:
With respect to the question of, that's not the only problem that the court found.

[00:21:56] Speaker 01:
The court also, I mean sorry, the board found, the board also found that there was, the results that Rockenberger got in their experiment with the coverage would not have been unexpected because Aoki and Yudasaka both taught that you could use

[00:22:17] Speaker 01:
UV irradiation either before or after the deposition process and still get coverage on the substrate to create a thin film and get uniform coverage.

[00:22:28] Speaker 01:
And then also Ansel Road teaches that you could use UV irradiation during the process of depositing a photopolymer solution and applying the UV radiation to it, which then would

[00:22:45] Speaker 01:
increase the viscosity by crosslinking, and that would provide coverage as well.

[00:22:53] Speaker 01:
So looking at the total of the prior art, you have prior art that teaches irradiation before depositing step, irradiation during the depositing step, and irradiation after the depositing step, all creating a substance or a substrate

[00:23:09] Speaker 01:
that had a coating on it.

[00:23:10] Speaker 03:
What is the relation in timing between the depositing and the spinning?

[00:23:17] Speaker 01:
In the claims, they claim that the UV radiation step has to be done at least during part of the deposition step and during the depositing step.

[00:23:30] Speaker 01:
And the depositing step includes a spin rotation or spin coating step.

[00:23:38] Speaker 01:
So the depositing step, spin coding, is one type of depositing step.

[00:23:43] Speaker 03:
So there can be depositing while the spinning is taking place?

[00:23:47] Speaker 01:
That's correct.

[00:23:48] Speaker 03:
So how, just as an intuitive matter, does post deposition UV irradiation to increase viscosity have any backwards in time effect on the sloshing, let's call it, caused by the spinning?

[00:24:06] Speaker 01:
It wouldn't, you're correct.

[00:24:08] Speaker 01:
It wouldn't have that.

[00:24:09] Speaker 01:
And if you accept that the timing of the UV irradiation is key, then that would not be the closest piece of prior art.

[00:24:15] Speaker 01:
And that process would not be as helpful or as relevant to a secondary consideration analysis.

[00:24:25] Speaker 01:
I think what Rockenberger is arguing is that the Yudasaka is closest because they start with the same solution.

[00:24:34] Speaker 01:
They start with the same

[00:24:35] Speaker 01:
silane solution that they are depositing onto the substrate.

[00:24:38] Speaker 03:
And what is the difference in solutions between what's in Aoki and what's claimed here?

[00:24:44] Speaker 01:
Their argument is that once you irradiate that solution, you get polysilanes and it possibly precipitates from the polymerization of the hydrosilanes in there.

[00:24:59] Speaker 01:
And so you've got a solution that's got solids in it, which is different than what they've claimed, because they've claimed a liquid solution.

[00:25:08] Speaker 03:
And you said Aoki teaches filtering?

[00:25:11] Speaker 01:
That's correct.

[00:25:11] Speaker 01:
Aoki teaches filtering.

[00:25:12] Speaker 01:
And it also teaches, the board found that it teaches the deposition shortly after the irradiation.

[00:25:19] Speaker 01:
So there wouldn't be a long period of time to allow the, precipitates the form.

[00:25:26] Speaker 01:
And Aoki teaches that the,

[00:25:29] Speaker 01:
that the irradiation step can be as quick as 0.1 seconds.

[00:25:38] Speaker 01:
I think that the board also found, in addition to the problem with Ioki and not being in the closest prior art, they also found that the evidence and the testing was not commensurate with the scope of the claims, for example, that they didn't do any testing with respect to the germanium.

[00:25:56] Speaker 01:
elements.

[00:25:57] Speaker 01:
And the claim clearly encompasses both germanium and silicon.

[00:26:02] Speaker 01:
And the only evidence that they provided was a conclusory statement by Rockenberger that, based on his experience, he would have expected the germanium hydrides to act in the same way.

[00:26:15] Speaker 01:
This court in the Greenfield case has said that that type of conclusory statement is not enough.

[00:26:20] Speaker 01:
You need more evidence of correlation or something to tie

[00:26:25] Speaker 01:
why the germanium hydrides would act in the same way as the silicon hydrides here.

[00:26:37] Speaker 04:
Most of that argument today has been less like misunderstood relating to the secondary considerations unexpected results issue.

[00:26:46] Speaker 04:
That's correct.

[00:26:47] Speaker 04:
There are 18 separately patentable groups here in the case, right?

[00:26:53] Speaker 01:
Yes.

[00:26:54] Speaker 04:
My understanding was that all those claims were up for grabs on the first appeal.

[00:27:00] Speaker 01:
Yes.

[00:27:00] Speaker 04:
From the examiner and the board sustained the examiner on those and then the second round, although they were challenged, the board in essence said go look at our original opinion.

[00:27:12] Speaker 01:
That's correct and that's because of the way that the process played out.

[00:27:17] Speaker 01:
When after the first board's decision

[00:27:20] Speaker 01:
Rockenberger reopened examination and instead of amending the claims, what he did is he solely put in additional secondary consideration evidence and he applied that secondary consideration evidence only to independent claims.

[00:27:34] Speaker 04:
But he preserved his arguments with regard to the 18 groups from the first time around.

[00:27:40] Speaker 01:
And while the board addressed that, the board said that he did not show any error

[00:27:46] Speaker 01:
in the second round of examination to overturn.

[00:27:49] Speaker 01:
But all of that is before us.

[00:27:52] Speaker 04:
We have to go back and look at the original board decision to find out why the board sustained the examiner's rejection across the board of all those claims.

[00:28:00] Speaker 01:
The first board's decision, yes, is before you.

[00:28:03] Speaker 00:
Am I correct in understanding that after the board's first final decision,

[00:28:11] Speaker 00:
Patent applicant then has the opportunity to either go back and reopen prosecution or appeal to this court.

[00:28:17] Speaker 00:
They can't do both.

[00:28:18] Speaker 01:
That's correct.

[00:28:20] Speaker 01:
And he chose to reopen prosecution and not to appeal that first board's decision to this court.

[00:28:24] Speaker 00:
Go ahead.

[00:28:27] Speaker 00:
I'm sorry.

[00:28:31] Speaker 00:
So I thought his only option would then be to take an appeal now, that there wouldn't be an option to have appealed earlier if he was going to reopen prosecution.

[00:28:40] Speaker 00:
Is that right?

[00:28:43] Speaker 01:
So in reopening prosecution and then only addressing the secondary consideration, I would submit that he's waived his arguments with respect to the other claims, and that it rests on the board's original decision here.

[00:29:07] Speaker 01:
He did not show any additional error.

[00:29:10] Speaker 01:
in that second round of... What does that mean?

[00:29:13] Speaker 04:
We can't reach the merits of the original decision?

[00:29:17] Speaker 04:
When you say Wade, he got an adverse decision from the board.

[00:29:24] Speaker 04:
He was told he could either appeal up here, right, or he'd go back and prosecute some more.

[00:29:29] Speaker 04:
He chose to go back and prosecute some more.

[00:29:33] Speaker 04:
Why is he bringing any right to a judicial review of the earlier rejection?

[00:29:40] Speaker 01:
Well, I think the court can reach it, but I don't think there's any additional argument.

[00:29:43] Speaker 01:
I don't think he's made any arguments to support his request to overturn or reverse the board's decision.

[00:29:51] Speaker 04:
So we have to go look at the arguments he presented to the board the first time around.

[00:29:57] Speaker 01:
Yes.

[00:29:58] Speaker 04:
But where we can do that, he has preserved for this appeal the challenge to the initial board decision.

[00:30:06] Speaker 04:
Yes or no?

[00:30:10] Speaker 01:
I think he has preserved it, but he didn't raise arguments.

[00:30:17] Speaker 01:
He didn't continuously raise and carry on the arguments.

[00:30:22] Speaker 04:
You and his brief in this board is solely restricted to the unexpected results issue.

[00:30:34] Speaker 01:
I'm sorry, can you answer that?

[00:30:35] Speaker 04:
Is the only issue in front of this court the correctness of the board's decision on unexpected results?

[00:30:43] Speaker 01:
I think everything rises and falls.

[00:30:45] Speaker 04:
Is the prima facie case up for grabs or not?

[00:30:49] Speaker 01:
No, I don't believe that the prima facie case is up for grabs here.

[00:30:53] Speaker 01:
At all.

[00:30:56] Speaker 01:
I think that by not challenging the prima facie case the second time around,

[00:31:02] Speaker 01:
Before the board.

[00:31:04] Speaker 01:
Before the board, that that's not properly before the court.

[00:31:09] Speaker 01:
Now, what we're focused on here.

[00:31:11] Speaker 04:
Well, you addressed those in your brief at 56 to 64.

[00:31:14] Speaker 04:
You break into groups 3, 11, 13, 15.

[00:31:20] Speaker 04:
You've discussed all that rationale, right?

[00:31:23] Speaker 01:
I did, yes.

[00:31:23] Speaker 04:
That was unnecessary?

[00:31:26] Speaker 04:
I didn't have to read that?

[00:31:29] Speaker 01:
You didn't have to write that?

[00:31:31] Speaker 01:
I think that was in response to his complaint that the board hadn't addressed the claims.

[00:31:38] Speaker 01:
And I think the different group.

[00:31:40] Speaker 04:
And why wasn't your answer that they didn't have to address it?

[00:31:42] Speaker 04:
Because they didn't have a new chapter?

[00:31:44] Speaker 01:
In retrospect, that would have been a lot easier.

[00:31:45] Speaker 04:
That's what you're telling me now?

[00:31:47] Speaker 04:
Right, that's what you're telling me now.

[00:31:48] Speaker 01:
That's perhaps what we should have said.

[00:31:52] Speaker 03:
I think you're over time.

[00:31:55] Speaker 03:
So let's hear from him.

[00:32:00] Speaker 03:
Mr. Fortney.

[00:32:02] Speaker 03:
And you have just a little under a minute.

[00:32:04] Speaker 02:
OK, sorry.

[00:32:05] Speaker 02:
OK, so the Rockenberger Declaration addresses its improvements relative to Aoki at appendix 693 and 694, 699, 700, and 712.

[00:32:18] Speaker 02:
We do have comparative test results against a composition that's closer to the claims than that disclosed by Aoki.

[00:32:28] Speaker 02:
Experiment 14 of the Rockenberger Declaration

[00:32:32] Speaker 02:
deposited a polysilane that was made in a different way, and thus was stable, and thus within the scope of the composition being deposited.

[00:32:42] Speaker 02:
And that didn't coat the substrate.

[00:32:44] Speaker 02:
So we do have comparative testing against the composition closer to our claims than AOK discloses.

[00:32:51] Speaker 03:
That, I'm afraid, is it?

[00:32:53] Speaker 03:
Thank you.

[00:32:55] Speaker 03:
Thank you, Your Honor.

[00:32:59] Speaker 03:
Cases submitted.