[00:00:00] Speaker 00: 976, SAG intellectual property versus text 21. [00:00:50] Speaker 02: Good morning, Honors. [00:01:08] Speaker 02: Peter DeYoung on behalf of the panel. [00:01:11] Speaker 02: Just by way of procedural background, this appeal results from an IPR action from Patent Trial Appeal Board. [00:01:20] Speaker 02: The patented issue was the 596 patent. [00:01:24] Speaker 02: Just to refresh the court's memory, that patent originally had 18 claims. [00:01:30] Speaker 02: During the IPR process, we canceled all the claims but claims 1, 3, and 4. [00:01:38] Speaker 03: Where in Mason 1 and Mason 2 is the Peelaway Cover? [00:01:42] Speaker 02: Mason 1, the Peelaway Cover is the Disclosure and Background section of Mason 1 and Mason 2. [00:01:48] Speaker 03: In other words, it's description of other prior art, not its invention? [00:01:54] Speaker 02: No. [00:01:54] Speaker 02: I think background is part of the specification. [00:01:59] Speaker 03: It's certainly part of the specification, but it's not part of the invention when you're describing other prior art. [00:02:05] Speaker 03: I mean, if the specification includes that as a description of what's happening in your claims, you're right. [00:02:12] Speaker 03: But where in the patents does it disclose appeal away cover [00:02:16] Speaker 03: in your claims, not other patents? [00:02:20] Speaker 02: Well, you're right. [00:02:21] Speaker 02: In the body was talked about. [00:02:24] Speaker 02: In the detailed description parts of Mason 1 and 2, they don't talk about the peel-away cover. [00:02:29] Speaker 03: So you can't point me to anything in Mason 1 or 2 that says, these claims include a peel-away cover. [00:02:36] Speaker 03: It's all the prior art includes a peel-away cover. [00:02:39] Speaker 02: That's the characterization of the art, but it's also related to the present invention. [00:02:44] Speaker 02: I don't think it's possible to separate just matter and error. [00:02:46] Speaker 03: Where in the specification or the claims does it say anything that the patents, those patents inventions, has appeal and weight cover, in base one or two? [00:02:58] Speaker 02: It mentions it only in the background. [00:02:59] Speaker 03: OK. [00:03:01] Speaker 02: And I would suggest, Your Honor, that it's not relevant where it appears in the specification. [00:03:09] Speaker 03: If we think that that's not enough, and so that the priority date by the PTAB is correct, what other argument you have? [00:03:21] Speaker 03: It didn't seem to me that you really argued anything, assuming that Mason went into our prior art, that combining them with, is it Thomas that shows a peel-away cover? [00:03:34] Speaker 03: I didn't see anything that suggested that that conclusion was wrong. [00:03:37] Speaker 02: On claims 1, 3, and 4, I think that's right. [00:03:43] Speaker 03: So it's all about priority date here. [00:03:44] Speaker 03: If we disagree with you on priority date, you don't have much else. [00:03:48] Speaker 03: I know there's the amendment issue. [00:03:49] Speaker 02: The amended claims, claims 19, 22, and 29, we think survive the combination of references the board put together. [00:04:01] Speaker 02: Those add what we call the asymmetric. [00:04:04] Speaker 03: Those are the amended claims. [00:04:06] Speaker 02: Yeah, 1922 and 21 are independent claims that we added. [00:04:10] Speaker 02: I remember some dependent claims from those. [00:04:13] Speaker 03: I mean, given the way that PTAP looked at the amended claims and discussed that in terms of you failing to meet your burden of proof, and since we had that question before us at ACWA, shouldn't we just hold that? [00:04:28] Speaker 03: I mean, if we decide that [00:04:32] Speaker 01: the key tabs rules on on burns approve or wrong that i assume you would think we just have to they can't even read and for them to apply the correct for a start we didn't raise the burden of proof we did really where did you argue that uh... you have a lot of work for uh... it's uh... center yeah we're don't tell me it's i can find it if i look through the whole group that's [00:05:44] Speaker 02: Your Honor, the burden issue was talked about on pages 42 and 43 of our brief. [00:05:50] Speaker 02: And the way we characterized the burden was that in denying the motion to amend, the board provided no specific findings to support the rationale. [00:06:01] Speaker 01: Yeah, but there's no argument that they put the burden of proof in the wrong place, is there? [00:06:06] Speaker 02: You're right about that. [00:06:07] Speaker 02: I mean, our characterization of the burden requirement was a bit different. [00:06:11] Speaker 00: Okay, well if that's the case and there was no 28-J letter coming in, I mean, ACWA has been out there for a very long time and remains out there today, how is it fair to say that you've preserved that argument for purposes of this appeal? [00:06:28] Speaker 02: Well, I suppose our argument on the burden issue is different than that one. [00:06:33] Speaker 02: I don't think we're saying that there was any proper burden shifting. [00:06:36] Speaker 02: It's just that when [00:06:40] Speaker 02: The board had their burden of responding. [00:06:44] Speaker 02: We file a motion to amend. [00:06:46] Speaker 02: We have the burden of persuading the board that our claims are patentable. [00:06:50] Speaker 02: And in response to that, the board has some burden to provide some specific findings that we're then able to at least evaluate. [00:07:01] Speaker 02: then decide what our next step might be. [00:07:05] Speaker 01: What are the findings that they didn't make? [00:07:08] Speaker 01: As I understand it, your argument as to the patentability of amended claims is that they showed dividing the strip into two pieces and applying the smaller strip first, right? [00:07:26] Speaker 02: Right. [00:07:26] Speaker 02: That feature is not in the prior arc. [00:07:30] Speaker 02: we call it the asymmetric pillar cover. [00:07:34] Speaker 01: But though the prior art in Thomas and Mason showed dividing the cover into separate pieces, right? [00:07:41] Speaker 02: Sure, but I don't know that that by itself is sufficient to render the small strip, the asymmetric aspect of this is being obvious. [00:07:56] Speaker 02: I mean, at best they talk about [00:07:58] Speaker 02: If you look at the palm picture, the diagram, and it's just diagrams of palm, they show that, you know, in palm, they're trying to attach, you know, an edge piece of the peel-away cover on a cell phone, but there's no suggestion at all that, you know, a solution to that would be an asymmetric peel-away backing. [00:08:18] Speaker 02: And so there's no discussion by the board about, you know, combining those references, let alone adding that additional feature. [00:08:29] Speaker 01: I mean, there is this thing in Thomas on page 349 in the left-hand column. [00:08:34] Speaker 01: Removable backing sheet is not limited to one single sheet. [00:08:38] Speaker 01: Rather, it's fully contemplated that removal backing may be comprised of multiple sheets to facilitate easier removal from transparent overlay sheet, et cetera, et cetera. [00:08:50] Speaker 01: But again, I don't know that that... I mean, your invention is a small [00:08:57] Speaker 01: Your invention is not in multiple sheets, but having a small sheet and a large sheet? [00:09:03] Speaker 02: Essentially, yes. [00:09:04] Speaker 02: And having a small sheet allows you to have a smaller adhesive area to attach to the cover of the phone. [00:09:13] Speaker 02: And then once you attach it, you can remember the balance of the cover from the film. [00:09:22] Speaker 02: I would like to go back to the priority issue, because I think the board [00:09:27] Speaker 02: made some inconsistent findings that I think are important for you to consider. [00:09:38] Speaker 02: So on the one hand, the board found that there was insufficient disclosure in Mason 1 to provide priority for those claims. [00:09:47] Speaker 02: But when they moved in the section of their opinion to the obviousness analysis, they made contrary findings. [00:09:58] Speaker 02: They spent a lot of time, once concluding that Mason 1 is now prior art, they spent a lot of time talking about how Mason 1 and Thomas combined render these claims, 134 and I think 2021, unpatentable. [00:10:12] Speaker 02: But in that section, they clearly say... Why don't you give us a page number? [00:10:17] Speaker 02: 288 is the record. [00:10:22] Speaker 02: Okay. [00:10:22] Speaker 02: So at the middle of the page, it's the first full paragraph there. [00:10:26] Speaker 02: As discussed above, [00:10:28] Speaker 02: Mason 1 discloses a package that includes a screen protector, which has an adhesive layer. [00:10:34] Speaker 02: Those are the first two elements of claim 1. [00:10:37] Speaker 02: A payload and cover film, that's element 3. [00:10:40] Speaker 02: An application card, that's element 4. [00:10:42] Speaker 02: So in that finding, they specifically found that that specification discloses those elements. [00:10:52] Speaker 02: They go on, and even though this is buried in a 103 analysis, [00:10:57] Speaker 02: The last sentence of that very last paragraph is discussed about claims 1, 3, 4 of the 596 patent are not entitled to the priority date of the filing date of Mason 1, etc. [00:11:13] Speaker 02: and is thus available as prior art under 102. [00:11:18] Speaker 02: So they're on the one hand saying that Mason 1 acts as a 102 bar against the claims of the 596. [00:11:27] Speaker 02: But on the other hand, that there's not sufficient disclosure to support those claims. [00:11:32] Speaker 02: I don't know. [00:11:33] Speaker 00: I don't understand. [00:11:34] Speaker 00: It says, because you've just taken little bits and pieces of various sentences, and I find it confusing. [00:11:40] Speaker 00: As discussed above, 1, 3, and 4 of the 5 non-6 are not entitled to the priority date, Mason 1. [00:11:47] Speaker 00: Mason 1 issued on June 2008, more than a year prior to the August 2010 filing date. [00:11:56] Speaker 00: Let's just be a little [00:11:58] Speaker 00: Is that a typo? [00:12:00] Speaker 00: What? [00:12:01] Speaker 00: And is thus available as prior art under 102B. [00:12:04] Speaker 00: Oh, so Mason 1 is available as prior art. [00:12:08] Speaker 03: Right, because being fully? [00:12:11] Speaker 03: They're just saying it's available as prior art. [00:12:13] Speaker 03: They're not saying it fully anticipates, because the whole section is discussing a combination of Mason and Thomas. [00:12:19] Speaker 02: No, I understand. [00:12:20] Speaker 02: It's buried in their, why wouldn't Mason 1? [00:12:23] Speaker 02: I mean, that's going to be the best, that's better prior art than Palm 1. [00:12:26] Speaker 02: And they use Palm 1 to anticipate claim 1. [00:12:28] Speaker 02: Why wouldn't Mason want to be even better art? [00:12:31] Speaker 02: It's the same invention. [00:12:34] Speaker 01: What do you conclude from that? [00:12:38] Speaker 01: That they had a better argument against you than they articulated? [00:12:41] Speaker 02: No, it's just inconsistent. [00:12:43] Speaker 02: I don't think it's possible to say a written description in a chain of patent filings can act as 102 art against a subsequent set of claims, but not [00:12:57] Speaker 02: act is sufficient for 112. [00:13:00] Speaker 02: I don't know how it's conceivable that it could be 102R but not still meet the written description requirement for 112. [00:13:07] Speaker 03: Well because you can use the discussion of prior art in the specification as an obviousness consideration [00:13:15] Speaker 03: even though your invention didn't actually disclose that limitation. [00:13:20] Speaker 02: Obviousness, yes. [00:13:21] Speaker 02: This is not. [00:13:22] Speaker 02: This is anticipation. [00:13:24] Speaker 02: But their conclusion was an obviousness determination. [00:13:26] Speaker 03: They're not being asked to do it if they say 102. [00:13:30] Speaker 03: But they didn't say it was anticipated. [00:13:32] Speaker 03: We're being asked to review an obvious determination based upon Mase's and Thomas. [00:13:38] Speaker 03: Even if they somehow also incorrectly found an anticipation, [00:13:43] Speaker 03: That's at best harmless errors, isn't it? [00:13:45] Speaker 03: If there's sufficient evidence to show that Mason 1 and Thomas make this obvious, and they're right on the priority date, what does it matter if they made an incorrect anticipation finding? [00:13:58] Speaker 02: I'm just saying that it matters because the rationale that they've included in that analysis, I think, is completely confusing. [00:14:05] Speaker 03: It's at all not clear to me that they're saying Mason 1 fully anticipates [00:14:10] Speaker 03: these clients. [00:14:11] Speaker 03: I don't think that's what that sentence says. [00:14:12] Speaker 03: I think what it says is, you can use Mason-Wann as prior art, because it's more than a year before the priority date. [00:14:20] Speaker 03: And in combination with Thomas, which discloses an element not contained in Mason-Wann, it's obvious. [00:14:27] Speaker 02: I'm just reading the language from the order, and that's what the order says. [00:14:32] Speaker 02: It doesn't use the word anticipation. [00:14:34] Speaker 02: 102. [00:14:36] Speaker 02: When I read 102, I take it to mean anticipation. [00:14:39] Speaker 02: So is there confusion? [00:14:40] Speaker 00: Are you saying that, as Judge Dyke pointed out, so your argument is, and they also found an alternative ground, that Mason 1 was anticipatory? [00:14:52] Speaker 00: Well, even if that's true, and even if you win on that, you've still got to dislodge the other conclusions with respect to the obviousness inquiry, right? [00:15:03] Speaker 02: I don't see where it gets you. [00:15:04] Speaker 02: Well, this is where it gets me. [00:15:06] Speaker 02: If we get the benefit of the analysis here under the obviousness section of the order, where they conclude that Mason 1 discloses and describes all of these features, if I get the benefit of that finding and apply it to the priority finding, then Mason 1 is no longer prior art. [00:15:27] Speaker 02: I'm just saying the analysis in the obviousness section of the order, when applied... It's no longer prior art because why? [00:15:33] Speaker 02: Because it's a sufficient written description? [00:15:36] Speaker 02: Because they've acknowledged that they saw one fully and completely describes every element in the claim. [00:15:42] Speaker 02: And that's all we need under section 112. [00:15:45] Speaker 03: No, it's not. [00:15:46] Speaker 03: The written description has to show that you invented all these features, not that those features were present in the prior art. [00:15:52] Speaker 03: And that's the key distinction on their finding. [00:15:55] Speaker 03: True. [00:15:56] Speaker 03: So where's the starting point for this analysis? [00:15:59] Speaker 03: We already talked about this. [00:16:00] Speaker 03: You were not willing to point me to a single sentence that described your invention [00:16:05] Speaker 03: in Mason 1 or Mason 2 as including the component they found lacking. [00:16:12] Speaker 02: With all due respect, I think the analysis you're doing is what the board did. [00:16:17] Speaker 02: And in evaluating the scope of the claims... And what's wrong with that? [00:16:23] Speaker 03: If the written description of your invention doesn't include that element, if it's only included in the prior art, then you don't have sufficient written description for that element. [00:16:34] Speaker 03: even if that very same specification suggests that element is a prior art. [00:16:39] Speaker 03: You have to say it's included in your invention, don't you? [00:16:44] Speaker 02: But the standard is different. [00:16:45] Speaker 02: What the board is doing is they're looking at the claim, and then they go for support trying to find a complete embodiment that incorporates every element of that claim. [00:16:56] Speaker 02: We're not required to show every embodiment of our invention, just best embodiment. [00:17:03] Speaker 02: were entitled to use elements from one embodiment, from other embodiments, or from description not even included in an embodiment. [00:17:14] Speaker 02: And, I mean, we're talking about a peel-away cover on a protective film. [00:17:19] Speaker 02: It's so well-known and so common in the art, it doesn't warrant any more description than in the background. [00:17:26] Speaker 02: Until you get to the 596 patent, where now the nature of the asymmetric peel-away [00:17:33] Speaker 02: is more important for the point of novelty of the new matter. [00:17:36] Speaker 02: That's the asymmetric backing. [00:17:38] Speaker 02: So it's not just left as part of the background of the invention. [00:17:44] Speaker 02: It's brought more front and center and talked about in terms of this one embodiment. [00:17:48] Speaker 02: But the claims are not limited to just the embodiments that we find. [00:17:52] Speaker 00: OK. [00:17:53] Speaker 00: We've exceeded your rebuttal. [00:17:55] Speaker 00: We'll restart two minutes of rebuttal time. [00:17:57] Speaker 00: Let's see it from the other side. [00:18:09] Speaker 04: Well, may it please the court? [00:18:11] Speaker 04: I wanted to address first the argument that there is an inconsistency. [00:18:21] Speaker 04: This is the first time that that argument has been raised. [00:18:24] Speaker 04: In fact, it's in the statement of issues. [00:18:26] Speaker 04: The issue is that Zag has a statement of issues. [00:18:31] Speaker 04: It says what the issue is, whether or not claims 1, 3, [00:18:37] Speaker 04: and four are obvious in view of Mason and Thomas. [00:18:42] Speaker 04: Does that say anything about anticipation? [00:18:45] Speaker 00: Yeah, but he's just making an argument to support his ultimate conclusion. [00:18:49] Speaker 00: I mean, that's fair game. [00:18:50] Speaker 00: He wouldn't have to state that as an issue. [00:18:53] Speaker 00: It's an argument to show that the board... [00:18:57] Speaker 00: Obviously, we might not abide that argument, but that's an argument that I think is fair game, right? [00:19:02] Speaker 00: Well, you certainly should not abide that argument. [00:19:05] Speaker 01: I think that if I recall the cases, that for obviousness purposes, you look to 102 to determine what's prior art, and that would seem to be all that the board is saying here, is that we're determining what's prior art by looking at 102. [00:19:20] Speaker 01: It's not saying this in anticipation. [00:19:23] Speaker 04: Right. [00:19:24] Speaker 04: There is no inconsistency. [00:19:26] Speaker 04: There was no statement by the board anywhere that Mason anticipated claim one, three, or four. [00:19:35] Speaker 04: That's just a fact. [00:19:39] Speaker 04: In fact, as stated in the statement of issue, what the board, well, Zeig completely disregarded the fact that [00:19:52] Speaker 04: the board found that claim one was anticipated by the poem reference. [00:20:00] Speaker 04: And we argued in our brief that they had waived that argument. [00:20:07] Speaker 04: In the reply brief, they did not argue that... They're not arguing that now. [00:20:14] Speaker ?: They're not arguing it now. [00:20:15] Speaker 04: So claim one is out. [00:20:18] Speaker 04: But nevertheless, it is in this characterization to suggest that Mason was cited as anticipating claims 1, 3, and 4, as you have suggested. [00:20:33] Speaker 04: Indeed, the board found that claims 1, 3, and 4 were obvious in terms of Mason and Thomas. [00:20:44] Speaker 04: Why? [00:20:44] Speaker 04: Because the deal away from everything [00:20:49] Speaker 01: I thought in response to Judge Hughes' questions, they agreed that if Mason is prior art, they lose on claims 1, 3, and 4, and that the only issue that remains then is the amended claim. [00:21:02] Speaker 01: Right. [00:21:07] Speaker 04: Another point that I wanted to address that was made was the characterization of a small sheet and a large sheet, this asymmetric Peel away film. [00:21:19] Speaker 04: In fact, if you look at the claims, it just says one portion is smaller than the other. [00:21:28] Speaker 04: And so that is supposed to be patently distinct from nays in which there's perforation down the middle. [00:21:35] Speaker 04: So it could be anything up to one microliter, meter, up to be in half. [00:21:42] Speaker 04: It's anything less than half, if you look at the claims. [00:21:45] Speaker 04: And that is the alleged [00:21:48] Speaker 04: Patentable subject matter. [00:21:51] Speaker 04: In the opening argument, Zag said that at best they talk about Paul. [00:21:58] Speaker 04: But in fact, as you pointed out, the board's decision was also based on Thomas. [00:22:07] Speaker 04: And it was also based on Mays with respect to the substitute claims 19 and 22 through 32. [00:22:17] Speaker 03: What about the burden issue? [00:22:20] Speaker 03: Assuming that the burden shouldn't be on them, it should be on you or the board, is there anything in the board's decision or put forth by you that would let us find, even if there was an error, it was harmless because the board and you put forth sufficient evidence to show that they were? [00:22:46] Speaker 04: Absolutely. [00:22:48] Speaker 04: I think that the board made a very strong showing, and we did as well, that those claims, that those proposed substitute claims are obvious in view of... I'm sorry, you have to let me ask my questions. [00:23:05] Speaker 03: Can you point me to that? [00:23:06] Speaker 03: Because I read the board's opinion, and I do have some difficulty because every time I see them talking about it, they talk in terms of Zag failing to meet its burden. [00:23:17] Speaker 03: rather than saying this is our finding or you have put forth sufficient evidence. [00:23:26] Speaker 03: Okay. [00:23:26] Speaker 04: Let me see if I can point you to that argument. [00:23:36] Speaker 04: If you look at appendix pages 293 to 300, I think you'll see pretty good [00:23:44] Speaker 04: statement of the argument as to why these substitute claims are obvious over Thomas, Paul, and McNeese. [00:23:50] Speaker 04: You're absolutely correct that the board, because of the case law that exists, the board would say that the conclusion is that Zag failed to meet its purpose. [00:24:06] Speaker 04: But if you look at those seven pages, you see an analysis of [00:24:11] Speaker 04: How those claims really render obvious? [00:24:15] Speaker 03: I mean, you should be able to pinpoint us more precisely than the entire discussion. [00:24:19] Speaker 03: But I assume you're talking about maybe page 279, where it says that Petitioner argues a patent owner has not demonstrated that the added features are patentable and that we are persuaded by Petitioner and things like that. [00:24:36] Speaker 04: Well, let me say this. [00:24:39] Speaker 04: briefly summarized here. [00:24:40] Speaker 03: I mean, you understand my issue is that I'm not following the board for using its burden of proof standard because it's what's the applicable law. [00:24:50] Speaker 03: But that issue is before us in ACWA. [00:24:52] Speaker 03: And if it comes out a different way, then if they rely solely on a failure of the patent owner's burden of proof, then I'm not sure how we can affirm it. [00:25:03] Speaker 03: But if there's evidence to suggest that they satisfied [00:25:07] Speaker 03: their obligation or you somehow satisfied an obligation, then perhaps it's harmless error. [00:25:13] Speaker 03: Whatever would happen in aqua. [00:25:16] Speaker 01: I'm not sure that the board is relying on the burden of proof as opposed to the burden of production because on page 293 they say while not required to prove that the claims are patentable over every item of prior art. [00:25:34] Speaker 01: known to a person of ordinary skill, the patent owner is required to explain why the claims are patentable over the prior art of record. [00:25:42] Speaker 01: And it seems to me that they never really say that we're saying that you failed to meet the burden of persuasion. [00:25:50] Speaker 01: You just failed to explain burden of production, why the claims are unpatentable. [00:25:57] Speaker 04: Well, they did say that. [00:25:59] Speaker 04: But I think they have also, I have [00:26:03] Speaker 04: meant they had a point set that failed to show that the claims were patentable. [00:26:09] Speaker 04: But I think that it is harmless error, because I think that if you look at the discussion, basically the asymmetric peel away, there are really two purported innovations involved in this case. [00:26:26] Speaker 04: One is the peel away cover film, and I want to emphasize that [00:26:32] Speaker 04: Zag has really tried very hard to confuse the issue by talking about wet embodiments and dry embodiments. [00:26:39] Speaker 04: The board focus said specifically the crux of the issue in this case is the peel-away film cover and in fact the 596 patent specifically states that the peel-away film cover is contemplated both for the wet embodiment and the dry embodiment. [00:26:59] Speaker 04: And if you look at the very [00:27:01] Speaker 04: pages cited by Zag for saying that the board improperly stated that the 596 baton was limited to the dry embodiment. [00:27:18] Speaker 04: You see right there on appendix 278-279, the board is saying here's the wet embodiment in 596 and here's the dry embodiment. [00:27:28] Speaker 04: So the crux of this is the peel-away cover. [00:27:33] Speaker 04: And then in the substitute claims, what happened there was that in the claim that was canceled, Zag had just said that there was a perforated line and there were two portions. [00:27:47] Speaker 04: That claim was canceled. [00:27:50] Speaker 04: And the substitute claims, as Zag says, the heart of all the substitute claims, set 20 and 21 I shed, [00:27:58] Speaker 04: 20 and 21 are really kind of in the same category of 1, 3, and 4, because 20 and 21 just involve the peel-away film cover and then added material from Mason. [00:28:13] Speaker 04: But the 19 and 22 through 32 are this asymmetrical film cover, which, as I said, is simply, instead of being two portions [00:28:28] Speaker 04: It provides that one portion is smaller than the other. [00:28:34] Speaker 04: So getting this substantively, what the board said is that, OK, so you have one portion smaller than the other. [00:28:45] Speaker 04: Mays discloses appeal waveform in two halves. [00:28:50] Speaker 04: Thomas discloses a removable backing sheet. [00:28:53] Speaker 04: And I believe you read the quotation from Thomas, which [00:28:58] Speaker 04: where you peel away a smaller portion, and it even contemplates multiple removable backing sheets. [00:29:08] Speaker 04: And then Thomas. [00:29:10] Speaker 04: Thomas, actually, if you look at the pictures in Thomas, it shows, as you would in, I'm sorry, in Thomas, I should also note that they compare it just to peel away a name tag. [00:29:26] Speaker 04: So it's very, very common. [00:29:31] Speaker 04: And in palm, if you look at the pictures in palm, the third reference, that shows a small portion of the peel-away cover being pulled off so that a small portion can be applied and then peeling away the rest. [00:29:51] Speaker 04: So I think that there's a very strong argument that [00:29:57] Speaker 04: that these proposed substitute claims are obvious. [00:30:01] Speaker 04: Furthermore, the board cited the motivation for combining the references. [00:30:06] Speaker 04: And if you look at appendix 299 and 297 and those portions of the decision, the board talked about the advantages of being able for easier alignment of pulling away one portion before you pull away the other portion. [00:30:25] Speaker 04: So I do think that regardless of what happens within Raina Aqua, it could be a harmless error. [00:30:44] Speaker 04: And with respect to the background, one of the mischaracterizations in Zach's brief is that [00:30:56] Speaker 04: It states that our position is that anything in the background section, that nothing in the background section could support written description department. [00:31:08] Speaker 04: But what we have said, and we cited Aniscape being Nintendo of America for this proposition, is basically it's a description of the prior art. [00:31:20] Speaker 04: It's not a description of the invention. [00:31:23] Speaker 04: It's very clear from the context if you look at [00:31:27] Speaker 04: at those sections, that they are very specific discussions of prior art. [00:31:33] Speaker 04: And as admitted, there is nothing in the rest of the specification that in any way suggests that that was incorporated into the convention. [00:31:54] Speaker 04: Zeig's argument that the claims are patentable [00:31:57] Speaker 04: is basically largely based on one, three, and four. [00:32:05] Speaker 04: Again, Palm anticipates one. [00:32:12] Speaker 04: Thomas shows everything in one, except the pre-cut films. [00:32:18] Speaker 04: Well, it does show pre-cut films. [00:32:20] Speaker 04: It's actually pre-cut films are disclosed in the background of Thomas. [00:32:26] Speaker 04: But it does not show the liquid solution. [00:32:29] Speaker 04: And the liquid solution is in claims three and four. [00:32:35] Speaker 04: But of course, that's in Mason. [00:32:37] Speaker 04: And Mason shows everything in one, three, and four, except the peel-away cover, which is supplied by Thomas, with respect to the obvious. [00:32:52] Speaker 04: With respect to claim 20, [00:32:56] Speaker 04: which corresponds to Cancel Claim 5, as stated by the board. [00:33:00] Speaker 04: While that claim, that the substitute claim, was patentable because the prior art did not show the additional subject matter, the added subject matter is all found in Mason 1, which is prior art. [00:33:20] Speaker 04: Zach, as I'm sure you're aware, Zach has not claimed any priority with respect to the substitute claims 19 and 22. [00:33:32] Speaker 04: Thank you very much. [00:33:42] Speaker 02: I want to read the standard for the room description requirement that the board cited. [00:33:47] Speaker 02: I think it's the correct standard. [00:33:49] Speaker 02: The disclosure need only reasonably convey to persons skilled in the art that the inventor had possession of the subject matter in question, even if every nuance of the claims is not explicitly described in the specification. [00:34:02] Speaker 02: Our specification is better than that. [00:34:05] Speaker 02: Anyone that reads those claims is going to understand exactly what they mean. [00:34:09] Speaker 02: And I believe it would be inconceivable if those claims, claim one, were a part of the original Mesa one, that they would have been denied on 112. [00:34:19] Speaker 02: To me, it's an impossibility because of the support in the background section. [00:34:24] Speaker 02: And it's the same test. [00:34:25] Speaker 02: We should get the same benefit. [00:34:26] Speaker 02: Just because it's a continuation of a later application doesn't matter. [00:34:30] Speaker 02: And you're not suggesting the board applied the wrong test. [00:34:37] Speaker 02: The articulated test is correct. [00:34:39] Speaker 02: Its application is wrong. [00:34:41] Speaker 02: Because as I said before, it's looking for embodiments that include all the elements of the claim. [00:34:48] Speaker 02: That's not the requirement. [00:34:49] Speaker 02: And any person skilled in the art reading our claims, in light of that specification, including the background, is going to know exactly what those claims are. [00:35:01] Speaker 02: The claims define the invention, not the embodiments. [00:35:05] Speaker 02: And it seems, I mean, I can understand the temptation to say this is background, this is not, but the lines are not that clear. [00:35:13] Speaker 02: It's a continuum of information. [00:35:17] Speaker 02: Most claims are, [00:35:19] Speaker 02: innovation, inventions are combinations of existing things. [00:35:23] Speaker 02: Existing things is background. [00:35:25] Speaker 02: And when you're drafting an application with that background in mind, you'll pull from it, and in your detailed description, you'll draft your application focusing on the points of novelty and things like that with your claim set. [00:35:40] Speaker 02: But as Mason 1 is filed, Mason 2, and the 596, the points of novelty changed. [00:35:46] Speaker 02: So now what was just [00:35:48] Speaker 02: clearly well-known in the art, in the background, with the peel-away. [00:35:52] Speaker 02: And again, it's a peel-away for the protective film. [00:35:55] Speaker 02: So the film and the peel-away cover are inextricably connected. [00:36:01] Speaker 02: And there's no question that the film is talked about in all of these. [00:36:05] Speaker 02: But when you get to the 596, we're not just relying on the standard protective film peel-away cover that's so common in the background. [00:36:13] Speaker 02: We've modified it. [00:36:15] Speaker 02: It's asymmetric now. [00:36:16] Speaker 02: It's with a dry application. [00:36:19] Speaker 02: It's become more prominent in what has now become a different point of novelty. [00:36:24] Speaker 02: But it's fully disclosed. [00:36:26] Speaker 02: Anyone skilled in the art reading that claim in light of that specification is going to know what it means. [00:36:32] Speaker 02: The final point, we've exceeded your time. [00:36:36] Speaker 02: The final point is background sections use all the time for enablement, construing claims, [00:36:42] Speaker 02: I think it would be a mistake to say the background is not available for section 112. [00:36:47] Speaker 02: Thank you. [00:36:48] Speaker 02: We thank both sides in case they submit it.