[00:00:02] Speaker 04:
Good morning, everybody.

[00:00:03] Speaker 04:
We have three cases for argument this morning.

[00:00:06] Speaker 04:
This panel is going to hear the first two, and then we're going to take a brief recess.

[00:00:10] Speaker 04:
And then the third case will be heard by a slightly different panel.

[00:00:15] Speaker 04:
Mr. Fonseca, when you're ready.

[00:00:27] Speaker 05:
Good morning, Your Honor, and may it please the Court.

[00:00:32] Speaker 05:
We'd first like to spend a little bit of time just to go over the general purpose of Mr. Maycourt.

[00:00:43] Speaker 05:
He's the inventor of his invention.

[00:00:47] Speaker 05:
Basically, the purpose was to provide easy access to detailed digital images of collectible objects which provide detailed appearance characteristics of the collectible object.

[00:01:02] Speaker 05:
And it's a little bit of a tortured read, but every word is actually very important.

[00:01:09] Speaker 05:
It allows for easily accessing and comparing detailed digital images of the unique appearance characteristics of the collectible objects.

[00:01:21] Speaker 05:
The example used in the application extensively is a coin collection, where the collectible object would be a coin.

[00:01:31] Speaker 05:
and examples are given of what these detailed unique appearance characteristics would be for a coin.

[00:01:41] Speaker 05:
For the coin, for example, these details would be things like strike, luster, reflectance, color, defects, abrasions, centering, something called reading, which is basically edge characteristics,

[00:02:00] Speaker 05:
die varieties, tonings, and a few others.

[00:02:05] Speaker 05:
The idea is if you take any two coins, even if they are minted at the same time through the same minting process, the same machinery, and you looked at them under magnification so you could see the detail, there would be minor detail differences.

[00:02:25] Speaker 05:
In fact, these

[00:02:27] Speaker 05:
unique, that's why he called them unique detailed appearance characteristics.

[00:02:34] Speaker 05:
They act like a fingerprint, as it were, so that it can authenticate the coins themselves.

[00:02:44] Speaker 05:
So, for example, in the invention, he would take a detailed digital image of a coin and store it

[00:02:55] Speaker 05:
so that it can be recovered.

[00:02:58] Speaker 05:
And then at a future date, if someone wanted to authenticate whether that particular coin is the coin that they have in their hand, all they have to do is pull up the detailed digital image and compare it with the coin in their hand.

[00:03:13] Speaker 05:
And they would be able to see if these unique characteristics, appearance characteristics, showed any difference or not.

[00:03:25] Speaker 05:
In the main prior art cited, which is Defabio, it's U.S.

[00:03:31] Speaker 05:
patent number 6250549, the basic invention there was a system for authenticating signatures, a system capturing the image of an individual signing an article.

[00:03:51] Speaker 05:
The resulting product

[00:03:53] Speaker 05:
including the captured image and the signed article itself.

[00:03:59] Speaker 05:
The example used in DeFabio throughout, it can apply to sports.

[00:04:06] Speaker 01:
As I understand it, your main argument is that we had a situation of improper hindsight analysis here, correct?

[00:04:15] Speaker 01:
Yes, Your Honor.

[00:04:17] Speaker 01:
I mean, I think you don't dispute that all of the elements are taught in these three pieces, but that was improper for the board to approach it the way it is.

[00:04:27] Speaker 01:
Is that correct?

[00:04:29] Speaker 05:
Well, improper hindsight reasoning does come in with the incorporation of Rostenbohr, another reference, into de Fabio in a 103 retention.

[00:04:45] Speaker 01:
Rostenbohr had a flash drive, correct?

[00:04:48] Speaker 01:
That's what was brought in, I guess, to substitute for the disk of DeFabio, correct?

[00:04:57] Speaker 05:
Right, the data storage.

[00:04:59] Speaker 05:
Ross & Poor had a different data storage device than DeFabio.

[00:05:08] Speaker 05:
We are getting to that.

[00:05:10] Speaker 05:
I just wanted to lay out the idea because I know when you read these disclosures, when you read something about unique appearance characteristics, it doesn't necessarily strike in your head that you're looking at a blown up image of a coin and you're seeing the little things that are on it that are different from another coin of a similar aspect.

[00:05:34] Speaker 05:
I just wanted to kind of frame the whole picture of what we're looking at.

[00:05:38] Speaker 03:
Can I ask you a housekeeping question?

[00:05:42] Speaker 03:
Yes.

[00:05:42] Speaker 03:
I'm curious about what the issue is that you are raising with respect to, I'm not sure if you're raising original claims one through nine or if you're asking us to address amended claims one and three through nine where the examiner said that the amendment could not be entered.

[00:06:03] Speaker 05:
Well, I was going to hit on claims one and three through nine.

[00:06:08] Speaker 03:
How can we consider those claims when the patent office hasn't considered them and has said that they're not properly admitted given the board's first decision?

[00:06:19] Speaker 05:
Well, I was going to hit that at the end, but that's okay.

[00:06:21] Speaker 05:
We'll do it right now.

[00:06:24] Speaker 05:
The history with those claims are, it was originally claims one through nine.

[00:06:31] Speaker 03:
I'm familiar with the history.

[00:06:32] Speaker 03:
We're familiar with that.

[00:06:33] Speaker 03:
Right.

[00:06:34] Speaker 05:
And then we got to the first

[00:06:37] Speaker 05:
trademark trial appeal board decision, which at the very end of the decision, said, invited the applicant, the appellant, to reopen prosecution, quote unquote, by filing an amendment.

[00:07:02] Speaker 05:
And it did not specify you can only reopen prosecution

[00:07:06] Speaker 05:
of claims 10 through 20.

[00:07:08] Speaker 03:
It literally said, you know, one of the options for the app... Assuming that the NPEP and other documents provide some clarity that when the board

[00:07:25] Speaker 03:
agrees or affirms an examiner's rejection on some claims but not others and reopens prosecution, it would only be the claims that the board reopened prosecution on.

[00:07:37] Speaker 03:
If that were the case, then would

[00:07:39] Speaker 03:
What claims should we be looking at?

[00:07:41] Speaker 03:
Because I think that was the board's position and the PTO's position, right?

[00:07:45] Speaker 05:
Yes, Your Honor.

[00:07:47] Speaker 05:
The problem was that it was our opinion, and I believe it's pretty clear that there was an error made by the board in denying claim two.

[00:07:57] Speaker 03:
I'm just trying to figure out what you're arguing, because I see where your brief is directed toward asking us to determine the patentability of claims one and three through nine.

[00:08:09] Speaker 05:
Yes.

[00:08:09] Speaker 03:
But I don't know how we can raise that or consider that.

[00:08:15] Speaker 03:
Maybe you're asking us to determine whether the board erred in its analysis of original claims one through nine because you think original claim two wasn't considered.

[00:08:25] Speaker 03:
I just can't tell from your brief what it is you're arguing to us.

[00:08:29] Speaker 03:
So could you just tell me the issue that you're raising?

[00:08:32] Speaker 05:
Well, I mean, I think in the appeal, basically, we incorporated claim two into claim one.

[00:08:39] Speaker 05:
when we did the amendment that was invited by the appeal board decision.

[00:08:48] Speaker 03:
So that's the only issue you're raising for us is for us to consider claims one and three through nine?

[00:08:56] Speaker 05:
Yes.

[00:08:57] Speaker 05:
Yes, Your Honor.

[00:08:59] Speaker 05:
We're just interested in one and three through nine.

[00:09:03] Speaker 05:
We think the original decision... So you're not appealing the decision on 10 through 20?

[00:09:09] Speaker 05:
Oh, no, we're appealing 10 through 20, absolutely.

[00:09:12] Speaker 03:
I didn't mean to suggest that.

[00:09:13] Speaker 03:
But I want to know if you're appealing the board's first decision on claims 1 through 9.

[00:09:17] Speaker 03:
I don't see it in your brief, but I want to give you the opportunity to clarify that.

[00:09:24] Speaker 04:
So you're not, despite the solicitor's suggestion that you could have appealed the first decision on 1 through 9, you're not challenging that decision before us.

[00:09:36] Speaker 04:
You're saying,

[00:09:37] Speaker 04:
that it was heir for the examiner not to enter the amendments and consider the patentability of those claims.

[00:09:44] Speaker 05:
Absolutely, Your Honor.

[00:09:46] Speaker 05:
The history after that was that the examiner rejected our amendment saying that the board had closed prosecution on 1 through 9.

[00:10:01] Speaker 02:
familiar with the history.

[00:10:02] Speaker 02:
I don't want to take all your time if you want to discuss the merits.

[00:10:05] Speaker 05:
Thank you, Your Honor.

[00:10:07] Speaker 05:
To skip ahead just a little to catch up a little via our points now, instead of my client Maycore's unique appearance characteristic of the collectible object for authentication being looked at,

[00:10:26] Speaker 05:
and Defabio were teaching a unique identifying indicia, an identifying code that's put onto the object.

[00:10:38] Speaker 05:
And that's how they tried to avoid someone counterfeiting it or something of that sort.

[00:10:45] Speaker 05:
And also, very important with Defabio is that it requires that a person be videoed or image signing

[00:10:56] Speaker 05:
an object.

[00:10:59] Speaker 05:
Now, under the 103 rejection, because what you're basically saying in a 103 rejection is that you're going to look at the primary reference, De Fabio, and you're going to modify it in an obvious way

[00:11:21] Speaker 05:
to see if it fits with the application in question.

[00:11:25] Speaker 04:
You're into your rebuttal.

[00:11:26] Speaker 04:
Do you want to say something?

[00:11:28] Speaker 04:
You can go on, but you've got about four minutes left.

[00:11:32] Speaker 05:
No, that's fine.

[00:11:33] Speaker 05:
I just wanted to point out that I'm into rebuttal time.

[00:11:38] Speaker 05:
You're into your rebuttal.

[00:11:40] Speaker 05:
That's fine.

[00:11:41] Speaker 05:
We'll use the time now.

[00:11:43] Speaker 05:
It's important to get these things out, in our opinion.

[00:11:47] Speaker 05:
But anyway,

[00:11:50] Speaker 05:
If you, if you modify DeFabio to be more like Mr. Maycore's invention, the first thing you do is get rid of any kind of, any kind of care about someone signing something or an autograph.

[00:12:05] Speaker 05:
You throw out, there's no video of someone signing something because Mr. Maycore does not care if there's any video of someone signing something.

[00:12:15] Speaker 05:
If you're looking at the signed article, that might be different.

[00:12:19] Speaker 05:
After it's been signed, now we can image it, you know, with a high detailed image, and we could see if the substrate has nooks and crannies that were there originally, that sort of thing.

[00:12:32] Speaker 05:
But we don't care about someone signing it.

[00:12:34] Speaker 05:
Also, with De Fabio's invention, you can't, there's no way to take an ancient coin and authenticate it.

[00:12:43] Speaker 05:
because you don't have any video around of anyone signing it.

[00:12:48] Speaker 05:
And every single embodiment of the Fabio, every claim of the Fabio requires, as an element, that someone sign and it be videoed or imaged, period.

[00:13:01] Speaker 05:
So if you take away that from the Fabio, you don't have anything left in the Fabio.

[00:13:07] Speaker 05:
It stops working as a reference entirely.

[00:13:14] Speaker 05:
And outside of that, you know, DeFabio basically is authentication of an autograph.

[00:13:22] Speaker 05:
And we are authentication of collectible devices.

[00:13:27] Speaker 05:
Not devices, collectible objects, I'm sorry.

[00:13:30] Speaker 05:
And then we have other objections to DeFabio.

[00:13:36] Speaker 05:
We're almost out of time.

[00:13:38] Speaker 05:
Other objections to DeFabio, which

[00:13:43] Speaker 05:
Beyond the problem being solved and how it's solved, we also, de Fabio lacks an important aspect to us, is the tamper-resistant visual markings.

[00:13:54] Speaker 05:
And we define in the specification what that means.

[00:13:57] Speaker 05:
We don't leave it out there as a label with printing on it.

[00:14:01] Speaker 05:
That's not tamper-resistant visual markings in our book.

[00:14:05] Speaker 03:
So in looking at your claims, when you have the language one collectible object, that would not include something that's signed by a famous person.

[00:14:14] Speaker 05:
Oh, it could be, but we would look at, we would image the object closely and we would look at essentially detailed high res images of this and we would be able to see if there are minor changes for what it should be.

[00:14:33] Speaker 03:
And that's the immutable digital image of at least one unique appearance characteristic in the queen.

[00:14:39] Speaker 05:
Exactly.

[00:14:40] Speaker 05:
And whereas De Fabio would show you a picture of someone signing that object, which proves that he signed an object, but it doesn't prove that the one you're holding is the one that was signed even.

[00:14:54] Speaker 05:
It doesn't even go that far, because we're not dealing with totally detailed objects.

[00:15:00] Speaker 05:
The perfect example is the baseballs.

[00:15:02] Speaker 05:
You might have an athlete sign 1,000 baseballs and you have a video of him signing a baseball.

[00:15:10] Speaker 05:
That doesn't mean the one that you have in your hand, even if it has a serial number on it, is really the one he was signing when they took the video.

[00:15:18] Speaker 05:
But with our invention, once you've authenticated an object, even that baseball,

[00:15:26] Speaker 05:
Now we have microscopic images, and we can see every nook and cranny in the leather that surrounds the baseball.

[00:15:34] Speaker 05:
And we can see every little... Mr. Fonseca, you've completely exhausted your time.

[00:15:39] Speaker 04:
So why don't we hear from the government?

[00:15:40] Speaker 04:
I'll give you a minute back on rebuttal.

[00:15:43] Speaker 05:
Thank you, Your Honor.

[00:15:51] Speaker 00:
Good morning, Your Honors.

[00:15:52] Speaker 00:
May I please quit?

[00:15:54] Speaker 00:
I'm just going to make two quick points here.

[00:15:56] Speaker 00:
First, that appellant has not argued any prior limitations in the briefing.

[00:16:01] Speaker 04:
The thing that somewhat bothers me about this case is the procedural aspect of what seems to be a dispute between the board and the solicitor's office about the appealability.

[00:16:16] Speaker 04:
You know, it seems to me you probably have the better position, but how is he to know that on appeal after a board decision that said he couldn't, you know, he was too late to appeal the original one through nine decision, that he should have filed an appeal here on one through nine?

[00:16:33] Speaker 00:
I'll address that by first saying that in preparing for argument, I reread the board's decision and I think

[00:16:40] Speaker 00:
I may have over-read the footnote.

[00:16:42] Speaker 04:
So let me, let me, can I just make sure I have this straight.

[00:16:47] Speaker 04:
In the first board decision, they affirmed the examiner on one through nine, and then they allowed for reopening prosecution on the remainder claims.

[00:16:56] Speaker 04:
Correct.

[00:16:56] Speaker 04:
Is that right?

[00:16:56] Speaker 04:
And it went back.

[00:16:57] Speaker 04:
Correct.

[00:16:58] Speaker 04:
They tried to amend the earlier ones.

[00:16:59] Speaker 04:
The examiner took the position.

[00:17:01] Speaker 04:
No, they're final.

[00:17:03] Speaker 04:
And then heard the new arguments on the reopened ones.

[00:17:07] Speaker 04:
Went back up to the board.

[00:17:09] Speaker 04:
The board said, we're not going to hear anything about your amended one through nine or whatever they are because that was final.

[00:17:16] Speaker 00:
That's correct.

[00:17:17] Speaker 04:
And they didn't raise any arguments to the board about the propriety of the original one through nine decision.

[00:17:23] Speaker 00:
That's correct, yes.

[00:17:24] Speaker 04:
But they could have.

[00:17:27] Speaker 04:
That's what I'm confused about.

[00:17:29] Speaker 04:
Does the board think that they could have, I mean, they would probably just reach the same decision, but could they have

[00:17:36] Speaker 04:
at least somehow preserved the original one through nine claims, the arguments to them for purposes of appeal to us.

[00:17:44] Speaker 00:
Yes, I think so the board was correct in saying that they need they could have filed a request for a rehearing or or petition the director during the process before the second appeal.

[00:18:00] Speaker 00:
For what?

[00:18:02] Speaker 00:
Just to have the board look again at the

[00:18:06] Speaker 00:
at the first board decision.

[00:18:07] Speaker 04:
But they didn't have to, did they?

[00:18:09] Speaker 00:
They didn't have to.

[00:18:10] Speaker 00:
That was my overreading.

[00:18:12] Speaker 04:
They didn't have to.

[00:18:13] Speaker 04:
Right.

[00:18:14] Speaker 04:
I mean, it would seem kind of odd that if it's a final decision that they can't, it's not subject to appeal at some point.

[00:18:22] Speaker 04:
Maybe not immediately, because it was the first decision was not completely final.

[00:18:27] Speaker 00:
That's correct.

[00:18:27] Speaker 00:
So actually.

[00:18:30] Speaker 04:
So I get all of this.

[00:18:31] Speaker 04:
I think that seems to make sense that

[00:18:34] Speaker 04:
They could have appealed the original decision on one through nine here, but how are they to know that?

[00:18:40] Speaker 04:
Because the board's decision is kind of confusing on that.

[00:18:43] Speaker 00:
The MPE addresses this in 12.14.01, I believe is the MPE section that I cited.

[00:18:58] Speaker 00:
And it addresses this very rare situation in which

[00:19:03] Speaker 00:
the board affirms some claims and issues a new ground of rejections on the other and it says in that section that the affirmed the claims on which the rejections were affirmed are on hold until the disposition of the new grounds claims bubbles back up to the board and then when the board issues the second decision if

[00:19:32] Speaker 00:
things, if the claims are rejected and the board affirms that rejection, then the two sets of claims come back together and are ripe for judicial appeal to this court.

[00:19:43] Speaker 00:
And it does say that in the NPEP.

[00:19:46] Speaker 00:
The regulation, the CFR 37 CFR 4150.

[00:19:50] Speaker 04:
Why was the board talking about the suggestion that they could apply the motion for reconsideration?

[00:19:55] Speaker 04:
It sounded like they didn't need to.

[00:19:59] Speaker 00:
I believe the board was just

[00:20:02] Speaker 00:
explaining the opportunities they had to have the board hear again the unamended claims one through nine, to hear again any arguments or, you know, misapprehensions of law.

[00:20:20] Speaker 00:
And so they were explaining, we're not going to hear this, the same arguments on unamended claims one through nine on the second appeal.

[00:20:30] Speaker 04:
Kennedy Unless you ask us to do it again.

[00:20:32] Speaker 00:
unless you ask us in a request.

[00:20:34] Speaker 04:
So I don't think they were talking... Your position is that that request to do it again is not a prerequisite to judicial review here.

[00:20:42] Speaker 00:
Correct.

[00:20:42] Speaker 00:
That is our position.

[00:20:45] Speaker 00:
The court has no more questions.

[00:20:48] Speaker 00:
I'll yield my time.

[00:20:49] Speaker 00:
Thank you.

[00:20:51] Speaker 03:
Did you want to make any points on the merits of the case?

[00:20:55] Speaker 00:
Oh, the only... Thank you.

[00:20:57] Speaker 00:
The only point I wanted to make was that

[00:21:00] Speaker 00:
Appellants have not argued any prior art limitations, and so any argument here on the prior art limitations has been waived.

[00:21:11] Speaker 04:
Thank you.

[00:21:14] Speaker 04:
Mr. Fonseca, you have a minute.

[00:21:18] Speaker 05:
Just very briefly, just so you have an understanding of what was going on on our side after that first

[00:21:30] Speaker 05:
Ketab appeal decision.

[00:21:32] Speaker 05:
We had a discussion.

[00:21:36] Speaker 05:
We were definitely going back, you know, with an amendment anyway on claims 10 through 20.

[00:21:44] Speaker 05:
So myself and the client sat down and we looked at it and said, well, we're going to be in front of the Court anyway.

[00:21:52] Speaker 05:
And, you know, I mean, not the Court, I'm sorry, but the appeal board anyway.

[00:21:57] Speaker 05:
Why not let them address what looked like a clearer error on their part?

[00:22:03] Speaker 03:
What about that they thought that they had already addressed it?

[00:22:07] Speaker 03:
They thought that they had already addressed those claims.

[00:22:09] Speaker 03:
The examiner made a rejection, and the board addressed their rejection and said that it was properly entered.

[00:22:16] Speaker 05:
Well, that's where the rejection of claim two, for example?

[00:22:22] Speaker 03:
I'm talking about claims.

[00:22:23] Speaker 03:
I understand you have an argument on claim two.

[00:22:26] Speaker 03:
But I guess I was just trying to understand, just think about it from the board's perspective that they had already considered and made a final decision on claims one through nine.

[00:22:39] Speaker 05:
Oh, I understand that's what they thought.

[00:22:41] Speaker 05:
And by all means, maybe that's the way it has to be.

[00:22:46] Speaker 05:
But we didn't understand it from the decision itself.

[00:22:51] Speaker 05:
When we read it, we looked and we saw,

[00:22:54] Speaker 05:
that they were inviting us to reopen prosecution.

[00:22:58] Speaker 05:
In so many words, they were doing it.

[00:23:00] Speaker 05:
And they didn't put any limitation on which claims it applied to at all.

[00:23:04] Speaker 05:
So it looked like a open invitation to reopen prosecution.

[00:23:09] Speaker 05:
And so we took advantage of that.

[00:23:12] Speaker 05:
And the only thing I have found, and that MPEP reference kind of escapes me, I didn't really

[00:23:20] Speaker 05:
If I saw it, I didn't think it was applicable.

[00:23:24] Speaker 05:
It's a little bit twisted.

[00:23:28] Speaker 03:
Can I ask you a question?

[00:23:29] Speaker 03:
I hear what you're saying.

[00:23:30] Speaker 03:
But what about how it says reopen prosecution, submit an appropriate amendment of the claim so rejected, referring back to the claims where there was a new ground of rejection?

[00:23:41] Speaker 05:
Oh, well, they also reject the claims one through nine.

[00:23:47] Speaker 05:
So I thought so rejected that.

[00:23:51] Speaker 05:
the rejected claims, which is all.

[00:23:53] Speaker 05:
Okay.

[00:23:55] Speaker 04:
Your time has expired.

[00:23:56] Speaker 04:
Thank you.

[00:23:56] Speaker 05:
Thank you.