[00:00:02] Speaker 02:
The next case is in Ray Durrance et al., 2017, 1486.

[00:00:10] Speaker 02:
Mr. Kennedy.

[00:00:12] Speaker 00:
May it please the court.

[00:00:13] Speaker 00:
The PTAB has made two fundamental errors that require reversal.

[00:00:17] Speaker 00:
First, there's no substantial evidence that all of the claim elements are present in the prior art.

[00:00:22] Speaker 00:
Second, there's no substantial evidence of a coherent rationale to modify the primary reference.

[00:00:28] Speaker 02:
Well, what's missing?

[00:00:28] Speaker 02:
Tumbling?

[00:00:30] Speaker 00:
Yes, and let me point specifically to the claim elements.

[00:00:33] Speaker 00:
In claim one, which is directed to an apparatus, you have element F, a means for rotating so as to tumble.

[00:00:41] Speaker 00:
And in claim 16, you have elements C and D. C provides rotating the container so as to tumble, and D provides applying microwave radiation to the tumbling material.

[00:00:58] Speaker 00:
Both of those

[00:01:00] Speaker 01:
Let me interrupt you.

[00:01:02] Speaker 01:
As you proceed with your argument, as where you're headed, I want you to address also the point of the dividers within the tumble-in devices.

[00:01:14] Speaker 00:
Yes, thank you, Your Honor.

[00:01:15] Speaker 00:
Looking at specifically the apparatus claim, the means for rotating so as to tumble, that's means plus function claiming, and it invokes a certain structure, and that structure has been defined

[00:01:28] Speaker 00:
in the prosecution of the application and also during the various stages of appeal.

[00:01:32] Speaker 00:
First, in response to the examiner's 112 rejection regarding tumbling, the applicant provided arguments regarding the structure, defining the structure, demonstrating that there was tumbling.

[00:01:46] Speaker 00:
Second, in providing its appeal brief to the PTAB, the applicant had a burden to provide or list all of the means plus function

[00:01:56] Speaker 00:
claim elements and the corresponding structure defining where those are at.

[00:02:00] Speaker 00:
The examiner never contested the means plus function language and actually withdrew the section 112 first paragraph rejection in light of the citation to the record and in light of an interview with counsel for the applicant.

[00:02:15] Speaker 00:
Second, the office has never contested the identification of means plus function claiming either in the examiner's briefing or before this court.

[00:02:23] Speaker 00:
So we would posit that the means plus function

[00:02:26] Speaker 00:
claim limitation is a means for rotating so as to tumble and includes the tumbling.

[00:02:33] Speaker 00:
Now, that structure, getting more specifically to your question, your honor, requires divider walls, which are shown by reference numeral 146 in applicants' figures.

[00:02:44] Speaker 00:
Specifically, figures five, seven, and eight, which are located on page seven of our opening brief, show those, those divider walls.

[00:02:50] Speaker 00:
And those divide out the container that the organic material being dried is in.

[00:02:56] Speaker 00:
Those facilitate the tumbling so that it can occur during the rotation.

[00:03:01] Speaker 03:
Just curious, how do they facilitate the tumbling?

[00:03:06] Speaker 00:
They break up the cylinder.

[00:03:08] Speaker 00:
If you think about a, you know, think about a Coke bottle filled, you know, partially with pop and you start to try to roll it on a table, the gravity pulling down on the contents, the pop in the Coke bottle are going to detract from it fully being able to rotate.

[00:03:23] Speaker 00:
By putting those dividers in there, you provide buttress, essentially, for the organic materials to be biased against so that they, during the rotation, ultimately end up rotating and tumbling.

[00:03:36] Speaker 03:
Is the idea that you've turned a cylinder into four mini-cylinders, and by making each individual cylinder now smaller, that somehow improves the tumbling action?

[00:03:49] Speaker 00:
Not precisely, Your Honor, in that the cylinder itself is no longer, when it has the divider walls, it's not purely four separate cylinders.

[00:03:57] Speaker 00:
If you look at the figures, they look more triangular in shape.

[00:03:59] Speaker 00:
And they provide that surface so that when it rotates up, it lifts and then tumbles the organic materials.

[00:04:06] Speaker 00:
The other point that I would raise is that these are wet materials.

[00:04:09] Speaker 00:
They're organic matter, they're typically wet, and they're being dried.

[00:04:11] Speaker 00:
And so the wet materials may have a tendency to slide on the surface as it's being rotated.

[00:04:17] Speaker 00:
If you look at the weffers,

[00:04:18] Speaker 00:
the primary reference, it's teaching flat receptacles.

[00:04:22] Speaker 00:
And those flat receptacles it teaches should be evenly distributed with the contents in a particular thickness.

[00:04:28] Speaker 00:
It calls out 60 millimeters, so that you can have consistent microwave radiation.

[00:04:32] Speaker 03:
Why wouldn't it be obvious to tumble the things you're trying to dry out, just like a clothes dryer or a vegetable tumble basket?

[00:04:43] Speaker 03:
Do you know what I'm talking about when I say a vegetable tumble basket, where the vegetables are

[00:04:48] Speaker 00:
I'm not sure I'm familiar with a vegetable tumble basket.

[00:04:50] Speaker 03:
It's a way to roast the vegetables where they're in a big basket, wire basket, and it's spinning and then the vegetables are tumbling and you're getting a more even cook or roasting of all the individual pieces of vegetables.

[00:05:04] Speaker 00:
I can't speak specifically to the vegetable tumbling, but I can address why there's not a motivation to have this tumbling automatically added.

[00:05:16] Speaker 00:
These materials

[00:05:18] Speaker 00:
are, unlike clothing, for example, you want to have a consistent drying to them.

[00:05:24] Speaker 00:
It's food products so that they can be rehydrated at a later time.

[00:05:27] Speaker 00:
It's other organic matter, such as things being used for medicines and medicinal purposes.

[00:05:32] Speaker 00:
And so you want to have an even application of the microwave radiation.

[00:05:36] Speaker 00:
And you see this apparent in Weffers when they talk about having this even distribution of the organic material, in that case, as it goes through the microwave radiation so that

[00:05:47] Speaker 00:
When you travel through the microwave radiation for the set time and under particular microwave conditions, you have an even distribution of that radiation to the goods or the organic materials being transported through there.

[00:06:00] Speaker 00:
If you start tumbling the materials, you risk the issue of having an inconsistent application of the microwave radiation.

[00:06:10] Speaker 00:
And that's why Weffer's teaches even distribution and then particular parameters for passing it.

[00:06:17] Speaker 02:
By the tumbling, all surfaces are exposed to the radiation.

[00:06:23] Speaker 00:
It's not so much the surfaces as the microwave radiation can pass through the tumbled materials.

[00:06:28] Speaker 00:
What it is is that you want to have an even distribution so that an equal amount of the microwave radiation is contacting the various organic materials.

[00:06:38] Speaker 00:
If you are tumbling, say particularly in a cylinder,

[00:06:41] Speaker 00:
you're going to have variations in the height and the depth of the organic material being tumbled.

[00:06:46] Speaker 00:
And Weffer's teaches you should have an even distribution of that.

[00:06:51] Speaker 00:
Going to my second point regarding the motivation to combine, I think there's some bearing on this discussion, is talking more specifically about Berger.

[00:07:00] Speaker 00:
Berger teaches sanitizing surfaces of cylinders.

[00:07:06] Speaker 00:
And these cylinders are empty.

[00:07:07] Speaker 00:
There's no contents in the cylinders.

[00:07:09] Speaker 00:
There are various types of

[00:07:11] Speaker 00:
used for other things.

[00:07:12] Speaker 00:
And they're sanitizing them by passing them through plasma, not through microwave.

[00:07:15] Speaker 00:
The microwave radiation is being used to generate the plasma.

[00:07:18] Speaker 00:
But that is a distinction between the claims in the ARC-1 with Berger, but also with Weffer's there.

[00:07:24] Speaker 02:
That simply means that Berger's not a 102 reference.

[00:07:27] Speaker 02:
But in terms of being combinable with Weffer's, or maybe Weffer's since he's from Munich, combinability is a different story.

[00:07:40] Speaker 02:
It's not an anticipated story.

[00:07:42] Speaker 00:
That's correct.

[00:07:43] Speaker 00:
Combinability is a different story.

[00:07:45] Speaker 00:
And there's no substantial evidence of a coherent rationale to combine these references, as you have Weffers teaching this transportation of these organic materials in a tray where they're in an even distribution.

[00:07:57] Speaker 00:
And the concern there is microwave radiation coming into contact with the organic materials.

[00:08:04] Speaker 00:
In Berger, you have a completely different apparatus

[00:08:07] Speaker 00:
where you're sanitizing the surface of a cylinder.

[00:08:09] Speaker 00:
You're not trying to address the contents therein, and you're rotating that cylinder so that it passes through the plasma zone.

[00:08:17] Speaker 00:
If you look at the figures from Berger patent, you'll see these little dots that indicate the plasma, and that's the plasma zone.

[00:08:25] Speaker 00:
So it's important in Berger to rotate the cylinder so that the entire surface passes through the plasma zone.

[00:08:32] Speaker 00:
You don't have that same motivation when you go back to apply it

[00:08:36] Speaker 00:
to weffers because weffers is concerned with providing consistent radiation to the surfaces, excuse me, not to the surfaces, but to the organic material being passed through.

[00:08:46] Speaker 03:
So if you have a pile of blueberries inside of the cylinder and you're zapping it with radiation, aren't there going to be some of the blueberries at the bottom of that

[00:08:58] Speaker 03:
stack of blueberries that aren't really getting the same amount of radiation than the ones that are exposed on the very top of that pile?

[00:09:07] Speaker 00:
Yes, and I think that's that's part of the reason that Weffer's is concerned with providing an even distribution and a particular

[00:09:14] Speaker 00:
thickness, they specify 60 millimeters.

[00:09:17] Speaker 03:
And so the notion that you get from Berger is the idea of, well, let's expose all the surfaces of the container so that they can get treated, and that possibly could lend itself to weffers, because now you're also likewise trying to expose all the surfaces of all the blueberries inside the pile of blueberries.

[00:09:39] Speaker 00:
And I think the separation that I would draw that distinction is that

[00:09:44] Speaker 00:
Berger is concerned with passing the surface of the cylinder through the plasma zone so that, yes, the entire surface can be subjected to the plasma.

[00:09:53] Speaker 00:
But it's not specific about the contents.

[00:09:56] Speaker 00:
And once you add in the rotation, now you're modifying how the contents are being distributed within.

[00:10:03] Speaker 03:
Is it inherent that anything that rotates is going to cause the material inside the rotating container to tumble?

[00:10:12] Speaker 00:
No, it is not.

[00:10:13] Speaker 00:
And that was established first, it was first raised by the examiner when they issued their section 112 rejection, saying it's not clear that there would be tumbling of the materials based on just rotation.

[00:10:28] Speaker 00:
And so to overcome that, we provided a response, or the applicant provided a response detailing out the corresponding structure, which neither of the references teach, the divider walls, among other aspects that cause the rotation.

[00:10:41] Speaker 00:
and then discussed some of the other parameters that are shown in the patent specification to promote tumbling.

[00:10:47] Speaker 00:
After providing that, the examiner withdrew that section 112 rejection, but has since now, we have this line of argument that the rotation will result in tumbling.

[00:10:59] Speaker 00:
But this gets back to my second point, that there's not substantial evidence of coherent rationale for modifying weffers in light of Berger, in that the PTAB did not provide a rationale.

[00:11:10] Speaker 00:
for that modification.

[00:11:12] Speaker 00:
They didn't discuss the combination of the references.

[00:11:14] Speaker 00:
They said that applicant had not proper, had attacked the references individually and not in their combination.

[00:11:20] Speaker 00:
But they did not provide any type of rationale for why the references, how the references could be combined and why one skilled in the art would be motivated to do so.

[00:11:29] Speaker 00:
And that is in, that's contrary to the court's recent decisions in personal web tech versus Apple and in in Ray Voss.

[00:11:37] Speaker 00:
where it was specifically held that the PTAP has an obligation to provide a reasoned argument and delineation of how they came to their conclusions, particularly with respect to a motivation, so that later appeal can be decided properly based on the evidence in the record and the court's motivation, or the PTAP's motivation.

[00:11:58] Speaker 00:
With that, I'll reserve the rest of my time for rebuttal unless there's any additional questions.

[00:12:02] Speaker 02:
We will save that for you, Mr. Kennedy and Ms.

[00:12:04] Speaker 02:
Kelly.

[00:12:05] Speaker 02:
Thank you.

[00:12:13] Speaker 04:
Good morning, Your Honors.

[00:12:14] Speaker 04:
May it please the Court?

[00:12:17] Speaker 04:
The Board in this case correctly found that the claimed methods and apparatus would have been obvious in view of weffers and burgers.

[00:12:26] Speaker 04:
I'd like to begin, rather than going through the private fascia case, by addressing some of the issues raised by this Court.

[00:12:35] Speaker 04:
First of all, as to the divider walls.

[00:12:38] Speaker 04:
The divider walls are not part of the rotation means.

[00:12:43] Speaker 04:
First of all, the divider walls have nothing to do with rotation.

[00:12:47] Speaker 04:
Secondly, they're not recited in anywhere in the applicant's claims.

[00:12:53] Speaker 04:
And the rotation means are not defined in the specifications, including the divider walls.

[00:12:59] Speaker 04:
In fact, if you look at the specification at A734, paragraph 33, which is the paragraph where appellates set forth what is the rotation means,

[00:13:12] Speaker 04:
there's no mention of tumbling or the divider walls.

[00:13:17] Speaker 04:
The only time, there are two times where tumbling is mentioned, one with respect to divider walls, but it doesn't indicate that divider walls are necessary for tumbling.

[00:13:28] Speaker 04:
In fact, it says divider walls promote tumbling.

[00:13:31] Speaker 03:
What page are you on?

[00:13:34] Speaker 04:
I'm sorry, I didn't give your honors enough time to go to that page.

[00:13:38] Speaker 04:
So we're looking at the patent application, and we're looking at A734,

[00:13:42] Speaker 03:
Okay, so here it does talk about how the divider walls promote rotation.

[00:13:48] Speaker 04:
Okay, so if you look at A734, paragraph 33, that's where the rotation means are set forth.

[00:13:54] Speaker 04:
There's nothing about tumbling or the divider walls.

[00:13:57] Speaker 03:
What's the page where the tumbling discussion is with relation to the divider walls?

[00:14:05] Speaker 04:
Okay, so now if we look at the very next page, A735, paragraphs 35 and 36 describe

[00:14:13] Speaker 04:
what the container looks like.

[00:14:15] Speaker 04:
The divider walls are discussed in paragraph 35.

[00:14:19] Speaker 04:
And in there, they say the divider walls are present, you know, may be present or are present in the container and that this is to promote tumbling.

[00:14:33] Speaker 04:
So, two things about that.

[00:14:36] Speaker 04:
It's part of the container.

[00:14:38] Speaker 04:
It's in their specification.

[00:14:39] Speaker 04:
It's not part of the rotation means.

[00:14:41] Speaker 04:
And secondly, it doesn't say that they're necessary for tumbling.

[00:14:46] Speaker 04:
It just says that they promote tumbling.

[00:14:48] Speaker 04:
Tumbling is also that word tumbling and any variations of it only appear one place elsewhere in the specification that's paragraph.

[00:14:58] Speaker 02:
Maybe I'm missing the point of what you're saying.

[00:15:00] Speaker 02:
The claims recite tumbling.

[00:15:03] Speaker 02:
And it sounds like you're disparaging what the specification discloses about tumbling.

[00:15:10] Speaker 02:
I'm sorry, I wasn't... The question is whether the combination of weffers with burger provides the tumbling.

[00:15:25] Speaker 04:
I believe that it does.

[00:15:26] Speaker 04:
I was trying to respond to Judge Raina's initial question about whether divider walls were required.

[00:15:31] Speaker 04:
And what we're saying is divider walls, as disclosed in the specification, are not required because they're not part of the rotation means and they're also not required

[00:15:41] Speaker 04:
as to tumbling, because they only promote tumbling, they're not absolutely necessary to tumbling.

[00:15:47] Speaker 04:
And getting back to Judge Chen's rationale about the vegetable tosser, I'm not familiar with that particular invention.

[00:15:57] Speaker 04:
But in my mind, it's like the bingo balls in a basket, you know, with all the numbers and letters.

[00:16:04] Speaker 04:
And when you rotate that basket, it doesn't have any divider walls.

[00:16:06] Speaker 04:
But yet, the balls all bounce around inside that container.

[00:16:09] Speaker 01:
Is this what the board said about the divider walls?

[00:16:11] Speaker 04:
The board did not comment about the divider walls because the divider walls were not raised in the opening brief to the board.

[00:16:23] Speaker 01:
In fact... This concept of tumbling then, and you have a figure in the pad that's got divider walls.

[00:16:31] Speaker 01:
You've got statements in the written description that talk about divider walls with respect to tumbling.

[00:16:38] Speaker 01:
I mean, isn't that fair game?

[00:16:40] Speaker 01:
I mean, this is a live issue here in the park.

[00:16:43] Speaker 01:
Why does the board not allow any type of discussion on this particular issue?

[00:16:48] Speaker 01:
I mean, you're splitting hairs here before us, and you're making arguments that, you know, may or may not be correct, but those are arguments that the board should have made, right?

[00:16:58] Speaker 04:
Plane construction was not an...

[00:17:06] Speaker 01:
What I'm saying is... Right.

[00:17:12] Speaker 01:
And part of that is the means for tumbling and that includes tumbling and they associate that with the divider wall and have a picture here and say this is what promotes it.

[00:17:25] Speaker 04:
I would say two things.

[00:17:26] Speaker 04:
One is the board didn't construe that claim element because it wasn't raised properly before the board.

[00:17:32] Speaker 04:
Secondly, even if it were,

[00:17:35] Speaker 04:
the specification teaches that divider walls are not required as part, they're not required, they're not part of the rotation means, and they're also not necessary for tumbling.

[00:17:46] Speaker 01:
Aren't they part of the structural similarity?

[00:17:49] Speaker 01:
And the divider walls, and they were discussed in the reply brief in response to the examiner's answer about structural similarity.

[00:17:59] Speaker 04:
Well, the appellants introduced this so as to tumble limitation.

[00:18:05] Speaker 01:
They introduced that... I'm saying that just as a point of... This was before the examiner, and the board did not follow up on it.

[00:18:17] Speaker 04:
I disagree with that interpretation of what happened here at the prosecution history, if I might go through how these things occurred.

[00:18:27] Speaker 04:
The so as to tumble limitation was entered just before the final rejection.

[00:18:33] Speaker 04:
And that was an attempt to distinguish between Weathers and Berger.

[00:18:38] Speaker 04:
And so the examiner in the final office action went through three pages, A147 through A149, describing how the structures of these two devices were identical and how Berger's rotation means would cause tumbling.

[00:18:59] Speaker 04:
And then the examiner said,

[00:19:03] Speaker 04:
You know, the examiner went on later in that same office section to say, look, if you're going to rotate these containers, whatever's inside is going to tumble around in there.

[00:19:14] Speaker 04:
The examiner found that to be an inherent property of these devices, that, look, you have two things that are virtually identical.

[00:19:25] Speaker 04:
Berger's rotation means

[00:19:27] Speaker 04:
and the claimed rotation means.

[00:19:30] Speaker 01:
So did they find an inherency situation here?

[00:19:34] Speaker 04:
That's what the examiner did.

[00:19:36] Speaker 04:
And then this issue about the divider walls and any structural differences was not raised, even though counsel certainly should have been on notice when the examiner spent three pages of the final law section stating that Berger's rotation means were the same or identical or substantially identical

[00:19:58] Speaker 04:
two appellants and would have tumbling.

[00:20:00] Speaker 03:
Is that what the examiner said in the final office action?

[00:20:03] Speaker 03:
I mean the final office action quickly pointed to figure one of Berger, right?

[00:20:09] Speaker 03:
To say this is a means for rotating when it tumbles.

[00:20:12] Speaker 04:
No, it did more than that.

[00:20:14] Speaker 03:
And then later it said anything that rotates is going to cause tumbling inside of the objects inside because that would be inherent.

[00:20:24] Speaker 03:
Is there more to add on the tumbling question besides those two points?

[00:20:32] Speaker 04:
I agree 98% with what you've said, but I think that any person reading it, if you go on for three pages and say these structures are identical and Berger is going to... Which structures are these structures?

[00:20:45] Speaker 04:
Berger, this structure is discussed at pages 147 through 149.

[00:20:52] Speaker 04:
the examiner goes through and says how there's identity between weffers and burgers and um... but the means for rotating in burger is structurally identical to the disclosed structure he doesn't use those exact words nor is he required to yes he doesn't use those exact words but he does state that uh... she rather the examiner states that

[00:21:22] Speaker 04:
If you look at 149, the examiner doesn't say, oh, these are structurally identical, but it points to the means for rotating disclosed by the applicant and says, you know, it says burgers, you know, that it points to where burgers discloses the same thing.

[00:21:44] Speaker 03:
And then it says that... I mean, am I right to say the only time the examiner brings up the word tumble in 147 to 149 is at the bottom of 148, in reference to Figure 1 of Berger?

[00:21:58] Speaker 04:
He does it also, she does it also at 149, but it is in reference to Figure 1.

[00:22:03] Speaker 03:
It says tumble on 149?

[00:22:05] Speaker 04:
Yes.

[00:22:08] Speaker 04:
The examiner discusses tumbling,

[00:22:12] Speaker 04:
Also, through the bottom half of page 149, but I think your point is really about, didn't the examiner just point to figure one?

[00:22:20] Speaker 04:
And if I'm wrong, please correct me.

[00:22:22] Speaker 04:
And I believe that the reason the examiner pointed to figure one of Berger is because figure one of Berger shows how very similar Berger is to the claimed invention and to the prior art.

[00:22:38] Speaker 04:
You get to see the whole invention.

[00:22:40] Speaker 04:
Just like the claim invention, you have the input end, you've got a conveyor system, you've got a vacuum, you've got a microwave, you've got an output system.

[00:22:48] Speaker 01:
Does Berger, the containers, they roll down by gravity?

[00:22:54] Speaker 04:
Berger actually, I'm glad you raised that point, Berger actually discloses five embodiments for rotating the containers.

[00:23:01] Speaker 01:
I'll let you get there, but show me where the, in the pages you're talking about, where the examiner says, inherently, uses the word, inherently.

[00:23:13] Speaker 04:
The examiner at page... I don't think he does.

[00:23:22] Speaker 04:
The examiner does, at page 161.

[00:23:25] Speaker 02:
The board says neither the rejection of issue nor our decision.

[00:23:28] Speaker 04:
In the final office section, the examiner.

[00:23:30] Speaker 02:
I'm sorry.

[00:23:31] Speaker 02:
Please don't talk through the comments from the court.

[00:23:34] Speaker 02:
Neither the rejection of issue nor our decision rely on the doctrine of inherency.

[00:23:38] Speaker 02:
That's what the board said.

[00:23:42] Speaker 04:
Yes, Your Honor.

[00:23:43] Speaker 04:
And the examiner, I don't think there's really any dispute that the examiner, if you look at H.A.

[00:23:53] Speaker 04:
161 that the examiner found that entumbling was inherent.

[00:24:00] Speaker 04:
That was the place where Judge Chen was citing to, the examiner said, rotating inside of a... I don't see it.

[00:24:09] Speaker 01:
I think the board is actually finding on it.

[00:24:13] Speaker 01:
We can go on.

[00:24:14] Speaker 04:
Well, okay.

[00:24:15] Speaker 04:
Those are two separate issues.

[00:24:17] Speaker 04:
Judge Chen is aware of that.

[00:24:20] Speaker 04:
where the examiner cites inherency on page 161.

[00:24:24] Speaker 04:
Great.

[00:24:26] Speaker 04:
So the examiner found that this was inherent.

[00:24:28] Speaker 04:
The board issued a decision, which is ambiguous, where the board uses the word inherency and appears to be adopting the examiner's reasoning about the structural identity and the inherency.

[00:24:42] Speaker 04:
And then the board issues a final decision that says, we didn't mean inherency.

[00:24:49] Speaker 04:
What we were saying is that once you put, what we were saying is that once you put Berger's rotation means into Weffer's apparatus, that it would be a common sense modification obvious to anybody who's operated a clothes dryer that you would want to tumble.

[00:25:12] Speaker 04:
And I think the board under either theory, under either theory,

[00:25:18] Speaker 04:
These claims are obvious.

[00:25:20] Speaker 03:
Would you say that's a new ground of rejection?

[00:25:22] Speaker 03:
Just hypothetically, if the examiner said, I think it's just inherent in any rotation that you're going to get tumbling of any objects inside the rotating container and then the board

[00:25:38] Speaker 03:
comes from behind the curtain and says anybody that thinks I the board and talking about Inherency is wrong because what I'm really trying to say is it'd be obvious to cause tumbling with a rotation means I need to rotate something sufficiently so that you actually get a tumbling action inside of the rotating container.

[00:26:02] Speaker 03:
Do you think that's a

[00:26:05] Speaker 04:
I think there are two possible interpretations, at least, of the board's initial decision and then what it did on follow-up.

[00:26:13] Speaker 04:
One is that the board wasn't clear about defining, you know, all these little sub-issues, and then they clarified it in honorary hearing.

[00:26:26] Speaker 04:
Another, and in all candor, it could also be fairly read to say that the board

[00:26:34] Speaker 04:
altered its analysis enough that it was a new ground of rejection.

[00:26:38] Speaker 04:
But I would say that would be harmless error because the board went on in its decision on rehearing and considered those very arguments that appellant made.

[00:26:51] Speaker 04:
And I also think it's really somewhat ludicrous to say that

[00:27:02] Speaker 04:
An appellant arguing against a obviousness rejection wouldn't have had fair notice that they needed to distinguish their claims from the prior art based on structure.

[00:27:16] Speaker 04:
They've identified no structure anywhere that was necessary for tumbling, according to their specification, and then in argument, no structure in the prior art that would prohibit tumbling.

[00:27:30] Speaker 02:
Thank you, Ms.

[00:27:31] Speaker 02:
Kelly.

[00:27:32] Speaker 02:
Thank you.

[00:27:34] Speaker 02:
You have your argument.

[00:27:36] Speaker 00:
Thank you, Your Honor.

[00:27:37] Speaker 02:
Three plus minutes for a bottle if you need it.

[00:27:40] Speaker 00:
Thank you.

[00:27:40] Speaker 00:
It'll just be a brief moment here.

[00:27:42] Speaker 00:
I want to point out a couple things.

[00:27:44] Speaker 00:
First, there is defined means for rotation so as to tumble that applicants have provided.

[00:27:53] Speaker 00:
They provided it in the appellate record at the PTAB.

[00:27:58] Speaker 00:
where they had an obligation to set forth the means plus function limitations in the corresponding structures invoking those.

[00:28:05] Speaker 00:
Specifically at page 96 of the appendix, when it's defining the means plus function limitation for claim element F and claim one,

[00:28:23] Speaker 00:
You can see here, toward the middle of the page, it says, longitudinally extending divider walls 146.

[00:28:29] Speaker 00:
Divide the interior space into four segments.

[00:28:31] Speaker 03:
This is your board briefing?

[00:28:34] Speaker 00:
Yes.

[00:28:34] Speaker 03:
But in the end, yes, because you desire the dividing walls to be part of the means for rotation, and that's what you've advocated for.

[00:28:44] Speaker 03:
In the end, what it comes down to is what you actually disclose in your spec as the means for rotation.

[00:28:51] Speaker 03:
and it's your duty to clearly identify what are the elements that are part of the structure for the means of rotation.

[00:29:01] Speaker 03:
So just because you say you want the divider walls doesn't necessarily mean that you get the divider walls.

[00:29:07] Speaker 03:
It depends really objectively on what your specification actually discloses.

[00:29:13] Speaker 00:
This is, that's correct your honor.

[00:29:14] Speaker 00:
In paragraph 39 of the specification describes the divider walls for the promoting of tumbling and in

[00:29:21] Speaker 00:
the briefing before the PTAB where we defined the corresponding structure for that means plus function limitation, that was the portion that was described there.

[00:29:29] Speaker 00:
The other point that I wanted to raise.

[00:29:31] Speaker 01:
Are these arguments you're raising in the reply brief?

[00:29:36] Speaker 00:
There's an issue there where they were first raised.

[00:29:38] Speaker 00:
I mean, I'm talking about the opening appeal brief before the PTAB there with the definition of the means plus function language.

[00:29:46] Speaker 00:
Also, there was description that the structure was not the same and regarding the motivation.

[00:29:50] Speaker 00:
It is true that the PTAB said that they were not going to consider pages two through four of our reply brief, saying that they were not responsive to the office's, the examiner's answer.

[00:30:04] Speaker 00:
However, the examiner's answer characterized the structures as being very similar.

[00:30:10] Speaker 00:
And so it was necessary to rebut that.

[00:30:12] Speaker 00:
Or were inherent, right?

[00:30:14] Speaker 00:
I mean, arguing today that they were inherent.

[00:30:17] Speaker 00:
The office did not.

[00:30:19] Speaker 00:
make the representation that they were inherent before the PTAB.

[00:30:23] Speaker 01:
And in fact, if you look at... Let's assume that they did, and after hearing today's argument and looking at this, then shouldn't you have been allowed to respond to that?

[00:30:37] Speaker 00:
Yes, because that would have been a new ground of rejection, as inherency was not part of the prior rejections in the case.

[00:30:44] Speaker 00:
And if I could point you to Appendix 146... But where did the inherency first come up in your view?

[00:30:49] Speaker 00:
in my view, it was during the briefing here maybe or oral argument.

[00:30:55] Speaker 03:
I thought it came up at A161 in the examiner's final office action in response to your amendment to the claims after the earlier office action to include the tumbling notion in the functional limitation for the means plus function limitation and then in response

[00:31:13] Speaker 03:
the examiner in final office action of A148 pointed to figure one of the burger, and then at A161 made it clear that any of these rotation means it would be inherent that they would cause objects inside said container to tumble.

[00:31:32] Speaker 00:
Is that fair to say?

[00:31:33] Speaker 00:
I think I could parse it a little bit.

[00:31:37] Speaker 03:
Where was I wrong with that?

[00:31:38] Speaker 03:
On A161?

[00:31:40] Speaker 00:
The examiner said it's...

[00:31:43] Speaker 00:
It said that it's inherent to tumble but did not invoke an inherency rejection walking through the elements of inherency.

[00:31:48] Speaker 00:
Also, on appendix page 146, where the examiner is providing the office action, it says the tumbling function is clearly depending on the rotational speed.

[00:31:59] Speaker 00:
The organic material may not be tumbling due to the centrifugal force.

[00:32:04] Speaker 00:
So we have the examiner saying that tumbling may not occur.

[00:32:07] Speaker 00:
It's dependent on certain elements.

[00:32:10] Speaker 00:
And then we have them saying that there's inherent, but they didn't walk through an inherency rejection, specifically stating that those elements are all present in an inherency fashion.

[00:32:17] Speaker 00:
That's how I would parse it.

[00:32:18] Speaker 00:
But you are correct that they said that.

[00:32:20] Speaker 01:
So on centrifugal force, there's been times, and this is just my own layman experience, where I see something roll in the contents, and they're just level.

[00:32:29] Speaker 01:
They stay level, and they're not moving.

[00:32:31] Speaker 01:
Or I would imagine our dryer, if it didn't have those dividers in it, then perhaps some of the clothes would just stay at the bottom, and this thing's going around.

[00:32:43] Speaker 01:
Is that the view you were expressing?

[00:32:46] Speaker 00:
Yes.

[00:32:46] Speaker 00:
Thank you.

[00:32:47] Speaker 00:
I see my time has come to an end, so I'll step down unless there's further questions for me.

[00:32:51] Speaker 02:
Thank you, Council.

[00:32:52] Speaker 02:
We'll take a case for any advice and information.

[00:32:55] Speaker 02:
Please put these out there.

[00:32:56] Speaker 00:
Thank you, Your Honor.

[00:32:59] Speaker 01:
All rise.