[00:01:03] Speaker 03: Thank you. [00:01:09] Speaker 03: OK, the next argued case is number 171697, and we're at Janke. [00:01:15] Speaker 03: Mr. Janke, when you're ready. [00:01:24] Speaker 01: May it please the court, my name is Garth Janke. [00:01:28] Speaker 01: I'm only here because I don't think [00:01:32] Speaker 01: claimed method is the same as the method that was cited against it within the meaning of section 102. [00:01:41] Speaker 01: I think. [00:01:45] Speaker 01: Well, it's 103, isn't it? [00:01:47] Speaker 01: And there were two differences. [00:01:49] Speaker 01: Good question. [00:01:50] Speaker 01: It's a 103 rejection. [00:01:52] Speaker 01: But essentially, it was couched or framed as the claim was anticipated by an obvious method. [00:02:02] Speaker 01: They're saying it's the same. [00:02:03] Speaker 01: They're saying we take this prior art method and we get your claim. [00:02:09] Speaker 01: So I think we analyze that under the reasoning of anticipation, even though it's an obviousness rejection. [00:02:18] Speaker 01: That's how I took it. [00:02:22] Speaker 01: So if they're not the same, then there's still a difference to be considered under 103 that wasn't considered. [00:02:28] Speaker 01: So that's my point. [00:02:30] Speaker 01: I think there is a difference that wasn't considered. [00:02:33] Speaker 01: I think the claim positively requires that the two conditions that are recited in the claim are sufficient to trigger the claimed action. [00:02:45] Speaker 01: And I don't think there's any dispute that the prior art doesn't satisfy that requirement. [00:02:51] Speaker 01: So I don't think it's the same under the terms of Section 102. [00:02:59] Speaker 01: And that's really all I have to say. [00:03:00] Speaker 01: I have submitted a drawing to try to show visually the difference between the two methods. [00:03:10] Speaker 01: I don't know if it makes any sense to you. [00:03:14] Speaker 01: So I don't know if it's worth trying to talk about or not. [00:03:19] Speaker 01: Basically, the claim method has to be found in the prior art. [00:03:26] Speaker 01: And the drawing shows that it isn't. [00:03:29] Speaker 01: I think. [00:03:30] Speaker 03: Well, the board found that Cullis teaches everything that the claim requires, except whether the two queries are from the same user, and that Chowdhury fills in that gap. [00:03:46] Speaker 01: Yeah. [00:03:46] Speaker 01: The board explained why the, well, first of all, the two references, it come up with a method. [00:03:54] Speaker 01: And there's no dispute that that method [00:03:57] Speaker 01: has a third condition. [00:03:58] Speaker 01: So the claim method, the logic of the claim, is that the modified type of search will be performed if two conditions are satisfied. [00:04:09] Speaker 01: And the prior art has a third condition that imposes on top of that, which can reverse the result. [00:04:17] Speaker 01: So it's a potentially, at least, conflicting method. [00:04:21] Speaker 01: And so I say if it's conflicting, it's not the same. [00:04:29] Speaker 03: Let's hear from the office, and we'll see what response you may wish to make. [00:04:37] Speaker 03: Ms. [00:04:37] Speaker 03: Kelly. [00:04:39] Speaker 00: Thank you, Your Honor. [00:04:39] Speaker 00: May I please the court? [00:04:42] Speaker 00: This is a case about what the prior art teaches. [00:04:48] Speaker 00: And in this case, the parties agree on what the claim construction is. [00:04:54] Speaker 00: Mr. Jenke does not dispute that the [00:04:57] Speaker 00: Claim one is open to additional steps. [00:05:04] Speaker 00: The USPTO has not, as stated in his brief, read out the end of sole limitation. [00:05:11] Speaker 00: Rather, the USPTO has said that Cullis teaches, the combination of Cullis and Chowdhury, teaches really two embodiments. [00:05:20] Speaker 00: One embodiment, where if the user confirmation step turns up a no, we don't go on to perform the ultimate search. [00:05:28] Speaker 00: The USPTO is not arguing that that embodiment somehow renders obvious the claim here. [00:05:36] Speaker 00: What the PTO is saying is that in the other embodiment, if we have the same users and the same objective, and we've performed those searches, and the user says yes, if all those conditions are met, we automatically perform that search. [00:05:52] Speaker 00: So in that embodiment of Cullis and Chowdhury, [00:05:58] Speaker 00: that Mr. Jenke does not dispute that there is that embodiment and that happens, that the claim is obvious that those steps are met, all those limitations are met. [00:06:09] Speaker 00: And that's all the board is saying here. [00:06:11] Speaker 02: Well, it seems to me that this is a little bit of a confusing area. [00:06:16] Speaker 02: If you had a chemical process patent, for example, and said in order to achieve the desired results, you have to perform steps A, B, and C, [00:06:26] Speaker 02: and someone discovered that step C was not necessary and filed a patent saying you can achieve the same result using just steps A and B, conceivably that could be patentable, right? [00:06:40] Speaker 00: Conceivably, yes. [00:06:45] Speaker 00: So if that sort of situation played out here, and I think that's what the examiner has acknowledged [00:06:53] Speaker 00: you know, one of the back and forth between Mr. Jenke and the examiner is that the USPTO wasn't talking about removing Step C. If that's an issue, if the court doesn't agree that this embodiment exists where user confirmation says yes and we immediately proceed, that the... Isn't this a situation in which the PTO is arguing that [00:07:19] Speaker 02: basically this third step that is user approval or whatever you want to call it, is not necessary to accomplish the result. [00:07:28] Speaker 02: That was just an additional thing that was added, and under a comprising claim, it doesn't deprive the original combination of being patentable. [00:07:46] Speaker 00: No, I don't think that's actually how the board examined it. [00:07:49] Speaker 00: But I would submit that it would be obvious to remove that step of user confirmation under this case's precedent concerning automation and just, you know, streamlining things. [00:08:09] Speaker 02: So what you're saying is that the board didn't disregard the removal of the third step. [00:08:14] Speaker 02: It just said that the removal of the third step would have been an obvious variant. [00:08:17] Speaker 00: No, the board said you don't have to remove that step. [00:08:22] Speaker 00: The board said that step is present, and that's fine. [00:08:26] Speaker 00: Comprising allows that step to be present. [00:08:29] Speaker 00: But in the case where Cullis and Chowdhury, where you have that step and the user says yes, and that embodiment, the ultimate search is immediately performed. [00:08:40] Speaker 00: And there's nothing about that claim that says that you can't have that third step there. [00:08:48] Speaker 00: that once the first two conditions are met, a third condition can't come in between the performance of the ultimate search. [00:08:59] Speaker 00: The board isn't saying that you can just delete that from the prior art, and the board didn't say you could just delete that limitation from the claims. [00:09:07] Speaker 00: They're just saying that it is taught as is. [00:09:10] Speaker 00: But I would submit to you that it [00:09:15] Speaker 00: under this court's precedent would have been obvious. [00:09:17] Speaker 02: You're saying it's not like my hypothetical about the chemical process, right? [00:09:22] Speaker 02: I'm sorry, Your Honor. [00:09:24] Speaker 02: You're saying it's not like my hypothetical about the three-step chemical process. [00:09:32] Speaker 00: I guess that I am saying that, because the board didn't find that it was OK to just remove that step. [00:09:41] Speaker 00: That's a different inquiry. [00:09:43] Speaker 00: And if this court doesn't believe that the board interpreted the prior art as disclosing this one of two embodiments that meets the claim, as everyone agrees on it, then the court should vacate and remand to the board to see whether it would have been obvious to remove that third step. [00:10:05] Speaker 00: I would submit, though, that that's probably not necessary here because [00:10:10] Speaker 00: That's the point of computers and this sort of technology is that we want to streamline things and make things easier for the user. [00:10:16] Speaker 00: And that if the examiner on the board had to reconsider and analyze this case under that sort of situation, that it would have been obvious to remove that third step from Cullis. [00:10:28] Speaker 00: Does that answer your question? [00:10:29] Speaker 02: I think I understand what you're saying. [00:10:34] Speaker 00: Well, I apologize if I wasn't more clear. [00:10:37] Speaker 00: Are there any other questions? [00:10:39] Speaker 03: Thank you very much. [00:10:46] Speaker 01: I think the word comprising allows for adding steps that won't interfere with what's already been claimed. [00:10:59] Speaker 01: I think if you try to add a step of not performing as the claim is saying it wants to, [00:11:05] Speaker 01: That isn't adding. [00:11:06] Speaker 01: I think that's subtracting, trying to take something away from the claim that distinguishes over the prior art. [00:11:11] Speaker 01: And I don't think open-ended patent claims allow for that. [00:11:16] Speaker 01: I would also point out that as far as whether it would have been obvious to remove that step from the prior art, actually the examiner had agreed right away that it wouldn't have been. [00:11:28] Speaker 01: So there is some evidence, at least, in the record that that wasn't obvious to do that. [00:11:32] Speaker 01: And that's not what the board decided. [00:11:35] Speaker 01: It never got to that issue. [00:11:36] Speaker 01: It never got to claim construction. [00:11:38] Speaker 01: It just jumped to a conclusion that, well, this does what you're claiming some of the time, and that's good enough, and we're done. [00:11:47] Speaker 01: And I think the claim positively requires that there's just those two conditions, and no more are allowed. [00:11:56] Speaker 01: And that's a question. [00:11:57] Speaker 01: I mean, maybe I'm wrong about that. [00:12:01] Speaker 02: position was rejected by the board, right? [00:12:03] Speaker 01: Well, I understand it. [00:12:04] Speaker 01: Well, actually, no. [00:12:05] Speaker 01: I'm sorry. [00:12:07] Speaker 01: My opinion is that it wasn't rejected. [00:12:09] Speaker 01: My opinion is that it wasn't considered. [00:12:12] Speaker 01: I don't think the board listened to anything I said. [00:12:15] Speaker 01: I don't think the board paid any attention to the argument I made or considered whether the claim did require something more. [00:12:21] Speaker 01: It just said, well, it's doing this, and that's good enough. [00:12:24] Speaker 01: And it quit. [00:12:25] Speaker 01: So I don't know if the board rejected it. [00:12:27] Speaker 01: But if it did, I think it made a mistake. [00:12:31] Speaker 01: I think the claim, the if-so language in the claim, it's conditional logic. [00:12:38] Speaker 01: It's saying, if these things happen, then you do this. [00:12:42] Speaker 01: And to me, that implies, if it doesn't absolutely state, that there is no further condition that can come in and interrupt that. [00:12:53] Speaker 01: So I think that's a significant difference. [00:12:55] Speaker 01: And I would also point out that if it matters, [00:13:00] Speaker 01: The reason for having that wasn't to make it easier for the searcher or for the search engine. [00:13:09] Speaker 01: It's a whole different way of looking at the problem that I thought I came up with. [00:13:13] Speaker 01: And I explain that in my brief, and you might want to read it. [00:13:16] Speaker 01: I don't know if it's worth going into now, but anyway. [00:13:21] Speaker 03: Any more questions? [00:13:23] Speaker 01: Thank you very much. [00:13:24] Speaker 03: Thank you both. [00:13:25] Speaker 03: The case is taken under submission.