[00:00:13] Speaker 01:
The next target case is number 18-1253 in Ray Coleman.

[00:00:19] Speaker 01:
Mr. Alstadt.

[00:00:28] Speaker 04:
May I please the court.

[00:00:29] Speaker 04:
The case before us involves a machine that's used to cut down lines that are of a standard size to a narrower width.

[00:00:38] Speaker 04:
By a blind to 36 inches, you have a 34-inch wide window.

[00:00:42] Speaker 04:
You trim the edges an inch off of each side.

[00:00:47] Speaker 04:
Those claims for that blind cutting machine have been rejected based upon a citation to a published application in McGlinchey, which is titled, Method and Apparatus for Processing Sealant in an Insulating Glass Unit.

[00:01:03] Speaker 04:
Basically, an oven into which you put the window, heats it up,

[00:01:08] Speaker 04:
and then activates the sealant.

[00:01:15] Speaker 04:
The law says that the office in rejecting claims must rely on or cannot rely on patents that are unrelated to the technology before them, the non-analogous prior work.

[00:01:30] Speaker 04:
And for a reference to be an analogous reference,

[00:01:35] Speaker 04:
has to meet one of two standards, be in the same field.

[00:01:38] Speaker 04:
The office agrees this oven that's used to heat windows is not in the same field as a cutting machine.

[00:01:48] Speaker 04:
Or the second standard, the second test, is be reasonably pertinent to the problem that the inventors are trying to solve.

[00:01:58] Speaker 04:
And the case law goes on and say, well,

[00:02:00] Speaker 04:
we look at the specifications of the references to identify the problems that the inventors were trying to solve.

[00:02:09] Speaker 04:
And if we do that, we see that the present invention is concerned with errors caused by the sales associate in the store in measuring and calculating the dimensions of the blind to be cut.

[00:02:32] Speaker 04:
Improving the timing of getting the job done.

[00:02:36] Speaker 04:
Whereas if we look at the problem that McGlinchey's trying to solve, what he's trying to solve is to automatically vary the energy that's applied to the glass window based upon the optical properties of the glass.

[00:02:55] Speaker 00:
But what the prior art was attempting to solve

[00:03:01] Speaker 00:
isn't really the question.

[00:03:02] Speaker 00:
The question is, what is the current inventor trying to solve?

[00:03:08] Speaker 00:
And how would they look broadly at categories?

[00:03:13] Speaker 00:
They don't necessarily say, I'm only going to look at someone who is trying to solve my same problem.

[00:03:18] Speaker 00:
Otherwise, you would never find prior art to be relevant for purposes of an obviousness analysis where you've got to combine elements.

[00:03:28] Speaker 00:
There would always be something missing.

[00:03:30] Speaker 04:
Well, that's true.

[00:03:32] Speaker 04:
You're looking at the problem that the inventor is trying to solve in the claims under consideration.

[00:03:38] Speaker 04:
But the question that comes is, is this reference going to be reasonably come to his attention or something he might look at based upon what that product is doing or trying to do?

[00:03:50] Speaker 04:
And here we say, that's an oven.

[00:03:54] Speaker 04:
What they're trying to do is determine whether to turn on more or less heat lamps depending on

[00:04:00] Speaker 04:
the properties of the glass that's in the oven.

[00:04:03] Speaker 00:
But couldn't it also be that it's looking to machinery to determine, and the question is, how do you set parameters for this machine?

[00:04:15] Speaker 04:
If that were true, that it was just to set parameters, then you've got every machine that ever existed.

[00:04:24] Speaker 04:
And I don't think that's the right question.

[00:04:27] Speaker 04:
The question is, how do you set parameters in this type or similar machines?

[00:04:33] Speaker 04:
And it's just not related to the area.

[00:04:37] Speaker 04:
Someone determining how to build a saw, a cutting machine, is not going to look at a method, an apparatus for processing a glass insulating unit.

[00:04:52] Speaker 04:
So would you limit the field of art to what?

[00:04:56] Speaker 04:
The field of art would be to machines involved in cutting work pieces.

[00:05:07] Speaker 04:
And those are all the other references that they cited related to cutting work pieces.

[00:05:13] Speaker 00:
Okay, so you wouldn't limit it to cutting blinds, window blinds.

[00:05:17] Speaker 04:
No.

[00:05:18] Speaker 04:
No, and in fact, I think the Dick reference is cutting a linear board into

[00:05:26] Speaker 04:
pieces of the same size.

[00:05:29] Speaker 00:
But there is... Before the examiner, was there ever any discussion of who one of skilled in the art would be?

[00:05:42] Speaker 00:
Because it seems like the board addressed that for the first time.

[00:05:46] Speaker 04:
The examiner didn't make any finding, and I recall, on who one skilled in the art would be.

[00:05:51] Speaker 04:
What the examiner did is he looked at

[00:05:54] Speaker 04:
He found McWinsey somehow and said, this is what it teaches.

[00:05:57] Speaker 04:
He didn't go through the process of qualifying it as appropriate art.

[00:06:03] Speaker 04:
And when we challenged him and said, why is this concerned with the same field?

[00:06:12] Speaker 04:
Why would someone in the art designing a cutting machine look at an oven?

[00:06:19] Speaker 04:
He says, well, the teaching about having a barcode

[00:06:23] Speaker 04:
Well, you don't look at the teaching to the reference until you qualify as prior art.

[00:06:28] Speaker 04:
And he didn't do that.

[00:06:30] Speaker 04:
And the board did not do that.

[00:06:34] Speaker 04:
They've not offered any explanation as to why someone who is trying to build a machine for cutting blinds is going to look at a machine that's a method for- Well, the problem your client was trying to solve was to avoid input errors, right?

[00:06:50] Speaker 03:
To avoid inputting incorrect dimensions.

[00:06:55] Speaker 03:
That's right.

[00:06:56] Speaker 03:
That's right.

[00:06:59] Speaker 03:
And so if other inventors have figured out a way to avoid input errors in non-related fields of art, wouldn't those other inventors' way of going about avoiding input errors be relevant?

[00:07:18] Speaker 04:
Well, I think it has to be a similar type of errors.

[00:07:23] Speaker 04:
If someone's involved in some totally... An input error that affects the end product.

[00:07:30] Speaker 03:
Well, we're talking about the... An input type error that affects what you're trying to do.

[00:07:35] Speaker 03:
You're trying to manufacture something.

[00:07:37] Speaker 03:
Well, you're trying to... And you want to avoid input errors in the manufacturing process.

[00:07:43] Speaker 03:
dealing with dimensional, primarily dimensional features, length, width, size, ingredient.

[00:07:52] Speaker 03:
These are typical type of limited number of things that happen in the manufacturing world.

[00:08:00] Speaker 03:
They're trying to avoid errors in the inputs.

[00:08:02] Speaker 03:
That seemed to me that was really what was going on here.

[00:08:05] Speaker 04:
Yeah, I agree with you, except we're not into the chemical reaction or that.

[00:08:10] Speaker 03:
Well, I understand that.

[00:08:11] Speaker 03:
But I mean, in terms of the windows, they're trying to, depending on what it is they're trying to create, they're putting in different dimensions, if you will, to get a result.

[00:08:24] Speaker 03:
Well, they're not dimensions.

[00:08:27] Speaker 03:
My dimensions, I mean parameters for the construction of the product.

[00:08:31] Speaker 04:
Yeah, they're concerned about heating the sealant so you get it soft enough or activate the catalyst enough so that it's going to react and harden.

[00:08:40] Speaker 03:
It's instructions you're giving to the machine.

[00:08:43] Speaker 03:
Right.

[00:08:44] Speaker 03:
And that's based on it.

[00:08:46] Speaker 03:
And you want to avoid the input errors.

[00:08:51] Speaker 04:
You want to make sure that you have enough energy going in.

[00:08:57] Speaker 03:
For different types of windows, you have specific different parameters you use.

[00:09:01] Speaker 03:
You dial it at one for one, you dial it for other.

[00:09:03] Speaker 03:
And their barcode had all this information in it.

[00:09:08] Speaker 03:
The parameters were there.

[00:09:12] Speaker 04:
You're into the reference.

[00:09:13] Speaker 04:
You don't look at what the teaching of the reference is until you make a showing.

[00:09:19] Speaker 03:
I'm just talking about in terms of the problem.

[00:09:21] Speaker 03:
Maybe I'm wrong, but I saw this as your inventor was trying to avoid input errors.

[00:09:28] Speaker 03:
The question was, is there some relevant prior art that does the same thing?

[00:09:36] Speaker 04:
That would logically be commanded to this inventor's attention.

[00:09:42] Speaker 04:
If you're looking at it.

[00:09:43] Speaker 03:
And the fact that it's out of the actual field of endeavor is irrelevant.

[00:09:50] Speaker 03:
Because that's the first part of the test, is whether something is in the field of art.

[00:09:54] Speaker 03:
If it's in the field of art, it doesn't matter what it's doing.

[00:09:58] Speaker 03:
That's true.

[00:09:59] Speaker 03:
It's the whole nine yards.

[00:10:02] Speaker 04:
It's analogous for our art.

[00:10:04] Speaker 00:
Right.

[00:10:04] Speaker 00:
I think your point is that you could abstract if you keep going sort of like 101.

[00:10:11] Speaker 00:
You can make anything abstract if you extrapolate it up far away.

[00:10:16] Speaker 00:
So if input errors is the analysis, then everything essentially in the world is open.

[00:10:22] Speaker 04:
That's true.

[00:10:23] Speaker 04:
That's right.

[00:10:24] Speaker 04:
So we have an inventor here who's trying to invent a cutting machine.

[00:10:31] Speaker 04:
And if you looked at this reference years ago when you did searches by flipping through the

[00:10:39] Speaker 04:
the patents, and read the abstract, would he think it's relevant to what he's doing?

[00:10:44] Speaker 04:
No.

[00:10:45] Speaker 04:
Even if he got that far, if he read the title, Method and Apparatus for Processing.

[00:10:51] Speaker 03:
Our standard of review here is substantial evidence, isn't it?

[00:10:56] Speaker 03:
Substantial evidence.

[00:10:57] Speaker 03:
That is a fact question.

[00:11:00] Speaker 04:
Right.

[00:11:01] Speaker 04:
And the only evidence here is the references themselves.

[00:11:06] Speaker 04:
And I mean, the board

[00:11:08] Speaker 04:
The brief of the patent office pointed to the board's decision, but what evidence have they put in the record to show that a method and apparatus for processing a sealant and glass would have been reasonably thought about by someone designing a cutting machine?

[00:11:28] Speaker 04:
There's nothing in the record.

[00:11:30] Speaker 04:
All is this reference.

[00:11:33] Speaker 04:
And they have the burden to show that it's a proper reference.

[00:11:38] Speaker 01:
And they didn't meet them.

[00:11:39] Speaker 01:
So they drew a line.

[00:11:41] Speaker 01:
They allowed one claim, is that right?

[00:11:45] Speaker 04:
Yes.

[00:11:47] Speaker 01:
So a line was drawn between the claim that was allowed and those that were rejected.

[00:11:55] Speaker 01:
Is your position that the line was drawn in the wrong place or that no line should have been drawn in terms of the claims you repealed?

[00:12:05] Speaker 04:
We're saying that

[00:12:06] Speaker 04:
The McGlinchey reference was not analogous and is not a proper basis for rejecting these claims.

[00:12:14] Speaker 00:
What about the PTO's argument that even if you take McGlinchey out of the inquiry, that there is a fair argument and that there's evidence on the record to support the argument that

[00:12:33] Speaker 00:
those claims are obvious over Jabari standing alone.

[00:12:37] Speaker 04:
Well, they've said that Jabari does not teach the element of the claim, the memory, the last element of the claim.

[00:12:48] Speaker 04:
And now they're saying, well, it would be obvious.

[00:12:52] Speaker 04:
That's contrary to the position they've taken throughout the prosecution.

[00:12:56] Speaker 04:
And I think the examiner was right when he said,

[00:13:00] Speaker 04:
This is not a 102 rejection under Jabari because he doesn't teach all the elements of the claim.

[00:13:06] Speaker 00:
But they're saying it could be a 103 rejection under Jabari because things like barcodes were well known in the art at the time.

[00:13:14] Speaker 04:
Barcodes were known to the extent that they associated in a grocery store the barcode and the price of the product.

[00:13:24] Speaker 04:
Barcodes

[00:13:25] Speaker 04:
were not well known in terms of these type of machineries.

[00:13:30] Speaker 04:
I mean, Jabari itself has manual entry.

[00:13:33] Speaker 04:
The other references, Dick has manual entry of those information.

[00:13:38] Speaker 04:
None of them do that.

[00:13:40] Speaker 01:
But you're not claiming the use of the barcode.

[00:13:44] Speaker 04:
Isn't that right?

[00:13:46] Speaker 04:
The claim requires that there be a product identifier

[00:13:52] Speaker 04:
associated with the product that's not the dimension.

[00:13:56] Speaker 01:
Yes, however it's identified.

[00:13:59] Speaker 04:
Right.

[00:14:00] Speaker 04:
And that identifier is then linked to the dimension.

[00:14:04] Speaker 04:
And so you're then able to adjust the controller or adjust the stop to position it in the right place so the weight or saw cuts off the amount that should be cut off so that the

[00:14:21] Speaker 04:
Resolving blind fits the window.

[00:14:26] Speaker 01:
All right.

[00:14:27] Speaker 01:
Let's open the office.

[00:14:28] Speaker 01:
We'll save you rebuttal time.

[00:14:30] Speaker 04:
OK.

[00:14:30] Speaker 04:
Thank you.

[00:14:39] Speaker 01:
Ms.

[00:14:39] Speaker 01:
Selfing.

[00:14:40] Speaker 02:
Morning.

[00:14:41] Speaker 02:
May it please the court?

[00:14:45] Speaker 02:
It sounds to me like the court understands the arguments in the case.

[00:14:48] Speaker 02:
And I'm happy to answer any questions that

[00:14:51] Speaker 02:
the panel has.

[00:14:52] Speaker 00:
Let's start with the last point.

[00:14:55] Speaker 00:
I mean, you argued that it could be obvious over Jabari alone.

[00:15:02] Speaker 00:
And I understand one of the problems with that is whether there's a chennery problem, because the board didn't base its decision on that.

[00:15:12] Speaker 00:
And how do you get around that?

[00:15:14] Speaker 02:
Well, I think the facts and evidence here really show the point there, which is

[00:15:21] Speaker 02:
So for example, on claim 30, the examiner found that the lookup table was well known and the applicant didn't dispute that in front of the board.

[00:15:37] Speaker 02:
So the lookup table is really the fundamental, what's being used in the process of taking an indicator and converting it to a dimension.

[00:15:49] Speaker 02:
That's the only

[00:15:51] Speaker 02:
technology being used there.

[00:15:53] Speaker 02:
So Jabari has a memory.

[00:15:54] Speaker 02:
It's conceded by everyone that it would have been known to add a lookup table to that memory.

[00:16:03] Speaker 02:
And that sort of takes care of all of the necessary facts here.

[00:16:09] Speaker 02:
But also, we have the McGlinchey reference that shows the existence of taking a non-dimension and using that

[00:16:19] Speaker 02:
through a lookup table to find a dimension of a product.

[00:16:23] Speaker 00:
But you added that it would have been obvious over Jabari alone, I assume, in case we concluded that the McGlinchey reference was not an appropriate prior art reference.

[00:16:35] Speaker 02:
Sure.

[00:16:35] Speaker 02:
Right.

[00:16:35] Speaker 02:
I think either way is an appropriate way to go.

[00:16:38] Speaker 02:
I stand behind both of them.

[00:16:42] Speaker 00:
OK.

[00:16:42] Speaker 00:
I guess I'm trying to understand how you get past the chennery problem with Jabari alone.

[00:16:48] Speaker 00:
I mean, I could see if you said, even if you think McGlinchey's not a good reference, you should remand for the board because the board could consider Jabari alone.

[00:16:59] Speaker 02:
But I mean, I think the facts and evidence are what we're relying on here, that nobody's disputing that the lookup table is known and sort of generally known.

[00:17:18] Speaker 02:
There's no dispute that it is not shown in Jabari, but that it is still an obvious limitation based on claim 30.

[00:17:28] Speaker 02:
So once you have that, I think the facts and evidence are.

[00:17:35] Speaker 00:
We're not looking at a district court decision where we have flexibility to affirm based on anything in the record.

[00:17:42] Speaker 00:
We've got an APA stricture on us, and so that's what I'm

[00:17:47] Speaker 00:
questioning.

[00:17:48] Speaker 02:
Right, right.

[00:17:48] Speaker 02:
But all of the underlying facts here have been found.

[00:17:51] Speaker 02:
That's all I'm saying.

[00:17:52] Speaker 02:
It's that the board, it just hasn't even been challenged because the examiner found the fact that the lookup table was known in the art.

[00:18:04] Speaker 00:
So let's talk about McGlinchey because it is a little concerning that the examiner doesn't even define who one of skill in the art is.

[00:18:17] Speaker 00:
So he doesn't even say what the art is.

[00:18:19] Speaker 00:
He just goes out and finds something that seems to have this kind of an input.

[00:18:27] Speaker 00:
And when asked why that's relevant art, he says, because it has the input.

[00:18:34] Speaker 00:
I get that the board tried to save what the examiner did by backing up and saying, let's define one of skill in the art.

[00:18:42] Speaker 00:
But we have to start with what

[00:18:46] Speaker 00:
the rejection was based on, right?

[00:18:48] Speaker 02:
Right.

[00:18:48] Speaker 02:
And what the examiner did was find a reference that shows what's missing from Jabari.

[00:18:53] Speaker 02:
But it's like you were saying earlier that it sort of depends on what level of specificity you're looking at.

[00:19:02] Speaker 02:
And here, this claim is admitted to be everything in this blind cutting machine claim is in Jabari, including automatically positioning the stops,

[00:19:15] Speaker 02:
Based on?

[00:19:16] Speaker 02:
Except one limitation.

[00:19:17] Speaker 02:
Except this one limitation.

[00:19:19] Speaker 02:
And if that's not the problem that the inventor was trying to solve, then there's nothing left.

[00:19:24] Speaker 02:
Then all you have is something that's disclosed by Jabari.

[00:19:28] Speaker 02:
So you have to be looking at what is it that the inventor is trying to add to the prior art.

[00:19:37] Speaker 02:
And so what the inventor here is trying to add to the prior art is using a barcode instead of a dimension.

[00:19:43] Speaker 00:
It just seems like we're doing this backwards.

[00:19:46] Speaker 00:
You don't figure out what the relevant field is and then see if anything's in that field that teaches that.

[00:19:51] Speaker 00:
You're saying, let's go find what teaches it, and then let's define the field to cover whatever we found.

[00:19:57] Speaker 02:
Well, there are two different prongs to the test.

[00:19:59] Speaker 02:
So the first prong of the test is what you were saying before, which is, let's define the relevant field.

[00:20:04] Speaker 02:
And we are looking for references in that field.

[00:20:07] Speaker 02:
And if so, then that satisfies the first prong of the test.

[00:20:10] Speaker 02:
But if you don't satisfy the first prong of the test, there's a reason there's a second prong of the test.

[00:20:15] Speaker 00:
which is, well, other fields that this inventor might have looked to, and things like in the scientific... Right, but you have to define those fields before you say, I've found something, and now I define the other fields to cover what I found.

[00:20:31] Speaker 02:
Well, I think some of the sports cases elucidate that, right?

[00:20:35] Speaker 02:
So cases like the scientific plastic case, which says that a soda pop cat

[00:20:45] Speaker 02:
was relevant to what somebody would have looked to in the art of flash chromatography because it's solving that same problem.

[00:20:53] Speaker 02:
So it has to do with a sort of narrower view of what the problem being solved is, because obviously soda bottles are not in the field of flash chromatography.

[00:21:06] Speaker 02:
And it's a similar issue in the ICON case.

[00:21:10] Speaker 02:
The ICON case has the hinge.

[00:21:13] Speaker 02:
for a fold-up bed, a Murphy bed, being applied to the field of treadmills.

[00:21:21] Speaker 02:
So it's not that somebody working in treadmills also works in the folding bed industry.

[00:21:28] Speaker 00:
But you're still looking at hinges.

[00:21:30] Speaker 02:
You're looking at, right, the part of the claim that this separate reference is being used for.

[00:21:36] Speaker 02:
So in that case, the separate reference was being used just for a hinge and the rest of it was shown in the claim.

[00:21:42] Speaker 02:
And here,

[00:21:43] Speaker 02:
The rest of everything was shown in Jabari, everything from the claim was shown in Jabari, except the thing that's missing, which is how you... Avoid error.

[00:21:55] Speaker 03:
Right, how you avoid error by taking some... When you input, you're telling the machine to do something.

[00:22:02] Speaker 03:
That's right.

[00:22:03] Speaker 03:
And you can tell the machine incorrectly, and then you get a bad result.

[00:22:08] Speaker 02:
Right.

[00:22:08] Speaker 02:
And so instead, you can use a barcode scanner or some other.

[00:22:11] Speaker 03:
Well, that's what the combination says.

[00:22:15] Speaker 03:
But the inventor was saying, I've found a way in cutting blinds to avoid errors in the inputs.

[00:22:22] Speaker 03:
That's right.

[00:22:24] Speaker 03:
And so from your view and the board's view is, then that inventor would have been motivated to look around in other fields other than cutting Venetian blinds field to

[00:22:38] Speaker 03:
look for ways in which you avoid error in inputting into a machine.

[00:22:44] Speaker 02:
Right.

[00:22:44] Speaker 02:
And that's exactly what the test tells the board to look at.

[00:22:49] Speaker 03:
And so hypothetically, if the machine here had been a spaceship for taking people to the moon, and there'd been some way of having inputs made without mistake, that would have qualified as well.

[00:23:05] Speaker 03:
The field of art

[00:23:07] Speaker 03:
in which you find the reference is irrelevant?

[00:23:10] Speaker 02:
I think that's right, but certainly the cases.

[00:23:14] Speaker 03:
Well, that's what I'm trying to push to you, because some of the questions have suggested that there should be some relationship between the field of the invention and the field in which you find the prior art, although it doesn't have to be the same, which the same is the test for if you find the reference, then everything that's taught in the reference comes in, whether or not it was your problem or not.

[00:23:37] Speaker 02:
I mean, I think some of the cases could be read to say that the distance from the precise field of the inventor's invention is relevant.

[00:23:49] Speaker 02:
Those cases are all from before KSR, which explicitly says it can be from within the inventor's field or elsewhere.

[00:23:56] Speaker 03:
Elsewhere is just a vague term.

[00:24:01] Speaker 03:
What I'm trying to get at is, to me, the hypothetical of taking some

[00:24:06] Speaker 03:
field of art that's way away, and you ask, is that pertinent?

[00:24:10] Speaker 03:
And if you say no, and I'm sorry if it's aerospace that's too far away from Venetian bonds, then the question would be, are windows, the way of manufacturing windows, is windows too far away from Venetian bonds?

[00:24:29] Speaker 02:
Right, I think it's possible that you can get too far away, but I do think that the cases that talk about the soda bottle being used as prior art... Pretty far away from flat photography.

[00:24:43] Speaker 02:
Yes, and so I think the cases certainly do allow reaching pretty far away from the precise art that the inventor is looking to.

[00:24:52] Speaker 03:
And the reach here is not as far as a spaceship.

[00:24:54] Speaker 01:
I think that's right.

[00:24:55] Speaker 01:
But isn't the law that there must be some

[00:24:59] Speaker 01:
analogy, some suggestion as to which field to look in for some kind of analogous transferable technology?

[00:25:10] Speaker 02:
I mean certainly you have to be able to apply the, you have to be able to take what's shown in the second reference and apply it to the first reference.

[00:25:22] Speaker 01:
How do you get to the second reference?

[00:25:24] Speaker 01:
There is a bridge there to be crossed that I think there is a

[00:25:28] Speaker 01:
a lot of background for as to what might cause or lead a person of ordinary skill to look in this other field for guidance.

[00:25:40] Speaker 01:
Isn't that the law?

[00:25:41] Speaker 01:
I think that's the pre-KSR law.

[00:25:43] Speaker 02:
I'm not sure that's the law anymore after KSR because KSR explicitly says you can look in this field or others.

[00:25:52] Speaker 01:
Talking about a person of ordinary skill without the benefit of what this inventor found

[00:25:58] Speaker 01:
somewhere in a spaceship that would lead a person of ordinary skill to look in this area for guidance how to solve the problem of cutting strips to a uniform size.

[00:26:15] Speaker 02:
The problem is not the problem of cutting strips to a uniform size because Jabari has solved that problem.

[00:26:20] Speaker 02:
The problem here is only, the only thing left after you've looked at Jabari is just whether you can

[00:26:28] Speaker 02:
Look, instead of looking at the dimension.

[00:26:31] Speaker 01:
The problem is the cutting strips.

[00:26:32] Speaker 01:
It solved it in other ways.

[00:26:34] Speaker 01:
Now we have an inventor that has another way of solving it.

[00:26:38] Speaker 02:
Well, I would dispute that it's solved in other ways.

[00:26:40] Speaker 02:
Jabari solves it in precisely the same way.

[00:26:43] Speaker 02:
It's just a question of how it gets the input of the dimension.

[00:26:48] Speaker 02:
So the dimension can either be input as a number, 36 inches, or as a barcode.

[00:26:54] Speaker 02:
And that's the only thing left.

[00:26:57] Speaker 02:
So all of the blind cutting part has been solved by Jabari.

[00:27:02] Speaker 02:
And what you have left is just this additional element of looking up the dimension by using a barcode or some other input instead of inputting the dimension itself.

[00:27:15] Speaker 01:
So what leads, not this inventor who is presumed not to be of ordinary skill, what would lead a person of ordinary skill to look for cutting window glass?

[00:27:27] Speaker 02:
Well, for one thing, it's in the field of machines that are taking a dimension of a product and applying it.

[00:27:40] Speaker 02:
So the window glass is taking a dimension, or the window machine is taking a dimension of the window, the width of it.

[00:27:49] Speaker 01:
That's in retrospect.

[00:27:51] Speaker 01:
What would have led a person of ordinary skill to look in that field?

[00:27:57] Speaker 01:
For the solution to this problem.

[00:27:59] Speaker 02:
It's the existence of this problem that leads it.

[00:28:01] Speaker 02:
So that's exactly what the cases like ICON say is that it's the existence of you need to find a spring.

[00:28:10] Speaker 02:
And oh, these Murphy beds have springs and we can look to those.

[00:28:16] Speaker 02:
And here you need to find a way to not input the dimension itself.

[00:28:20] Speaker 02:
So you can look to other machines that have a way to not input a dimension itself.

[00:28:30] Speaker 01:
You see what's troubling me.

[00:28:33] Speaker 01:
We have this hindsight.

[00:28:35] Speaker 01:
Once we know how this person solved the problem, then we look and see where such a procedure may have been used elsewhere.

[00:28:46] Speaker 02:
I mean, I think that it's certainly important to avoid hindsight bias.

[00:28:54] Speaker 02:
But the case law does allow you to look outside the field of the invention.

[00:28:58] Speaker 02:
And that's the purpose of the second prong of the test.

[00:29:02] Speaker 02:
So the examiner here and the board were looking outside the field of the invention and assuming that a person of ordinary skill would have some understanding of other machines outside of the precise blind cutting field.

[00:29:23] Speaker 01:
Anything else you need to tell us?

[00:29:26] Speaker 02:
No, that's all I have.

[00:29:28] Speaker 02:
Thank you.

[00:29:28] Speaker 04:
Thank you.

[00:29:34] Speaker 04:
I'd like to respond to just a couple of points.

[00:29:39] Speaker 04:
The scientific products case involved a low-pressure liquid chromatograph cartridge, a pressurized cartridge for a

[00:29:53] Speaker 04:
chromatograph.

[00:29:55] Speaker 04:
And the reference was a pressurized bottle.

[00:29:58] Speaker 04:
And the problem that both were trying to solve was to get the seal on the cartridge to maintain the pressure.

[00:30:05] Speaker 04:
So those were related orbs.

[00:30:09] Speaker 04:
Here.

[00:30:10] Speaker 00:
Well, again, you're looking to the problem, right?

[00:30:19] Speaker 00:
I mean, I think that case is your hardest one to get around.

[00:30:24] Speaker 00:
And because there, what ultimately they said is because they both solved the same problem, you can look to it.

[00:30:33] Speaker 00:
So there wasn't a first defining of the art before determining its relevance.

[00:30:39] Speaker 00:
Do you understand?

[00:30:41] Speaker 04:
Yeah, I see what you're saying, but in terms of pressurized models, that's the art and that's the problem they're talking about.

[00:30:52] Speaker 04:
because the claim was to a pressurized cartridge here.

[00:30:59] Speaker 03:
The claim in our case is to... The problem is that the line that you're suggesting we need to draw, we have to be careful not to draw the line so that you don't swallow the first point.

[00:31:11] Speaker 03:
I mean, the second part of the test, which is the problem to be solved as opposed to the field you're in,

[00:31:18] Speaker 03:
If you draw that line too tightly on the second part of the test, you're right back in the first part.

[00:31:24] Speaker 03:
And you know that.

[00:31:25] Speaker 03:
Yes, that's true.

[00:31:26] Speaker 03:
You know that.

[00:31:27] Speaker 03:
That's why I asked the spaceship hypothetical.

[00:31:30] Speaker 03:
That sort of said, well, maybe we won't let it happen over there.

[00:31:34] Speaker 03:
But if you're in the general field of manufacturing, once you're saying the general field of manufacturing isn't sufficient,

[00:31:45] Speaker 03:
No, because it would include... Because you say it's too big, right?

[00:31:48] Speaker 03:
Too big, right.

[00:31:49] Speaker 03:
I understand that, but you're saying, well, then where do you draw the line?

[00:31:53] Speaker 03:
Is it saying, okay, this is a window, so it's manufacturing in the construction industry?

[00:32:00] Speaker 03:
No.

[00:32:01] Speaker 03:
Is it a way of not... So this is finished in one home products, measuring things for the home?

[00:32:11] Speaker 04:
We're trying to design a machine that's cutting a blind.

[00:32:17] Speaker 03:
Your invention is anticipated by one reference, except for the fact that that reference doesn't have a limitation that hopes to have accuracy in the input of the instructions to the machine.

[00:32:34] Speaker 03:
Correct.

[00:32:36] Speaker 03:
And so your problem was, is there any art out there that helps you with instructions to machines on how not to make mistakes?

[00:32:47] Speaker 04:
Where you have the operator inputting information to prevent him from making mistakes.

[00:32:54] Speaker 04:
And McGlincy doesn't talk anything about mistakes.

[00:32:59] Speaker 04:
He's not concerned with that at all.

[00:33:02] Speaker 03:
McGlincy provides a device

[00:33:05] Speaker 03:
that allows you to achieve the purpose that your client was trying to achieve.

[00:33:14] Speaker 03:
And you know that.

[00:33:17] Speaker 04:
It provides some information about the properties of the product.

[00:33:21] Speaker 04:
Solves the problem.

[00:33:23] Speaker 04:
But it's an oven.

[00:33:26] Speaker 04:
Someone designing a saw is not going to be looking at an oven.

[00:33:30] Speaker 04:
And that's the point.

[00:33:32] Speaker 03:
Why would somebody dealing with flash photography look at a Pepsi bottle?

[00:33:36] Speaker 04:
No, it wasn't dealing with flash photography.

[00:33:38] Speaker 04:
It was dealing with a cartridge that held some of the reactants or material used in that machine.

[00:33:47] Speaker 03:
If you can find the Pepsi, the bottle would be, any bottle would be sufficient?

[00:33:52] Speaker 04:
A pressurized bottle that holds contents?

[00:33:55] Speaker 04:
That would, if I'm trying to design a bottle to hold pressure that has the right seal on it and someone has a bottle that has a seal to hold pressure, I think that would come to my attention.

[00:34:11] Speaker 03:
Pardon?

[00:34:11] Speaker 03:
It's in a spaceship.

[00:34:13] Speaker 03:
It's a container in a spaceship.

[00:34:16] Speaker 04:
If the reference is talking about a spaceship, okay.

[00:34:21] Speaker 04:
And somewhere in there, it has this bottle.

[00:34:23] Speaker 04:
I don't think it's going to come to his attention.

[00:34:25] Speaker 04:
But that wasn't what was going on here.

[00:34:28] Speaker 04:
The reference was a bottle in scientific products.

[00:34:35] Speaker 04:
What they're doing here is they're taking a reference that has nothing to do with this field.

[00:34:42] Speaker 04:
And no one designing a saw is even a look at.

[00:34:47] Speaker 03:
And then finding that the law allows

[00:34:51] Speaker 03:
the ordinary artisan to look outside in his own field.

[00:34:55] Speaker 04:
But there has to be some reason why he would look there.

[00:35:00] Speaker 04:
And they offered no reason why, other than the information is in it that's pertinent.

[00:35:05] Speaker 04:
And that's not the test.

[00:35:07] Speaker 04:
You have to show why someone would look at it.

[00:35:12] Speaker 03:
I appreciate your concern.

[00:35:14] Speaker 04:
Thank you very much.

[00:35:15] Speaker 01:
Thank you.

[00:35:16] Speaker 01:
Thank you both.

[00:35:17] Speaker 01:
The case is taken under submission.

[00:35:19] Speaker 01:
That concludes this morning's argued cases.

[00:35:24] Speaker 01:
All rise.