[00:00:02] Speaker 06:
uh... the first case for argument this morning this afternoon is seventeen two five zero three in rey trope or trough trough trough trough.

[00:00:13] Speaker 06:
Good morning Mr. Yu.

[00:00:14] Speaker 05:
Good afternoon Mr. Yu.

[00:00:17] Speaker 05:
Thank you your honor and may it please the court Paul Hughes for David Trough.

[00:00:22] Speaker 05:
Fundamental administrative law principles from Channery on obligate an agency to defend its actions based on the reasons the agency actually gave

[00:00:31] Speaker 05:
Here, the board evaluated the wrong specification.

[00:00:35] Speaker 05:
That requires reversal.

[00:00:37] Speaker 05:
The court should not allow the PTO to advance arguments that the board never made.

[00:00:42] Speaker 00:
Can I ask you a question?

[00:00:43] Speaker 00:
On page 18 of your reading, you say the board made no factual findings regarding the 233 application.

[00:00:53] Speaker 05:
That's right, Your Honor.

[00:00:53] Speaker 05:
And we're focusing specifically on the material.

[00:00:56] Speaker 00:
So my point is that I didn't think that statement was true.

[00:01:01] Speaker 00:
As I read, the board to have adopted the examiner's finding on that topic.

[00:01:08] Speaker 00:
Well, Your Honor, I don't think the examiner reached a... Didn't the examiner's findings on page three to six of its answer expressly address the 233 application?

[00:01:18] Speaker 05:
Your Honor, a few things about... Yes or no?

[00:01:21] Speaker 05:
Yes, it did.

[00:01:22] Speaker 00:
So how can you say that the board made no factual findings when they adopted the findings regarding the 233 application?

[00:01:31] Speaker 05:
So I have three responses on the adoption point.

[00:01:34] Speaker 05:
The first two are the way in which the board must adopt if it wishes to adopt other material that come from ICON Health and otherwise.

[00:01:42] Speaker 05:
And then the third is about what the examiner actually did.

[00:01:45] Speaker 05:
So as to the first two points, for the board to actually adopt in accordance with this court's precedent must do two things.

[00:01:52] Speaker 05:
It must specify the specific argument, not just a page range, but the specific arguments adopting.

[00:01:58] Speaker 05:
And second, it must say why it finds that argument persuasive.

[00:02:01] Speaker 05:
Here, the board did neither of those things.

[00:02:03] Speaker 05:
It blocked cited four full pages without adopting any of that analysis.

[00:02:09] Speaker 00:
It didn't find them persuasive.

[00:02:10] Speaker 05:
Sorry, Your Honor?

[00:02:11] Speaker 00:
It didn't find them persuasive.

[00:02:12] Speaker 00:
I mean, it reached the same result as the examiner.

[00:02:16] Speaker 05:
Well, Your Honor, it didn't explain what it was adopting of those four pages or with any of the several different arguments why it found any of those particular arguments persuasive.

[00:02:26] Speaker 00:
But even if the court were to think that that... Well, you would agree that your statement on page 18 is inaccurate, correct?

[00:02:33] Speaker 05:
I apologize, Your Honor.

[00:02:36] Speaker 05:
If that's how the court views it, I'm sorry.

[00:02:38] Speaker 00:
Well, what was the purpose of that sentence in that paragraph on page 18?

[00:02:42] Speaker 00:
What was that supposed to make me think?

[00:02:44] Speaker 00:
Your Honor, what we're trying to convey in that... What was it trying to make me think when you said they made no factual findings when in fact they made factual findings?

[00:02:52] Speaker 05:
Well, Your Honor, I think what we're trying to explain is that at footnote two of the board's decision, this is at appendix page six, the board cited what we think is a very important passage in the 233 application, and that's the new material that was not in the grandparent in the 500 application.

[00:03:08] Speaker 00:
But you had tried to rely on the grandfather application.

[00:03:13] Speaker 05:
We had made both arguments, Your Honor.

[00:03:15] Speaker 05:
We had made first that we would prefer priority to the grandfather application.

[00:03:19] Speaker 00:
So you tried to have the board rely on the grandfather for written description.

[00:03:24] Speaker 04:
Well, we made both arguments.

[00:03:25] Speaker 00:
But because there was no matter in the father application, the board said you can't rely on the grandfather.

[00:03:32] Speaker 00:
That's what Footnote 2 said.

[00:03:34] Speaker 05:
Well, Your Honor, we made both arguments.

[00:03:35] Speaker 00:
Isn't that what Footnote 2 said?

[00:03:37] Speaker 05:
Well, Your Honor, it does say that we can- Yes or no?

[00:03:40] Speaker 05:
I'm sorry, Your Honor.

[00:03:40] Speaker 00:
Didn't you hear my question?

[00:03:41] Speaker 05:
I apologize if the court could repeat it.

[00:03:44] Speaker 00:
Well, I was just trying to set up the footnote, too.

[00:03:46] Speaker 00:
It seemed to me that it was clear to me that your argument to the examiner and to the board was that you were entitled to rely on the grandfather for written description.

[00:03:58] Speaker 00:
We made two independent arguments.

[00:03:59] Speaker 00:
Well, you made that argument, correct?

[00:04:02] Speaker 05:
We did make that argument.

[00:04:03] Speaker 00:
Now, you would be entitled to rely on the grandfather were not there an intervening application in which there was no matter.

[00:04:12] Speaker 05:
Well, we made two separate arguments.

[00:04:14] Speaker 05:
We said we would get priority to the grandfather because there was sufficient written description of the grandfather.

[00:04:19] Speaker 05:
And Footnote 2 tells you you can't do that.

[00:04:21] Speaker 00:
Isn't that what Footnote 2 says?

[00:04:22] Speaker 05:
Well, no.

[00:04:23] Speaker 05:
I think Footnote 2 says something different.

[00:04:25] Speaker 05:
Footnote 2 says we made an alternative argument that if the board disagreed, that we did not get priority to the 500 application in the alternative that the 233, which is the same as the 531, the parent, had sufficient written description.

[00:04:37] Speaker 06:
OK, so that's what Footnote 2 dealt with, right?

[00:04:41] Speaker 06:
So what's the problem with Footnote 2?

[00:04:44] Speaker 05:
Well, because Footnote 2 looks at the new matter that was added in 531 and says that this was part of the new matter and the continuation in part.

[00:04:54] Speaker 00:
Is that true?

[00:04:56] Speaker 00:
Was it part of the new matter?

[00:04:57] Speaker 05:
Yes, Your Honor.

[00:04:58] Speaker 00:
So that statement is a statement of fact.

[00:05:00] Speaker 05:
But Your Honor, this is the only place in the board's decision where it addresses this passage of the specification, which is very important to the subset limitation.

[00:05:08] Speaker 00:
Well, it sets it out in your argument on page five of the board opinion and appendix six.

[00:05:15] Speaker 05:
Yes, in the board.

[00:05:16] Speaker 00:
They say the appellant argues that this phrase makes all the difference in the world.

[00:05:21] Speaker 00:
And they say, we disagree with the appellant.

[00:05:24] Speaker 00:
And then they say, our review of the current specification, which includes that language,

[00:05:30] Speaker 05:
Right?

[00:05:32] Speaker 00:
It shows no description.

[00:05:33] Speaker 00:
So I was having a hard time understanding what you were trying to make out of the footnote in terms of a reversible error committed by the board.

[00:05:45] Speaker 05:
Your Honor, what I'm trying to make of the footnote, as it says in the footnote, it suggests, I think the subtext of the footnote is quite clear, is that the application 531 does describe, and it goes on to cite this language, and then it discounts the relevance of that, saying it's part of the new matter.

[00:05:59] Speaker 05:
It never in the board decision addresses whether or not that passage is part of written description to provide a sufficient basis.

[00:06:07] Speaker 05:
And we believe the passage does, on its face, with the context of the patent, provide written description.

[00:06:14] Speaker 05:
And there's nothing in the board's decision that responds to that.

[00:06:16] Speaker 00:
So the board's reversible error was that it didn't say that the specification of the father and the 233 are the same.

[00:06:26] Speaker 00:
That's a missing sentence.

[00:06:28] Speaker 00:
If they'd put that sentence in, you would not have an argument, right?

[00:06:31] Speaker 04:
Well, two things, Your Honor.

[00:06:33] Speaker 00:
We have lots of arguments on the substance.

[00:06:34] Speaker 00:
Would you be making this argument if that sentence had been in the opinion?

[00:06:37] Speaker 00:
Yes, we would, Your Honor, because the board... How would you be able to make that argument?

[00:06:41] Speaker 00:
Because then it would be clear that the board looked at the 233.

[00:06:44] Speaker 05:
Because it never looked at the passage on which appellant before the board relied and said, this is the critical passage of the new matter.

[00:06:51] Speaker 05:
If you're just going to look to the parent, this is the passage you need to look to.

[00:06:54] Speaker 05:
the board cited this passage and gave a reason to discount it, it never actually explained as a substantive matter what it made of it.

[00:07:02] Speaker 00:
It didn't explain why it agreed with the examiner's rejection of that passage as being material.

[00:07:08] Speaker 05:
Yes, Your Honor.

[00:07:10] Speaker 05:
There's no discussion anywhere in the board's opinion.

[00:07:12] Speaker 00:
So if the board decision had said two things, one, I'm just trying to think what happens if it goes back, what the board has to do.

[00:07:20] Speaker 00:
Yes, Your Honor.

[00:07:21] Speaker 00:
They have to say, oh, in case you

[00:07:24] Speaker 00:
thought we didn't know we were doing, the specification of the parent and the 233 are the same.

[00:07:34] Speaker 00:
And we were aware of the one sentence in the parent application that you rely on for written description, which the examiner talked about in detail.

[00:07:46] Speaker 00:
And we once again adopt the examiner's findings of fact and conclusion.

[00:07:52] Speaker 05:
Well, Your Honor, I would challenge.

[00:07:53] Speaker 00:
He's trying to figure out what, if we send it back and use the tax figure's money plus client's money to clean up the opinion, what the board has to write.

[00:08:03] Speaker 05:
Well, Your Honor, and perhaps I should turn to the merits of that argument, because the examiner did provide a sentence, but it didn't provide any reasoning.

[00:08:11] Speaker 05:
And we think that this passage quite clearly.

[00:08:13] Speaker 05:
If the court disagrees with us on the procedural argument, then the substantive argument about the description is before the court.

[00:08:20] Speaker 05:
And we think there are two independent reasons on the substance why there's sufficient written description.

[00:08:24] Speaker 05:
The first comes from precisely this past as the multiplicity of subtypes.

[00:08:28] Speaker 06:
Well, but just to judge Clevenger's point, the examiner's analysis does talk about this provision.

[00:08:38] Speaker 05:
In one sense, yes, Your Honor.

[00:08:39] Speaker 05:
In a very brief portion.

[00:08:41] Speaker 05:
And we think the examiner is flatly wrong about that.

[00:08:44] Speaker 06:
We're only looking at really a total of two and a half pages.

[00:08:48] Speaker 06:
Are we talking about 349 of the appendix?

[00:08:51] Speaker 06:
It says, appellant's disclosure.

[00:08:55] Speaker 06:
Isn't this getting to the sentence you're talking about?

[00:08:57] Speaker 05:
I'm sorry, Your Honor.

[00:09:01] Speaker 06:
You said your appendix page.

[00:09:01] Speaker 06:
Is it at 349?

[00:09:03] Speaker 05:
Yes, Your Honor.

[00:09:03] Speaker 05:
It's at appendix page 349.

[00:09:05] Speaker 05:
And it says, appellant's disclosure simply states, any special types of lock having multiplicity of subtypes.

[00:09:12] Speaker 05:
And this does not lead one skill in the art to understand this means different combinations.

[00:09:17] Speaker 05:
the board says.

[00:09:18] Speaker 05:
And we think that's just plainly wrong.

[00:09:21] Speaker 05:
And the reason that that's wrong is just the context of the patent.

[00:09:24] Speaker 06:
Okay, can we get to substance?

[00:09:26] Speaker 06:
Tell me what a set is in English.

[00:09:29] Speaker 06:
Yes, Your Honor.

[00:09:29] Speaker 00:
Say, for example, you know, a picture is worth a thousand words.

[00:09:32] Speaker 00:
If you had to draw a picture of a set, what would it look like?

[00:09:35] Speaker 05:
So, Your Honor, the set are all of the locks that the master key operates with.

[00:09:40] Speaker 00:
What's the set look like?

[00:09:42] Speaker 05:
what the set would be a multiplicity of several locks, and then there are different subsets within the locks.

[00:09:47] Speaker 06:
So it's every lock in the universe of this type that uses this TSA special locking condition?

[00:09:53] Speaker 06:
The set requires that there are multiple locks that corresponds to the master key, and that makes sense when... So multiple means at least more than one, or at least four if you talk about the subsets.

[00:10:04] Speaker 06:
You need two subsets, and each of these need at least two.

[00:10:07] Speaker 06:
Yes, Your Honor.

[00:10:08] Speaker 06:
So how many locks are we talking about?

[00:10:10] Speaker 06:
Minimum number.

[00:10:11] Speaker 05:
Well, there would have to be at least one lock in each subset, or at least two subsets.

[00:10:14] Speaker 05:
So the set, the minimum number would be two.

[00:10:17] Speaker 00:
So any lock... Each subset has to have two locks.

[00:10:22] Speaker 05:
That could... Your Honor, we've not looked at claim construction on that, I suppose.

[00:10:26] Speaker 00:
Well, I mean, you can read the claim, can't you?

[00:10:28] Speaker 05:
Sorry?

[00:10:28] Speaker 00:
You can read the claim.

[00:10:30] Speaker 00:
But I think you could have a... The claim says a set is comprised of two or more subsets.

[00:10:36] Speaker 00:
And a subset is comprised of two or more locks.

[00:10:41] Speaker 05:
So yes, there could be two locks in each subset.

[00:10:43] Speaker 05:
And be four.

[00:10:44] Speaker 05:
Yes, your honor.

[00:10:44] Speaker 00:
So it's just any four locks.

[00:10:47] Speaker 00:
Say, for example, if you had one lock in Tennessee and one lock in Missouri and one in California and one in Arizona, that would be a set.

[00:10:55] Speaker 05:
That would be a set if they all work on the same master key.

[00:10:58] Speaker 00:
So that's a set.

[00:10:59] Speaker 05:
Yes, your honor.

[00:11:01] Speaker 06:
So there's obviously more than four has been produced.

[00:11:06] Speaker 06:
There are a million sets out there in the universe.

[00:11:09] Speaker 06:
They may be operated by different people.

[00:11:11] Speaker 06:
Are you talking about how something is sold or how something is used?

[00:11:15] Speaker 06:
Because if it's how something is used, if I happen to use three locks on one piece or two pieces of luggage, then I'm not infringing.

[00:11:22] Speaker 06:
But if I use four, then I am.

[00:11:25] Speaker 06:
That's a user, right?

[00:11:27] Speaker 05:
Yes, Your Honor.

[00:11:27] Speaker 05:
And so those would go to infringement questions.

[00:11:29] Speaker 05:
I think the way this would work is both from the manufacturing side.

[00:11:32] Speaker 05:
When a set is manufactured,

[00:11:34] Speaker 05:
when the manufacturer makes multiple locks that have the different user operating interface.

[00:11:39] Speaker 06:
No, not multiple.

[00:11:39] Speaker 06:
So I'm a manufacturer.

[00:11:41] Speaker 06:
And as long as I'm a manufacturer that's subject to infringement under your patent because I've produced more than four locks, or at least four locks.

[00:11:53] Speaker 05:
If they're within the multiple subsets and then they all use the same master key.

[00:11:56] Speaker 06:
What does that mean, within the multiple subsets?

[00:11:58] Speaker 05:
So that's the requirement of the patent.

[00:12:00] Speaker 05:
One indicia that's common to all of these locks, that indicia corresponds to a single master key, and then within the set there are multiple subsets, and those are differentiated based on the kind of the user-operated lock interface.

[00:12:13] Speaker 05:
But there must be two or more different kinds of user-operated lock interfaces that have the same indicia with the same master key.

[00:12:20] Speaker 06:
So if you're a producer and you produce, you've produced, you're a small guy in your garage, and you've made five of these,

[00:12:28] Speaker 06:
you're infringing because it's a set.

[00:12:31] Speaker 06:
And everything that small and everything to the north of that is an infringing set.

[00:12:37] Speaker 06:
And if I'm a user, like if somebody else in my family has one piece of luggage and they've got three and I've got three of mine, so together do we infringe because together we've got a set.

[00:12:53] Speaker 05:
That would be an infringement question that, again, I'm not exactly sure how that would come up.

[00:12:58] Speaker 05:
But that's, I don't think, to the point of the written description.

[00:13:00] Speaker 05:
Because the written description is, is there any one who has the specification know that the inventor possessed the notion of having one master key that operates multiple logs based on the same indicia that have different user interfaces?

[00:13:15] Speaker 05:
And we think there are just two different reasons why that's the case.

[00:13:17] Speaker 05:
The one comes from this language about any special lock of any type.

[00:13:21] Speaker 05:
And then the disclosures, the most prominent distinctions in the patent are the different kinds of the user lock interfaces.

[00:13:29] Speaker 05:
The second comes later, page 25 of the appendix of the specification, where it describes that there's a single indicia that's tied to a single master key.

[00:13:38] Speaker 05:
And then towards the bottom of page 25 explains that the same indicia is on each of the different embodiments of the different locks.

[00:13:46] Speaker 06:
Can I ask you, what if you wrote a claim that just said, a lock that does this?

[00:13:53] Speaker 06:
a lock for securing, not a set of locks, a lock for securing traveler's luggage that has this master key and some combination thing in it.

[00:14:03] Speaker 06:
That would just, that would get you the same place, right?

[00:14:06] Speaker 06:
Because every one use of it.

[00:14:08] Speaker 05:
I think that is an arguable way, yes, Your Honor, to get the same place.

[00:14:11] Speaker 05:
And I know that there are other patents in this family that don't have the same concept of the set that are written, as Your Honor would suggest, or more along those lines.

[00:14:19] Speaker 00:
You have the two patents, your method, correct?

[00:14:21] Speaker 05:
Well, yes, and there are some method claims in this patent.

[00:14:23] Speaker 00:
Your Honor, if I may reserve the... Well, we have, if we have some more... Oh, sure.

[00:14:28] Speaker 00:
I just, I mean, to me, you understand that in order to prevail on the written description issue, you have to find a hook, find something in the specification to which you're looking and we know which one you're looking at.

[00:14:43] Speaker 00:
It's either the father or the vessel.

[00:14:46] Speaker 00:
Yes, Your Honor.

[00:14:46] Speaker 00:
And you have to have the hook.

[00:14:47] Speaker 00:
And the language that I understand you provides the hook is the particular language that was new, which says the phrase, any special type of log is intended to include special logs having... Right?

[00:14:59] Speaker 05:
Well, Your Honor, I believe that... That is the hook, correct?

[00:15:01] Speaker 05:
There are two... Our argument is there are two separate hooks.

[00:15:04] Speaker 05:
One is the new language that you just described.

[00:15:06] Speaker 05:
So, yes, Your Honor, there's a separate hook that is in the grandparent.

[00:15:08] Speaker 05:
We make both of those two arguments.

[00:15:10] Speaker 00:
In the grandparent.

[00:15:11] Speaker 05:
Yes, Your Honor.

[00:15:12] Speaker 05:
So we have two separate hooks.

[00:15:14] Speaker 00:
But you're not alive in the grandparent.

[00:15:16] Speaker 00:
Sorry?

[00:15:16] Speaker 05:
We have one hook that's in the grandparent that's contained, and a separate hook that's in the material.

[00:15:21] Speaker 00:
But if it's in the grandparent, you're not entitled to that because of priority.

[00:15:26] Speaker 00:
You're not a parent or grandparent?

[00:15:29] Speaker 05:
I'm sorry.

[00:15:29] Speaker 05:
Well, there are two hooks, one in the grandparent and one in the parent.

[00:15:33] Speaker 00:
Right.

[00:15:33] Speaker 00:
So are you entitled to rely on a hook that's in the grandparent?

[00:15:37] Speaker 05:
Yes, Your Honor.

[00:15:37] Speaker 05:
Why?

[00:15:39] Speaker 05:
Because, well, this is a continuation and part of that grandparent, so that same material

[00:15:44] Speaker 05:
is also in this specification, and it's continued throughout.

[00:15:48] Speaker 05:
So if we were to prevail that that is a sufficient hook, as Your Honor put it, then we would have priority to the grandparent.

[00:15:54] Speaker 05:
If the court were to disagree with us on that hook to the grandparent and thought we were the right about the hook in the parent, then we recognize that that would be priority to the parent application instead.

[00:16:04] Speaker 00:
Why isn't the phrase the new matter in the parent describes a set

[00:16:12] Speaker 00:
Why does the language of special type of lock is included in locks having subtypes in different sizes, different designs, et cetera?

[00:16:20] Speaker 00:
What does that tell me about a set?

[00:16:22] Speaker 05:
So here I think our argument proceeds in three pieces here.

[00:16:24] Speaker 05:
The first piece is a few sentences up.

[00:16:28] Speaker 05:
It begins at the third line of this paragraph on page 22.

[00:16:31] Speaker 05:
It describes a master key that can open the master lock portion of any special lock of this type.

[00:16:36] Speaker 05:
Now a master key is a master key because it opens multiple locks.

[00:16:40] Speaker 05:
Master keys only exist in the

[00:16:41] Speaker 05:
in the context of a set of locks.

[00:16:43] Speaker 05:
You can't have a master key with one lock, then it's just a key.

[00:16:46] Speaker 05:
It's not a master key.

[00:16:47] Speaker 05:
So for it to be a master key, there must be a set.

[00:16:50] Speaker 05:
That's what the top of that portion of that page tells us.

[00:16:52] Speaker 05:
Then we drop to this material, which is the critical new material it describes.

[00:16:56] Speaker 05:
What is it about this set?

[00:16:57] Speaker 05:
And that's what this phrase tells us.

[00:16:59] Speaker 05:
The phrase any lock of this type is intended to include special locks in the plural, having a multiplicity of subtypes such as different sizes, different manufacturing designs or styles.

[00:17:09] Speaker 05:
The third part of our argument is when one understands what the patent is conveying about different manufacturing designs or styles, the most prominent discussion of the patent of different designs or styles are about the different user-operated locking mechanisms.

[00:17:24] Speaker 05:
That comes from the figures, which the figures distinguish themselves based on the user locking mechanism, as well as from disclosures at page 24 and 26 of the appendix that talk about locks based on the difference, for example, the different number of dials or using a spin dial.

[00:17:38] Speaker 05:
So those together, Your Honor, in the parent application is precisely why one skilled in the art reading this would understand that this conveys the notion of a set that has... A set with subsets?

[00:17:52] Speaker 00:
Yes, Your Honor, that has the subsets, because again, it's using multiplicities... What does it teach you, the fact that you have a master key, teach you about a subset?

[00:17:59] Speaker 05:
Well, this language, instead of using the word subset, uses a multiplicity of subtypes, and I think subtype and subset

[00:18:06] Speaker 05:
they are conveying the same concept.

[00:18:09] Speaker 05:
It doesn't have to be a verbatim use of subset.

[00:18:11] Speaker 00:
Well, except that you have to read subtypes in connection with its, where you find it, where they're talking about different designs, styles, sizes, types.

[00:18:22] Speaker 05:
And that's what a subset, I believe, Your Honor, reasonably conveys.

[00:18:25] Speaker 00:
So you appreciate that, the issue you bring to us as a question of fact.

[00:18:31] Speaker 00:
Well description and you appreciate at least obscenity refining the fact are they measuring on the substantial evidence test?

[00:18:39] Speaker 05:
Yeah, we do in our brief of course we Suggest that the court we understand the aria controls and is a question of fact although that we do suggest that but if the word type can't be synonymous with sex Well, I your argument is undermined

[00:18:56] Speaker 00:
Well, Your Honor, I think... Couldn't reasonable people disagree with what the word types means in the sentence where it's found in the father specification?

[00:19:07] Speaker 05:
Well, again, Your Honor, I do think the better way to look at this is this would be a legal question like claim construction, like indefinite or anything else.

[00:19:14] Speaker 03:
Well, even if it wasn't a legal question, shouldn't your response to Judge Clevenger be that it is a factual question, sir, but it's one the PTO didn't take up as evidenced by the footnote?

[00:19:23] Speaker 03:
And that this court, as an appellate court, is not best situated to decide that factual question in the first instance.

[00:19:29] Speaker 03:
So rather than try and tell them it's a legal question, wouldn't you rather just adopt the argument I made for you?

[00:19:34] Speaker 05:
Yes, Your Honor.

[00:19:35] Speaker 05:
That's a better argument.

[00:19:36] Speaker 05:
Thank you.

[00:19:39] Speaker 05:
There is a second separate hook in the grandparent that I'd be happy to describe if the court wishes.

[00:19:44] Speaker 05:
Or as Judge Moore just mentioned, I think that's precisely the argument that we make as to why the board never made this factual finding that we think is critical.

[00:19:56] Speaker 05:
Thank you.

[00:20:17] Speaker 02:
Please sit for it.

[00:20:20] Speaker 02:
I'd first like to address the point about the board's decision and if the board did address the correct specification.

[00:20:26] Speaker 02:
There's evidence that the board addressed the proper specification in at least a couple of ways.

[00:20:35] Speaker 02:
One, the board did adopt the examiner's rejection and the board adopted the examiner's finding with respect to the 223 application.

[00:20:47] Speaker 02:
Under the board rules, 41.50A1, when the board adopts the examiner's rejection, the board is adopting all of the examiner's findings.

[00:20:58] Speaker 02:
I would also point us to the board.

[00:21:00] Speaker 00:
So you reject your adversary's argument that it isn't enough just to say we adopt.

[00:21:05] Speaker 00:
You have to say specifically what you adopt.

[00:21:08] Speaker 02:
I do reject that.

[00:21:09] Speaker 02:
That is in the case of an IPR, where you're talking about the case that he cites in the outdoor case.

[00:21:15] Speaker 02:
is an IPR, which is talking about petitioners competing.

[00:21:19] Speaker 02:
And that language is not, there's no board rule regarding this.

[00:21:24] Speaker 02:
This is ex parte prosecution.

[00:21:27] Speaker 02:
And this is all PTO findings.

[00:21:29] Speaker 02:
So I do not think that that applies in this case.

[00:21:34] Speaker 02:
Also, if we look.

[00:21:36] Speaker 03:
You said, what does that rule say, the 41 point whatever rule that you read?

[00:21:40] Speaker 02:
It says that the board in its decision may affirm or reverse the decision of the examiner in whole or in part on the grounds and on the claim specified the examiner.

[00:21:53] Speaker 02:
The affirmance of the rejection of a claim on the grounds specified constitutes a general affirmance of the decision of the examiner on that claim except to any grounds specifically reversed.

[00:22:06] Speaker 02:
So here the board

[00:22:08] Speaker 02:
I believe also in the findings of fact, the pages 3 to 6 of the answer did address this anyway.

[00:22:16] Speaker 02:
But the board specifically adopted that 112 finding.

[00:22:23] Speaker 02:
So the additional place, I think as Judge Clevenger had mentioned, where the board specifically responds to Appellant's argument and specifically on page APPX 6,

[00:22:37] Speaker 02:
In this block quote, they say that appellant argues.

[00:22:40] Speaker 02:
And that site, page six, lines 22 to 23, is that new matter that was added in the CIP.

[00:22:49] Speaker 02:
And so the board looked at that language and said that they disagree with the appellant, that that language supports written description.

[00:22:58] Speaker 03:
Where do they say that?

[00:23:00] Speaker 02:
On APPX 7.

[00:23:01] Speaker 02:
So after they block quote, we say we disagree with the appellant.

[00:23:05] Speaker 06:
Yeah, but there's no analysis here.

[00:23:07] Speaker 06:
Do you agree with that?

[00:23:11] Speaker 02:
Well, then they launch into the analysis.

[00:23:12] Speaker 06:
OK, so let's look into the analysis.

[00:23:14] Speaker 06:
OK.

[00:23:14] Speaker 02:
And then in the analysis on 7 and 8, they say, our review of the present specification, as well as the prior filed.

[00:23:22] Speaker 03:
And again, But that's exactly the sentence that the footnote's attached to, which is what causes a lot of confusion in this case.

[00:23:32] Speaker 03:
You know, if that stupid footnote weren't there, we wouldn't be here today, most likely.

[00:23:37] Speaker 03:
But the board chose to write a confusing opinion.

[00:23:40] Speaker 03:
So who do we hold that against?

[00:23:42] Speaker 02:
I agree that the board, I think if we look at kind of what happened with the case, maybe we can shed a little bit more light on why the board wrote that.

[00:23:51] Speaker 02:
I mean, the board, the board, that footnote doesn't say that we are not considering this material.

[00:23:56] Speaker 02:
And I think, again, if we look at aid.

[00:23:58] Speaker 03:
And you don't think that it would be a fair inference for me to read the opinion that way?

[00:24:02] Speaker 03:
You don't think that I can at all fairly or reasonably read footnote two as a statement by the board that we're not going to consider any special lock of this type language because there's no priority in its new matter.

[00:24:16] Speaker 03:
You don't think that's even a possibly reasonable interpretation of this board opinion?

[00:24:21] Speaker 02:
I don't in looking at the context of the opinion, because again, on APPX 8, they say nowhere in the present specification

[00:24:31] Speaker 02:
is the word subset use.

[00:24:32] Speaker 02:
They say none of the appellants available specifications.

[00:24:35] Speaker 03:
But the sentence says, our review of the present specification, as well as the prior file, shows no description of a set of locks.

[00:24:44] Speaker 03:
And there's a footnote right in the middle of that.

[00:24:45] Speaker 03:
Our review of the present and the prior.

[00:24:48] Speaker 03:
And then when you drop down to the footnote, the footnote says, any special lock of this type language isn't relevant because it's new matter.

[00:24:58] Speaker 02:
It doesn't say that it's not relevant.

[00:25:01] Speaker 03:
We find this description constitutes at least part of the added new matter of the continuation part application.

[00:25:07] Speaker 03:
That's in the sentence.

[00:25:09] Speaker 03:
That's the footnote in the middle, not even at the end, in the middle of the sentence saying, our review of the present specification shows no description of this.

[00:25:18] Speaker 03:
And there are drops to a footnote that says, we find this description, the any special lock language, is new matter.

[00:25:24] Speaker 02:
Right.

[00:25:25] Speaker 02:
But I think, again, if we look at the context of what was happening here, there was a priority analysis.

[00:25:30] Speaker 02:
The prosecution history included a lot of discussion about which SPAC supported this.

[00:25:37] Speaker 02:
There was a 103.

[00:25:39] Speaker 03:
But here's the problem.

[00:25:41] Speaker 03:
I've got the appellant's brief below in front of me, right?

[00:25:46] Speaker 03:
Page 77 through 79, they extensively argue this language to the board.

[00:25:53] Speaker 03:
And then the only time the board discusses it anywhere is in a footnote where it kind of blows it off as new matter.

[00:25:59] Speaker 03:
This was a major argument made by the appellant below.

[00:26:02] Speaker 03:
In fact, it was first.

[00:26:03] Speaker 03:
The argument that comes after it is they actually say, our second argument.

[00:26:06] Speaker 03:
So their first argument is this language.

[00:26:09] Speaker 03:
The board discusses it nowhere in the opinion except in a dismissive appearing fashion because it's new matter.

[00:26:17] Speaker 03:
I mean, my view is it's not that they deserve to win and deserve to get a patent.

[00:26:21] Speaker 03:
They do deserve to have their arguments squarely and clearly addressed.

[00:26:25] Speaker 03:
And you would have me look back several pages earlier where they have some blanket statement about adopting things by the examiner as being a sufficient resolution of this issue that occupied most of the pages of their brief and they designated as their first and primary argument.

[00:26:43] Speaker 02:
I would also have you look to the context.

[00:26:44] Speaker 02:
Like I said, they did address it.

[00:26:48] Speaker 02:
You know, they said appellant argues this.

[00:26:50] Speaker 02:
They do quote that language.

[00:26:52] Speaker 02:
They acknowledge that language.

[00:26:53] Speaker 02:
And they say that they disagree.

[00:26:55] Speaker 02:
And then in their analysis, they do say that they looked at both specifications.

[00:26:59] Speaker 02:
And in their analysis, they give their reasons.

[00:27:01] Speaker 02:
They say set wasn't used, subset wasn't used.

[00:27:05] Speaker 02:
And even that language that is pointed to doesn't use set.

[00:27:09] Speaker 02:
All it says is that a special lock may be of different kinds.

[00:27:13] Speaker 03:
But when they say we disagree, they then go on and say, in that same paragraph,

[00:27:18] Speaker 03:
When they say we disagree with this, they say our review of the present specification in the prior one shows no description of a set of blocks, and in that same paragraph is this footnote that says this stuff is new matter.

[00:27:31] Speaker 03:
So why should I view the we disagree with appellant language as necessarily concluding that this language doesn't support them, since that very same paragraph, the explanation of why they disagree includes a statement that this stuff is all new matter.

[00:27:47] Speaker 03:
So why should I attribute to them a substantive review of the language and determination that it nonetheless doesn't provide written description support when the only particular statement they made about the language is that it was new matter?

[00:28:00] Speaker 02:
We think the board was also conducting a priority analysis because the priority analysis was relevant to the 103 rejection, which the board ultimately didn't uphold.

[00:28:11] Speaker 02:
Because of this set limitation, the board found that.

[00:28:14] Speaker 03:
So you think I should read

[00:28:15] Speaker 03:
this footnote despite the fact that it's contained within the paragraph which by your own admission is supposedly addressing whether or not the any special lock of this type language does or does not provide written description support.

[00:28:29] Speaker 03:
You think I should nonetheless read that footnote divorced from any discussion of priority or resolution of a priority issue under 103 to nonetheless somehow be a statement about the 103 issue not contained in this section of the board's opinion

[00:28:43] Speaker 03:
and irrelevant to the written description analysis?

[00:28:46] Speaker 03:
Is that the argument you just made?

[00:28:48] Speaker 01:
I agree with you that the footnote.

[00:28:49] Speaker 03:
Is that the argument you just made?

[00:28:52] Speaker 01:
You said a lot.

[00:28:53] Speaker 01:
I'm not sure that I fully.

[00:28:54] Speaker 03:
Did you just tell me that I should construe footnote two as being relevant to the 103 priority analysis that the board may have been undertaking elsewhere in the opinion?

[00:29:04] Speaker 02:
Yes, that's my understanding.

[00:29:05] Speaker 06:
Even though the board has labels on each of the things, we're under the 112 injection level.

[00:29:13] Speaker 06:
Followed on page nine is the 103 rejection.

[00:29:16] Speaker 06:
So are you suggesting this is just some sort of editorial problem?

[00:29:22] Speaker 06:
They put the footnote in the wrong place?

[00:29:25] Speaker 02:
I think the board was undertaking priority analysis, and that's what was being argued to them.

[00:29:31] Speaker 02:
That's what the prosecution focused on.

[00:29:33] Speaker 06:
Under the 103 rejection issue, which the board explicitly takes up under a different subject.

[00:29:39] Speaker 02:
Right.

[00:29:39] Speaker 02:
But the priority analysis for the 103 is the same.

[00:29:42] Speaker 02:
I mean, you're still looking to whether this language is in the spec.

[00:29:46] Speaker 02:
You're just kind of looking at which spec it's to.

[00:29:48] Speaker 02:
And I agree.

[00:29:49] Speaker 02:
I do agree that this footnote, I would rather it not be there.

[00:29:53] Speaker 02:
I don't understand exactly why the board included it.

[00:29:56] Speaker 02:
But I think.

[00:29:57] Speaker 06:
Well, why do you, going back to Judge Moore's earlier question, which is, is it not a plausible or reasonable

[00:30:04] Speaker 06:
interpretation to read this footnote is saying that the board didn't consider it.

[00:30:09] Speaker 06:
Is that unreasonable?

[00:30:11] Speaker 02:
I think the reason why I find that to be unreasonable is because the board said multiple times that they were looking at the present specification.

[00:30:18] Speaker 02:
They said our review of the present specification.

[00:30:20] Speaker 06:
So, okay, so do you find it reasonable to suggest we don't know what on earth the board was doing because there was an inconsistency between what it said?

[00:30:30] Speaker 02:
I think

[00:30:31] Speaker 02:
We have many indications, the adoption of the examiner, the fact that they cited that language to appellant and responded to it, the fact that they, at least in two places, said that they were looking at the current specification.

[00:30:46] Speaker 02:
I think that if you put that on one side and then you put this footnote, which doesn't say that they didn't look at that material.

[00:30:52] Speaker 02:
They just noted that the material was new matter.

[00:30:57] Speaker 02:
I think if you weigh those out.

[00:30:58] Speaker 03:
When you call something new matter, do you then consider it for written description?

[00:31:01] Speaker 02:
You do in this context, in the 112 context, you do.

[00:31:06] Speaker 03:
I don't know.

[00:31:08] Speaker 03:
You just admitted that you have no idea why this footnote is here.

[00:31:11] Speaker 03:
And I'm glad that you did because it was honest.

[00:31:13] Speaker 03:
And I appreciate that because I can't imagine what you could say otherwise.

[00:31:17] Speaker 03:
You know, so my view of this is I don't know why this footnote is here either.

[00:31:20] Speaker 03:
Sure.

[00:31:21] Speaker 03:
And I understand.

[00:31:22] Speaker 03:
And I think that you're making really legitimate arguments about the rest of the opinion.

[00:31:25] Speaker 03:
But what bothers me is that we're all here today because the board did include a confusing and sloppily written opinion include this footnote.

[00:31:38] Speaker 03:
And I kind of don't think it's fair to them because they had to shell out a bunch of money to appeal to us.

[00:31:44] Speaker 03:
Nor is it fair to me.

[00:31:46] Speaker 03:
because I had to spend a lot of time on this case to save the board from its own sloppy opinion writing.

[00:31:52] Speaker 03:
You stand here today and cannot explain to me what else this footnote could possibly mean or why it's there.

[00:31:58] Speaker 03:
So I don't know what to do with that other than to vote in favor of vacating, not reversing, of course, but vacating and saying to the board, you need to write an opinion that is reviewable under Chenery standards and that isn't confusing and doesn't cause a lot of people

[00:32:13] Speaker 03:
all of us here in this room, to spend time and money trying to figure out what you meant or what you actually did decide and not decide.

[00:32:20] Speaker 03:
So I think you know where I am.

[00:32:21] Speaker 03:
There's no question.

[00:32:23] Speaker 00:
Does the nowhere sentence tell us anything about what's happening?

[00:32:27] Speaker 00:
If you look at the appendix eight, page seven of the decision, sentence doesn't make any sense.

[00:32:35] Speaker 00:
Nowhere in the in the.

[00:32:39] Speaker 00:
Something's left out.

[00:32:41] Speaker 00:
Right.

[00:32:41] Speaker 00:
Can you tell me what was left out?

[00:32:43] Speaker 00:
Nowhere in Washington DC, nowhere in California.

[00:32:52] Speaker 01:
I will assume.

[00:32:53] Speaker 00:
It's a nowhere sentence.

[00:32:54] Speaker 00:
So does that tell me anything about where the board had its attention focused?

[00:33:01] Speaker 00:
I mean, I will assume that's just a typo of... Yeah, but there has to be, you would think, it was somebody started typing nowhere in the, did they mean to say that twice, or did they mean to say,

[00:33:12] Speaker 00:
nowhere in the father application, in the present specification, or in the grandfather.

[00:33:19] Speaker 02:
That could be possibly what they meant.

[00:33:22] Speaker 02:
I think that the concept that they were presenting, I mean, the overall opinion of the board, reading the board's decision, I think you come away with a... So it suggests that the board's decision wasn't proofread, which might also suggest that

[00:33:43] Speaker 00:
no one really thought about where the proper placement for footnote two should be.

[00:33:51] Speaker 01:
That's fair enough.

[00:33:52] Speaker 03:
If only there were a way the board could explain this.

[00:33:57] Speaker 01:
If there are no further questions, I'll yield the rest of my time.

[00:34:09] Speaker 06:
I'll give you two minutes.

[00:34:14] Speaker 05:
Thank you, Your Honor, and I believe I'm largely out of time, so I'll just say I think that the court understands our position that there was critical language in the specification.

[00:34:21] Speaker 05:
It was argued extensively below.

[00:34:23] Speaker 05:
The board didn't address it.

[00:34:25] Speaker 05:
There's a footnote that we understand to say that they disregarded it entirely, and they certainly made no factual findings about that material whatsoever.

[00:34:31] Speaker 05:
We think that is a basis for this court to remand for the board to actually do its job and explain its reasoning in the first instance.

[00:34:39] Speaker 05:
Thank you.

[00:34:39] Speaker 05:
Thank both sides.