[00:00:02] Speaker 00:
The first case for argument this morning is 162084, Mexicam and Manko versus Honeywell.

[00:00:11] Speaker 00:
Mr. Weiss, whenever you're ready.

[00:00:19] Speaker 02:
Please.

[00:00:22] Speaker 03:
Thank you, Your Honors.

[00:00:25] Speaker 03:
This present appeal comes to the Patent Trial and Appeal Board

[00:00:31] Speaker 03:
and centers around claim construction, preferably the term azeotrope-like.

[00:00:37] Speaker 03:
This construction, which this court reviews de novo, is not the broadest reasonable interpretation, is divorced from the specification, and is inconsistent with the claims.

[00:00:51] Speaker 00:
Well, to just cut into it, there may be any number of problems or concerns or questions with respect to this claim.

[00:01:00] Speaker 00:
But when you compare what the examiners claim construction and the boards, why isn't the board right that adopting the examiner's construction, which I guess is one you're advocating, completely reads out the term azeotrope-like from the claim?

[00:01:16] Speaker 03:
Azeotrope-like is a term of art.

[00:01:18] Speaker 03:
It's not a set definition.

[00:01:20] Speaker 03:
It doesn't mean this close.

[00:01:21] Speaker 03:
But it means something.

[00:01:22] Speaker 03:
It means something, and you only get that from the intrinsic evidence.

[00:01:25] Speaker 03:
So?

[00:01:26] Speaker 03:
So you get it from the patent or the document

[00:01:29] Speaker 03:
or wherever it comes from, only in that we have to look at this document itself, these patents at issue, where they define what they mean as azeotrope-like.

[00:01:40] Speaker 00:
OK, so what definition are you advocating?

[00:01:43] Speaker 03:
My advocation is that it includes all the embodiments and all the preferred embodiments.

[00:01:48] Speaker 03:
So for example, I'm referring to the 081 patent, where it says, and this is line 7 to 23,

[00:01:58] Speaker 03:
Preferably such azeotropic compounds comprise, preferably consist essentially of from greater than 0 to about 99 weight percent of trans 1, 2, 3, 4 CE, and from about 1 weight percent to less than 100 weight percent of one or more of the compounds.

[00:02:15] Speaker 01:
So what you're suggesting is that the claims should be limited to the compounds that are described there without regard to whether they have azeotropic-like qualities.

[00:02:26] Speaker 01:
Yes.

[00:02:26] Speaker 01:
Wait a second.

[00:02:29] Speaker 01:
Those combinations of compounds, perhaps with one exception, were disclosed in Inagaki.

[00:02:35] Speaker 01:
Is that correct?

[00:02:36] Speaker 03:
No, I am not saying that.

[00:02:37] Speaker 03:
I am saying that the inventor stated that these compounds in these ranges are azeotrope-like.

[00:02:45] Speaker 01:
If you look at the force... Wait, wait, wait.

[00:02:47] Speaker 01:
Aren't you contending that the compounds that are disclosed in these three claims, that are representative claims, were disclosed in Inagaki?

[00:02:56] Speaker 01:
That is correct.

[00:02:57] Speaker 01:
Yeah, okay.

[00:02:58] Speaker 01:
Your argument is that the claims ought to be confined to the compounds that are disclosed there, right?

[00:03:06] Speaker 01:
Correct.

[00:03:07] Speaker 01:
Without regard to whether they're azeotropic-like or not, correct?

[00:03:12] Speaker 03:
The reason, no.

[00:03:13] Speaker 03:
No?

[00:03:14] Speaker 03:
No, because azeotropic-like, again, you have to figure out what azeotropic-like means by the patents at issue.

[00:03:23] Speaker 01:
I'm really confused.

[00:03:24] Speaker 01:
Is it not the case that

[00:03:27] Speaker 01:
the range of compounds disclosed in these three claims, that not all of them are azeotropic-like?

[00:03:34] Speaker 03:
No, it is not that case.

[00:03:35] Speaker 03:
There is no example, not one example in these patents where there is anything that would not be considered azeotropic-like.

[00:03:43] Speaker 03:
For example.

[00:03:44] Speaker 00:
I'm really confused.

[00:03:45] Speaker 00:
I think you're pushing back on Judge Dyke and I don't know why you are.

[00:03:50] Speaker 02:
Is it because it's your view that based on what is disclosed in the specification,

[00:03:57] Speaker 02:
It necessarily is any mixture of the ingredients recited in the claims results in an azeotropic-like composition?

[00:04:06] Speaker 03:
According to the pans at issue.

[00:04:07] Speaker 03:
Right.

[00:04:07] Speaker 02:
So when Judge Dyke asks you, it's restricted to just azeotrope-like compounds, what we're having here is a definitional debate of what is actually azeotrope-like.

[00:04:21] Speaker 03:
Yes, and I'm sorry.

[00:04:22] Speaker 03:
And I guess what I was looking at where the board itself said,

[00:04:26] Speaker 03:
Well, this is a broad guideline.

[00:04:29] Speaker 03:
This isn't a definition.

[00:04:30] Speaker 03:
So azeotrope-like still has to be azeotrope-like within that range.

[00:04:35] Speaker 01:
Well, are you contending that all of the compounds, the combinations disclosed in the three claims are azeotropic-like?

[00:04:41] Speaker 03:
Yes, according to what they claim in their specific examples.

[00:04:48] Speaker 02:
Let me ask you a little differently.

[00:04:50] Speaker 02:
Are you claiming that, is it your argument that any and every

[00:04:56] Speaker 02:
mixture of percentage weight of the recited ingredients in the claims can and will result in a constant or essentially constant boiling point.

[00:05:09] Speaker 03:
They will result in an essentially constant boiling point.

[00:05:12] Speaker 03:
I cannot say anything to the constant boiling point because that's different.

[00:05:14] Speaker 03:
That's an azeotrope.

[00:05:16] Speaker 03:
But the claims are not azeotrope.

[00:05:17] Speaker 00:
Well, are you saying that based on the broad coverage of the specs,

[00:05:22] Speaker 00:
that they've redefined azeotrope to kind of mean anything and everything.

[00:05:26] Speaker 00:
And that's why your broad construction reads on this?

[00:05:30] Speaker 03:
No, because azeotrope is known, but we're talking about as a term of our azeotrope-like.

[00:05:37] Speaker 03:
It only has context for whatever reference you have.

[00:05:41] Speaker 03:
If I have another patent.

[00:05:43] Speaker 00:
So how would you construe base?

[00:05:45] Speaker 00:
You're looking at the spec.

[00:05:46] Speaker 00:
Let's go back to where you started pointing us to the spec.

[00:05:48] Speaker 00:
How would you construe azeotrope-like?

[00:05:51] Speaker 00:
in the claims based on the specification?

[00:05:53] Speaker 03:
I would see what they gave as the examples.

[00:05:57] Speaker 03:
So first the broad example, which is compound trans 1, 2, 3, 4 ZE in any ranges in combination.

[00:06:06] Speaker 03:
Then I would also look at the specific examples.

[00:06:09] Speaker 01:
I don't understand what you're saying.

[00:06:10] Speaker 01:
This is really confusing.

[00:06:12] Speaker 01:
I thought you were saying a moment ago

[00:06:14] Speaker 01:
that all the combinations of compounds disclosed in these three claims are azeotropic life.

[00:06:20] Speaker 01:
Is that correct?

[00:06:21] Speaker 01:
Right.

[00:06:21] Speaker 01:
And I'm basing that off the specific.

[00:06:22] Speaker 01:
That is correct.

[00:06:23] Speaker 01:
Yes.

[00:06:23] Speaker 01:
OK.

[00:06:23] Speaker 01:
But what is the evidence that was before the board as to whether that is true or not?

[00:06:30] Speaker 01:
The specification, the intrinsic evidence.

[00:06:33] Speaker 01:
Were there any expert affidavits as to whether that's true or not?

[00:06:37] Speaker 03:
There were affidavits on both sides.

[00:06:41] Speaker 03:
We gave one.

[00:06:43] Speaker 03:
They gave affidavits saying that.

[00:06:45] Speaker 03:
The term, again, isn't a said term.

[00:06:50] Speaker 01:
No, no, no.

[00:06:51] Speaker 01:
I'm trying to answer my question.

[00:06:52] Speaker 01:
Was there any evidence before the board as to whether all of these compounds were azeotropic-like?

[00:06:58] Speaker 01:
Yes.

[00:06:59] Speaker 01:
And what was the evidence?

[00:07:01] Speaker 01:
The patents themselves, where you get the data.

[00:07:03] Speaker 01:
No, no, apart from the patents.

[00:07:07] Speaker 01:
The reason we call these azeotropic-like.

[00:07:09] Speaker 01:
Was there any evidence that all of these compounds, put aside the specification, was there any evidence that all the compounds described in these three claims had azeotropic-like qualities?

[00:07:22] Speaker 03:
I guess I would say no, but there was no evidence to the opposite either.

[00:07:27] Speaker 03:
And I guess I'm struggling how we can have, the term has to be defined by these patents.

[00:07:32] Speaker 03:
There's no other evidence

[00:07:34] Speaker 03:
There's evidence on the record of other patents using other terminology, other ranges for what azeotrope like.

[00:07:41] Speaker 03:
And those don't carry over.

[00:07:42] Speaker 02:
So what's wrong with what the board did, which was look into the specification and see what it believed to be the patent owner's attempt at lexicography as to its coined term, azeotrope-like compositions.

[00:08:03] Speaker 02:
when the spec says azeotrope-like compositions are constant boiling or essentially constant boiling.

[00:08:10] Speaker 02:
And then just launch from there and then apply that definition.

[00:08:14] Speaker 03:
And I would apply that definition.

[00:08:15] Speaker 03:
They also say it must be effective amounts.

[00:08:19] Speaker 02:
Effective amounts of the various recited ingredients in the claim that result in constant boiling or essentially constant boiling.

[00:08:27] Speaker 02:
What's wrong with that?

[00:08:29] Speaker 03:
It's not.

[00:08:30] Speaker 03:
When I read the examples of what they give as effective amounts,

[00:08:34] Speaker 03:
I look at example one.

[00:08:36] Speaker 03:
It says, specifically HFO1234 and HFC134A states in preferred embodiments, the present intervention provides novel azotrope-like compositions comprising trans-HFO and HFC134A.

[00:08:56] Speaker 03:
Preferably effective amounts are from greater than zero to about 75% weight trans-HFO1234ZE

[00:09:04] Speaker 03:
and from about 25 weight percent to less than 100 weight percent HFC-134A.

[00:09:09] Speaker 03:
In example two, this is the binary between the 1234ZE trans compound and the 1.5.

[00:09:17] Speaker 03:
They say the preferable effective amounts are from zero to about 99 weight percent trans HFO-1234ZE

[00:09:26] Speaker 03:
and from about 1% to less than 100% HFC 1.5.

[00:09:30] Speaker 02:
Those are all broad ranges, I grant you.

[00:09:32] Speaker 02:
But in the end, if what is wrong with an understanding of the patent that says anything, any mixture within these very broad weight percentages that results in a constant boiling point or an essentially constant boiling point such that when you boil the mixture, when there's

[00:09:55] Speaker 02:
stuff evaporating from the mixture, the liquid composition doesn't change very much in its composition.

[00:10:03] Speaker 02:
What's wrong with that understanding?

[00:10:05] Speaker 03:
There's nothing wrong with that understanding, and that was our understanding.

[00:10:08] Speaker 01:
Do you understand the board to be saying that while Inagaki discloses these various combinations of compounds, that

[00:10:20] Speaker 01:
that this patent is limited to those that have azeotropic-like qualities, that not all of the compounds fall into that category.

[00:10:31] Speaker 01:
So it's not anticipated and obvious because the claims are limited to a species that has particular qualities.

[00:10:40] Speaker 01:
Is that what you understand the board to have said?

[00:10:42] Speaker 01:
That's what the board said.

[00:10:43] Speaker 03:
The problem we have is there's no evidence

[00:10:48] Speaker 03:
There's been no argument, nothing in these patents that say anything within these ranges would not meet this definition.

[00:10:57] Speaker 03:
There is not one example of something that is non-asiotrope-like.

[00:11:03] Speaker 03:
During the argument, when this first started, for example, the combinations between trans-HFO1234ZE and HFC135A, Honeywell had argued, we don't mean the entire range.

[00:11:17] Speaker 03:
We only mean up to 75%.

[00:11:19] Speaker 03:
The range from zero to 75% was their argument.

[00:11:23] Speaker 03:
On these briefs, they said we don't mean the entire range.

[00:11:26] Speaker 03:
We only mean up to 50% trans HFO1234Z.

[00:11:31] Speaker 03:
Those aren't consistent.

[00:11:33] Speaker 03:
The only way they are consistent, or you rectify them, is saying what was said in here, this broad range that covers all these combinations.

[00:11:42] Speaker 03:
When you look at the broad range in these combinations,

[00:11:45] Speaker 03:
There's nothing to distinguish this from what is in Inagaki.

[00:11:49] Speaker 03:
Yes, Inagaki does not use the word azeotrope-like.

[00:11:52] Speaker 03:
But again, that's a definition that has to be based on what was disclosed here in these patterns.

[00:11:58] Speaker 03:
What was disclosed?

[00:11:59] Speaker 03:
All combinations.

[00:12:02] Speaker 03:
When you look at all combinations compared to the prior art, there's nothing to distinguish it.

[00:12:07] Speaker 03:
And there's nothing here that says this range within this broader range is azeotrope-like.

[00:12:14] Speaker 03:
This within this range is not easy to trope-like.

[00:12:18] Speaker 00:
Well, isn't that more of an enablement problem than it is a matter of claim construction?

[00:12:23] Speaker 00:
I mean, you can construe a claim, and it ends up being either indefinite or non-enabled when you reach those issues.

[00:12:29] Speaker 03:
And the way the board has construed the claims, the claims are now indefinite.

[00:12:36] Speaker 03:
And they are not enabled because I cannot tell which.

[00:12:38] Speaker 00:
But so what?

[00:12:39] Speaker 00:
I mean, that's not what the board's job.

[00:12:41] Speaker 00:
I mean, the board here is limited to 102 and 103.

[00:12:44] Speaker 00:
So what if they try to enforce that those arguments remain for the person against whom this is enforced?

[00:12:51] Speaker 00:
I mean, maybe you're just in the wrong place at the wrong time to make the arguments you need to make.

[00:12:57] Speaker 03:
No, because I think the board's construction was wrong.

[00:13:01] Speaker 03:
Given what I see, a person of skill and art would look at here.

[00:13:05] Speaker 03:
They would see here.

[00:13:06] Speaker 03:
They would see what they are directed to.

[00:13:09] Speaker 03:
Combinations of HFO trans 1234ZE in combination with one of the four other compounds.

[00:13:18] Speaker 03:
This is what they intended during prosecution of the patents.

[00:13:22] Speaker 02:
Just to clarify for myself, do your arguments today stand or fall based on your proposed construction of the claim?

[00:13:33] Speaker 02:
Do you have a second argument?

[00:13:36] Speaker 03:
Well, my second argument would be that, let's say, even going forward with the board's construction, azeotrope-like compositions, azeotropes per se are not patterned.

[00:13:50] Speaker 03:
There has to be some criticality to what they say here that distinguishes from the prior argument.

[00:13:57] Speaker 03:
There's nothing here with these ranges.

[00:14:00] Speaker 01:
Under that construction, they haven't identified which compounds are azeotropic-like.

[00:14:06] Speaker 03:
Correct.

[00:14:07] Speaker 03:
And even if they have, they have not said why this is distinguished from the prior art that discloses the same compounds in the same pattern.

[00:14:19] Speaker 03:
These perform better.

[00:14:21] Speaker 03:
This is better.

[00:14:22] Speaker 03:
They just said we can buy this.

[00:14:24] Speaker 00:
But how does that feed into what your argument, at the end of the day, in this proceeding, your argument is obviousness, based on the prior art.

[00:14:32] Speaker 00:
So why don't you explain to us how, given the board's construction, you could fit into the theory.

[00:14:38] Speaker 03:
And as they say, finding the optimal or working range of compounds that were known in the prior art, or composition that was known in the prior art, is not per se patentable.

[00:14:48] Speaker 03:
If they do have these specific ranges,

[00:14:51] Speaker 03:
There's no evidence here how they perform better than the percentages outside of these ranges.

[00:15:00] Speaker 00:
How is that an obviousness analysis?

[00:15:02] Speaker 03:
Because the same compounds are disclosed in the same reference.

[00:15:07] Speaker 03:
It's a genus species question.

[00:15:09] Speaker 00:
Correct.

[00:15:11] Speaker 00:
OK, you almost exhausted your rebuttal.

[00:15:14] Speaker 00:
We'll restore two minutes for rebuttal.

[00:15:15] Speaker 00:
Why don't we hear from the other side?

[00:15:17] Speaker 00:
OK, thank you.

[00:15:33] Speaker 04:
Good morning.

[00:15:33] Speaker 04:
May it please the court?

[00:15:36] Speaker 01:
Ignoring the clear... Could I understand your position?

[00:15:39] Speaker 01:
If I understand what you're saying, is that the combinations of compounds disclosed to these claims were disclosed in an agaki, perhaps with one exception, but that these claims are patentable because they are limited to those compounds within this range.

[00:15:59] Speaker 01:
that show azeotropic-like qualities.

[00:16:02] Speaker 01:
Is that correct?

[00:16:04] Speaker 04:
I believe yes, Your Honor, the way you described it.

[00:16:07] Speaker 04:
There may be an issue about the trans component.

[00:16:11] Speaker 04:
All our compounds or all our mixtures entail the trans isomer of 1234 ZE, and we contend that that entity is not disclosing any gaki.

[00:16:24] Speaker 04:
So with the exception of that, the other HFCs,

[00:16:28] Speaker 04:
the three other HFCs are disclosed in Inagaki, but there is no suggestion or disclosure of any of possible mixtures being able to form azeotrope or azeotrope-like compositions, whether you accept the trans entity that is an embodiment, too, of Inagaki or not.

[00:16:50] Speaker 04:
There's no disclosure whatsoever of any compositional ranges or any

[00:16:54] Speaker 04:
mixtures actually being formed.

[00:16:56] Speaker 00:
So these are, what you've claimed here is a subset of what is in the prior art and the distinguishing factor is this subset in effective amounts is azeotropic life.

[00:17:09] Speaker 00:
How do you identify which those are other than by having a result?

[00:17:12] Speaker 00:
I mean you've claimed a result.

[00:17:15] Speaker 00:
This is what, you know, how is that sufficient?

[00:17:19] Speaker 04:
Well the inventors found, there's ample evidence in the record that

[00:17:24] Speaker 04:
Finding an azeotrope is not predictable.

[00:17:26] Speaker 04:
There's no formula.

[00:17:27] Speaker 01:
There's no theory.

[00:17:28] Speaker 01:
Well, that's not an answer.

[00:17:28] Speaker 01:
That's your problem, because the claims then don't define which compounds are within the scope of the claims.

[00:17:37] Speaker 01:
You can only find that out by making an investigation into an unpredictable area.

[00:17:44] Speaker 01:
If you had

[00:17:47] Speaker 01:
picked out from this genus specific compounds and said we've identified these as being azeotropic-like and we think that that was unpredictable and those are patentable over the prior art.

[00:17:59] Speaker 01:
That would be one thing but you're not doing that.

[00:18:01] Speaker 01:
You're saying we're claiming the whole range of compounds that have azeotropic-like qualities which is just claiming them based on the result as Judge Perot said.

[00:18:13] Speaker 04:
Well I would respectfully disagree Your Honor.

[00:18:15] Speaker 04:
We are claiming the former

[00:18:17] Speaker 04:
We're claiming that within this broad disclosure of Inagaki where there's no guidance or suggestion at all that anything could form azeotrope or azeotrope-like compounds, we have the inventors found a subset that under certain conditions and certain compositional ranges do form.

[00:18:37] Speaker 00:
What is that subset?

[00:18:39] Speaker 00:
How do you identify the subset other than by the result?

[00:18:44] Speaker 04:
Ordinary rules of claim construction run are looking at the intrinsic record here the examples in the patent How do we know what the subset is you say that the identification of these compounds is unpredictable?

[00:18:55] Speaker 04:
What the subset is what is described in the patent?

[00:18:58] Speaker 04:
azeotropic like Z trans e and with 125 134 a 152 a and 227 EA aren't they being defined by the azeotropic like quality

[00:19:12] Speaker 04:
And the inventors give guidance in the examples as to if you're operating at this pressure, then you're going to find the azeotropic-like quality when you have this much trans ZE and this much of the HFC.

[00:19:25] Speaker 01:
Let me ask you as a hypothetical.

[00:19:27] Speaker 01:
Suppose there's a genus, which is a dominant pattern, and you're claiming a species within the genus.

[00:19:36] Speaker 03:
Yes.

[00:19:36] Speaker 01:
And you're claiming the species within the genus simply by describing

[00:19:42] Speaker 01:
quality, an unpredictable quality without identifying which of the compounds have that quality.

[00:19:49] Speaker 01:
Is that patentable?

[00:19:51] Speaker 04:
That is not patentable, Your Honor, but that's not what we have here.

[00:19:55] Speaker 02:
Why is that not patentable?

[00:19:58] Speaker 04:
I'm sorry?

[00:19:59] Speaker 02:
Why is it not patentable?

[00:20:01] Speaker 02:
Under which condition of unpatentability would render that claim unpatentable?

[00:20:06] Speaker 04:
If I understood

[00:20:08] Speaker 04:
Judge Dyke's question, he was saying if you have two mixtures that are in the prior art, you have a mixture that's in the prior art, two compositions, and you later discover that they have a certain property, then... My understanding of his question was there's a genus of mixtures that was disclosed in the prior art, but now you've gone through the practice of

[00:20:34] Speaker 02:
mechanically mixing those disclosed ingredients, or at least a handful of them, using different weight percentages and ultimately finding through this rote mechanical routine experimentation and all that labor that certain ranges of those mixtures result in a really nice property.

[00:20:56] Speaker 02:
And so now you claim anything in the entire genus of mixtures

[00:21:02] Speaker 02:
that has that really nice property.

[00:21:05] Speaker 02:
Is that patentable or not?

[00:21:07] Speaker 04:
I believe the way you described it, yes, Your Honor, that is patentable.

[00:21:10] Speaker 02:
Okay, why would that be patentable if, number one, the genus was known?

[00:21:15] Speaker 02:
Number two, the goal of having that desired property was known?

[00:21:21] Speaker 02:
And three, the process of trying to figure out which things in that genus has that property is known because you're just mechanically doing the mixtures

[00:21:32] Speaker 02:
You have a team of 100 scientists and they're all in there, you know, responsible for a certain mixture of two ingredients and they're using a sliding scale of different weight percentages and different pressures to figure out which combinations of those two ingredients results in the very nice property.

[00:21:48] Speaker 02:
What is it about that that is inventive?

[00:21:52] Speaker 04:
Well, the law is clear that how an inventor comes to the invention is not material in terms of whether the invention is patentable.

[00:22:00] Speaker 04:
So just because you use a technique that is known in the art to find something that is unexpected, that is still recognized to be patentable under the law.

[00:22:09] Speaker 04:
And that's what we have here.

[00:22:11] Speaker 04:
We have compounds that are in a broad genus, leaving aside the trans ZE component, in a broad genus.

[00:22:20] Speaker 04:
And it was not expected that any combinations of these would actually yield an azeotrope.

[00:22:27] Speaker 01:
Well that's the problem because you're saying what we're claiming is a species that exhibits particular qualities which are unpredictable and we haven't identified, except for a couple of examples, which of those compounds within the genus are going to have those unexpected qualities.

[00:22:45] Speaker 01:
I don't understand how you can have a patent which basically says we claim all species that have unpredictable desirable qualities within the genus.

[00:22:56] Speaker 04:
But we're not, Your Honor.

[00:22:57] Speaker 04:
We're claiming a particular combination of ZE with 125.

[00:23:01] Speaker 01:
Now, by the way, wait.

[00:23:03] Speaker 01:
Stick with the hypothetical, OK?

[00:23:05] Speaker 01:
I understand there's an argument that that's not this case.

[00:23:09] Speaker 01:
But stick with the hypothetical.

[00:23:10] Speaker 01:
How can you claim?

[00:23:13] Speaker 01:
If you're trying to claim a species over genus, you generally have to show unpredictable qualities in the species.

[00:23:22] Speaker 01:
But what you're saying is we're not going to identify the specific compounds with a couple of exceptions.

[00:23:28] Speaker 01:
We're going to claim anything that has unpredictable, desirable qualities.

[00:23:32] Speaker 01:
How can somebody claim that?

[00:23:34] Speaker 04:
I don't believe that's what we're claiming.

[00:23:35] Speaker 04:
No, no.

[00:23:36] Speaker 01:
You're not answering my hypothetical.

[00:23:38] Speaker 01:
I don't care whether you think that's this case or not.

[00:23:41] Speaker 01:
You can argue later on it's not this case.

[00:23:43] Speaker 01:
But under that hypothetical, how can that be patentable?

[00:23:47] Speaker 04:
If an inventor discovers that there is a mixture

[00:23:52] Speaker 04:
a species of components from the broad genus that have an unpredictable quality, and you give information and guidance to the public as to how to make that composition, which is what we have in examples, then that is the essence of patentability.

[00:24:13] Speaker 04:
You've discovered something completely unexpected.

[00:24:18] Speaker 04:
It's an exception rather than a rule.

[00:24:19] Speaker 01:
You're bringing that to the public.

[00:24:22] Speaker 01:
Which of the species within the genus have azeotropic-like qualities?

[00:24:27] Speaker 04:
In this case, we have four examples with raw data.

[00:24:31] Speaker 01:
Well, that's examples.

[00:24:32] Speaker 01:
How does it define what the rest of them are?

[00:24:36] Speaker 04:
And then there are also dependent claims that give specific composites.

[00:24:40] Speaker 01:
Well, we're dealing with the independent claims here, which are the three claims that are the subject of this appeal.

[00:24:48] Speaker 04:
All of these claims recite the key

[00:24:51] Speaker 04:
claim term of azeotrope-like.

[00:24:54] Speaker 04:
And without that term, then perhaps your hypothetical would make sense.

[00:25:02] Speaker 02:
I guess, Michael, let's just talk in terms of enablement.

[00:25:07] Speaker 02:
How does your specification enable one of the field and yard to find all the other species beyond the small handful of examples that you disclosed that have this wonderful property

[00:25:20] Speaker 02:
of azeotrope-like?

[00:25:22] Speaker 04:
Because the experiment that is being used to demonstrate this unique property in the examples is a well-known technique.

[00:25:32] Speaker 04:
It's identified in the patent.

[00:25:34] Speaker 04:
It is published in a scientific publication.

[00:25:37] Speaker 04:
Dr. Singh gives testimony in this case, evidence in this case, about the technique.

[00:25:44] Speaker 02:
What's the technique?

[00:25:45] Speaker 04:
It's the Abelmeter test.

[00:25:47] Speaker 04:
And with the information that you can make an azeotrope compound in these percentages, the inventors disclose what they identify to be the unique range.

[00:26:02] Speaker 04:
And they say, we've observed a temperature depression.

[00:26:04] Speaker 04:
And you can take that data, as we did, and plot it.

[00:26:07] Speaker 04:
We have on page 13 in our brief, you can see the actual plot of the data, and you can see

[00:26:14] Speaker 04:
the azeotrope point there, the depression point.

[00:26:18] Speaker 04:
With that information, a person of skill in the art, it's within the skill set of a person of skill in the art to take that information from the examples and know exactly what other composition.

[00:26:29] Speaker 04:
If they want to change the pressure slightly from the pressure that's given in the example, it's within the skill set of a person of skill in the art to make that change.

[00:26:37] Speaker 01:
Do we have any findings to that effect by the board?

[00:26:40] Speaker 04:
We have evidence in the record, and the board said it relied.

[00:26:46] Speaker 01:
Is that correct?

[00:26:46] Speaker 01:
There are no findings, right?

[00:26:49] Speaker 04:
I believe there are findings, Your Honor.

[00:26:50] Speaker 04:
How about that?

[00:26:51] Speaker 04:
The board found that the data and the patent did show the existence of an azeotrope.

[00:26:57] Speaker 01:
That isn't- Where does the board say what you've just been saying?

[00:27:01] Speaker 01:
That there's a technique here that's described for

[00:27:05] Speaker 01:
identifying these, which can be extended beyond the examples that you have here by someone skilled in the art.

[00:27:11] Speaker 01:
Where does the board make that finding?

[00:27:13] Speaker 04:
The board does not make that finding.

[00:27:15] Speaker 04:
It makes the finding that, from the evidence that was presented, which includes the declaration that I was discussing, it finds that, yes, there is sufficient evidence that the patents demonstrate the existence of an azeotrope.

[00:27:31] Speaker 04:
So implicit in that finding

[00:27:33] Speaker 04:
is the fact that a person of skill in the arts would understand that there is an azeotrope.

[00:27:39] Speaker 02:
So then, if that's all true, that there's this established technique for going about your business to try to find all these other interesting species that have this wonderful property, why wouldn't it be obvious to do that at the time of this invention?

[00:27:56] Speaker 02:
We knew that we wanted azeotrope-like compositions.

[00:28:02] Speaker 02:
We knew there were a bunch of these

[00:28:04] Speaker 02:
compounds out there that we would like to mix to figure out if they're azeotrope-like.

[00:28:10] Speaker 02:
We know that there's a well-known established technique to go about to figure out how and which ways different mixtures are azeotrope-like.

[00:28:21] Speaker 02:
Why isn't that an obvious invention?

[00:28:25] Speaker 04:
Because, Your Honor, not all mixtures are azeotrope-like.

[00:28:29] Speaker 04:
And in fact, you expect them not to be.

[00:28:31] Speaker 04:
There is evidence in the record from Dr. Singh

[00:28:34] Speaker 04:
describing lots of mixtures that are zeotropic that are useful as well.

[00:28:40] Speaker 04:
So just knowing that an azeotrope-like invention would be nice to have, it does not provide you the motivation to go out and try every single possible combination of components to find.

[00:28:52] Speaker 01:
I thought you said that there was evidence that someone skilled in the art would know how to do that.

[00:28:56] Speaker 01:
And I think what Judge Chen is asking you, if that's true, if you've defined

[00:29:02] Speaker 01:
what these compounds are by saying that someone skilled in the art would know how to find them, that sounds like an obvious variant, right?

[00:29:12] Speaker 04:
But you have to make the selection first.

[00:29:15] Speaker 01:
What selection?

[00:29:16] Speaker 04:
Of which compounds to start with.

[00:29:18] Speaker 04:
Once you tell someone of skill in the art, these compounds form an azeotrope-like composition at this compositional range, at this pressure.

[00:29:26] Speaker 04:
Then it's within their skill set to figure out, well, if I want to change the pressure slightly,

[00:29:31] Speaker 04:
I can change the pressure slightly and end up still practicing in that compositional range with an azeotrope-like constant boiling character.

[00:29:40] Speaker 04:
But you have to start with the compounds in the first place.

[00:29:43] Speaker 04:
There's got to be a selection to begin with of the compounds.

[00:29:46] Speaker 02:
So is it your argument that something like Inagaki teaches a lot of different compounds to mix together?

[00:29:54] Speaker 02:
And your claim confines that really broad genus down to just a small handful.

[00:30:01] Speaker 02:
And you discovered that in this small handful of mixtures, you can have something that's azeotrope-like.

[00:30:08] Speaker 02:
And so therefore, it was your selection in the claims of particular starting materials that was the non-obvious choice.

[00:30:19] Speaker 02:
But then once you have that non-obvious choice in front of you, then tinkering this way, that way, and the other to get to that and locate the azeotrope-like compositions

[00:30:30] Speaker 02:
it was within the routine skill, and therefore that's why it's enabled.

[00:30:36] Speaker 04:
Yes, Your Honor.

[00:30:36] Speaker 04:
Exactly.

[00:30:37] Speaker 04:
That is exactly the argument that we're making here.

[00:30:39] Speaker 02:
Okay.

[00:30:43] Speaker 02:
All right.

[00:30:44] Speaker 02:
Thank you.

[00:30:44] Speaker 02:
Oh, can I ask another question?

[00:30:45] Speaker 04:
Yes, yes.

[00:30:46] Speaker 02:
So your examples.

[00:30:51] Speaker 02:
Sometimes a differential of two degrees is azeotrope-like, and then there's another example where the differential is six degrees.

[00:30:59] Speaker 02:
And so it makes it a little bit hard to know for sure what your conception really is of an essentially constant boiling point.

[00:31:08] Speaker 02:
If the boiling point differential can be two degrees in one example, six degrees in another example, what is one of Skrill and the Art supposed to know and think?

[00:31:17] Speaker 04:
Well, those are two different examples.

[00:31:20] Speaker 04:
One is with 125, I believe, and the other is with 134A.

[00:31:25] Speaker 04:
So if you're working with 125, one skill in the art would understand from the guidance in the example that the constant boiling behavior is not the same as 134A, but they would be able to, again, using the... I guess maybe a different way of asking is why don't just go with a two-degree differential as the default understanding of what is an essentially constant boiling point?

[00:31:51] Speaker 04:
Because this patent

[00:31:52] Speaker 04:
is disclosing multiple azeotropes.

[00:31:56] Speaker 04:
If we had one azeotrope disclosure, 134A and Trans-EE, then that would make sense.

[00:32:03] Speaker 04:
But here we're disclosing 152A and various other, there's four in total, HFCs.

[00:32:11] Speaker 04:
So each of them is a separate azeotrope entity system.

[00:32:16] Speaker 04:
I think that's what the scientists call it, a system.

[00:32:19] Speaker 04:
So within that system,

[00:32:21] Speaker 04:
the information that's provided in the examples tells one of skill in the art.

[00:32:25] Speaker 04:
Well, this is the degree range, the glide range, if you will, for that system.

[00:32:31] Speaker 04:
The other system is different.

[00:32:33] Speaker 04:
It's a different embodiment of an azeotrope composition.

[00:32:37] Speaker 01:
I have one other question.

[00:32:41] Speaker 01:
The argument that you've been making just now about non-obviousness, was that argument presented to the board

[00:32:49] Speaker 04:
the argument about the test?

[00:32:53] Speaker 01:
Basically your argument is we've identified a subset of the Inagaki compositions which is a good deal narrower than Inagaki and we've described a procedure that makes it possible to identify those that have azeotropic-like qualities and that makes this non-obvious.

[00:33:15] Speaker 04:
I believe that's the

[00:33:16] Speaker 04:
That is our argument, Your Honor.

[00:33:18] Speaker 01:
I know it's your argument now.

[00:33:20] Speaker 01:
I'm asking if you made that argument before.

[00:33:22] Speaker 04:
That's been our argument all along, that Inogake is a broad teaching of 30-something HFOs plus eight HFCs, no guidance to nix any of the two.

[00:33:33] Speaker 04:
In fact, a teaching... No, no, no.

[00:33:34] Speaker 01:
I understand that, but I don't...

[00:33:37] Speaker 01:
My recollection of the record here is you don't say we narrowed it down to the subset that was worth investigating and we provided a procedure and method that someone skilled in the art would use to identify those within that subset that are azeotropic-like.

[00:33:53] Speaker 01:
Stated that way, was that argument made to the board?

[00:33:58] Speaker 04:
I believe it was, Your Honor.

[00:33:59] Speaker 01:
Can you show me where?

[00:34:02] Speaker 04:
We talk about, I believe it's page 52.

[00:34:15] Speaker 04:
Let's see.

[00:34:29] Speaker 04:
On page 53, we say, following the teachings of- I'm sorry, what part of the joint appendix are you at?

[00:34:34] Speaker 04:
I'm in the red brief, Your Honor, on page 53.

[00:34:36] Speaker 01:
That's already been made to us.

[00:34:42] Speaker 04:
And we cite- on page 52, that's

[00:34:55] Speaker 04:
where the argument begins, and we are citing to, I know we refer to one of our appeal briefs.

[00:35:13] Speaker 04:
Perhaps you would like us to send something in a letter to you, Your Honor, after the argument.

[00:35:22] Speaker 01:
I think that would be useful just to cite the pages where this particular argument was made, because I don't see it here in the brief.

[00:35:29] Speaker 01:
And just speaking for myself, I did not understand after reading these briefs twice that that was your argument.

[00:35:38] Speaker 04:
Yes, Your Honor.

[00:35:38] Speaker 04:
We'll be happy to do that.

[00:35:40] Speaker ?:
Thank you.

[00:35:42] Speaker 04:
Thank you.

[00:35:44] Speaker 00:
Just limit yourself to precisely the question that's been asked, and maybe you can take five days.

[00:35:50] Speaker 00:
than five days, but something that really only gives citations to the record.

[00:35:54] Speaker 04:
Yes.

[00:35:55] Speaker 04:
Yes.

[00:36:04] Speaker 02:
So a couple of things.

[00:36:06] Speaker 02:
You were the inner party's re-exam requester, right?

[00:36:10] Speaker 03:
Correct.

[00:36:10] Speaker 02:
So it's your burden to prove by preponderance of evidence that these claims are unpatentable.

[00:36:18] Speaker 02:
That is correct.

[00:36:18] Speaker 02:
Unpatentable under section 103.

[00:36:20] Speaker 02:
Correct.

[00:36:21] Speaker 02:
And as I understand the theory that you were advancing below, it was always about this particular conception of azeotrope-like as meaning essentially any combination of the ingredients recited in the claim.

[00:36:39] Speaker 03:
Correct.

[00:36:39] Speaker 03:
And also, these aren't unpredictable.

[00:36:44] Speaker 03:
This is the whole thing where we

[00:36:47] Speaker 03:
this whole prosecution got off track, azeotropes are unpredictable.

[00:36:53] Speaker 03:
Azeotrope-like compositions are not unpredictable.

[00:36:56] Speaker 00:
Well, there was evidence on the record, right?

[00:36:58] Speaker 00:
Wasn't the Singh Declaration that talked about the unpredictability?

[00:37:03] Speaker 03:
Right.

[00:37:03] Speaker 03:
That evidence was submitted to the examiners, the specialists.

[00:37:07] Speaker 03:
We took that evidence and took it to a separate thing, a separate independent lab.

[00:37:13] Speaker 03:
The examiner said, we see no indication of an azeotrope here.

[00:37:18] Speaker 03:
The independent testing said, we see no indication of an azeotrope here.

[00:37:27] Speaker 03:
The board did not even acknowledge that.

[00:37:29] Speaker 03:
That was brought up during oral arguments.

[00:37:32] Speaker 03:
But in any of the three decisions, there is no mention that the facts below state that there is no azeotrope found.

[00:37:40] Speaker 03:
in the evidence submitted by Dr. Steen.

[00:37:42] Speaker 01:
But what about their argument?

[00:37:43] Speaker 01:
They're saying, look, there was this broad range, this broad genus disclosed in Inagaki.

[00:37:48] Speaker 01:
We narrowed that down to a class sub-genus species that was likely to have isotropic-like qualities, and we told you how to find which ones did.

[00:38:03] Speaker 01:
And therefore, that is non-obvious.

[00:38:06] Speaker 01:
What's your response to that?

[00:38:08] Speaker 03:
Because that's not what they did.

[00:38:10] Speaker 03:
The compounds were known in Inagaki.

[00:38:12] Speaker 03:
That's not what who did.

[00:38:13] Speaker 03:
That's not what the invention does.

[00:38:14] Speaker 03:
That's not what Honeywell did in this patent.

[00:38:17] Speaker 03:
The compounds were known in Inagaki.

[00:38:19] Speaker 02:
That's right.

[00:38:20] Speaker 02:
But the argument is you have to, in order to meet your burden, explain why it would have been obvious to one of skill in the art at the time the invention was made to select the particular compounds from the broad

[00:38:36] Speaker 02:
range of compounds that are described in Inagaki and then use mixtures of those to create an azeotrope-like composition.

[00:38:45] Speaker 02:
To what degree were you arguing to the PTO in this Interparty III exam that it would be obvious to select these particular compounds that are recited in the claims?

[00:38:57] Speaker 02:
My understanding was you didn't really make that argument.

[00:38:59] Speaker 02:
Your argument is really that any combination of the compounds from Inagaki

[00:39:04] Speaker 02:
are obvious because they're all azeotropic-like, as that term azeotropic-like is defined in this patent.

[00:39:12] Speaker 03:
Correct.

[00:39:13] Speaker 03:
And your point earlier, when you were talking about how do you distinguish from a six degrees boiling point and a two degrees boiling point, the claims are covered for these mixtures.

[00:39:26] Speaker 03:
There's no distinguishing that says, if you have this and this, then the boiling point will be different than two or six.

[00:39:33] Speaker 03:
When you look at that,

[00:39:35] Speaker 03:
You go back to the specification.

[00:39:37] Speaker 03:
They intended to cover all these combinations.

[00:39:42] Speaker 03:
And they say, well, we found this narrow subset.

[00:39:44] Speaker 03:
I still have not heard anywhere where there is a narrow subset.

[00:39:48] Speaker 03:
They say effective amounts are from 0 to 99 and 1 to 100 of the second common.

[00:39:52] Speaker 00:
Well, they cite the examples.

[00:39:54] Speaker 03:
Those examples.

[00:39:55] Speaker 03:
Again, in those examples, those examples, for example, with 134A goes up to 51%.

[00:40:03] Speaker 03:
And their argument here,

[00:40:05] Speaker 03:
They say only up to 50%.

[00:40:07] Speaker 03:
Previously, they said up to 75% of the trans HFO1234ZE.

[00:40:13] Speaker 03:
And they're still calling the broad range.

[00:40:15] Speaker 03:
They're not saying, we found from 0 to 10, and 15 to 19.

[00:40:20] Speaker 03:
There's nothing for me to figure out other than what they have written here.

[00:40:24] Speaker 03:
Yes, this is an example.

[00:40:27] Speaker 03:
But the examples should not read out all the other embodiments in the specification.

[00:40:32] Speaker 03:
The specifications particularly say broad ranges.

[00:40:36] Speaker 03:
There's no way to say that.

[00:40:37] Speaker 03:
And there is nothing in there that says, with the exception of this, if I am reading this with skill in the art, what I see is they say that these combinations mix, they work well, and they cover all ranges.

[00:40:54] Speaker 03:
That doesn't distinguish anything from Inagaki, which says, we found these combinations, they work well, and there's no suggestion in Inagaki limitation of ranges either.

[00:41:06] Speaker 03:
And the only difference is they now call these same combinations azeotrope-like.

[00:41:15] Speaker 03:
Thank you.