[00:00:40] Speaker 04:
The next argued case is number 181595 in Ray Hanson.

[00:00:46] Speaker 04:
Mr. Kiris.

[00:00:47] Speaker 01:
May it please the court.

[00:00:49] Speaker 01:
I'd like to emphasize two main points today.

[00:00:51] Speaker 01:
First, the board erred by finding that the addition of a lock to an auto-retracting safety knife would not disable the auto-retraction safety feature.

[00:01:02] Speaker 01:
It would disable the auto-retraction safety feature, and the board and director both substantively admit that.

[00:01:10] Speaker 01:
The board made a new and erroneous replacement rejection by instead finding and admitting that the prior accommodation would indeed defeat the auto-retraction safety feature of Jennings.

[00:01:22] Speaker 01:
The claims on appeal all recite a utility knife that includes a lock that locks the blade holder in its extended position.

[00:01:29] Speaker 01:
The primary reference in every one of these rejections is an auto-retracting safety knife in Jennings.

[00:01:36] Speaker 01:
Everybody agrees that that safety knife lacks the claimed lock, and there's a good reason for it.

[00:01:41] Speaker 01:
The knife includes a safety feature by which the blade automatically and immediately retracts into a protected position any time a user lets go of the knife.

[00:01:50] Speaker 01:
It's a fail safe that guarantees that the blade is retracted whenever the person is either not holding the knife or puts it down.

[00:01:56] Speaker 01:
For example, if the user drops the knife or it slips during use.

[00:02:01] Speaker 03:
But wait, I'm confused.

[00:02:03] Speaker 03:
Didn't the board actually find that Acker showed a single knife that had both an auto retract and a locking mechanism?

[00:02:10] Speaker 01:
That was actually error because accurate does not have an auto retracting safety feature in accurate The board and the director both substantively admitted that in order to cause retraction a user has to manually depress a button If you have to manually depress a button in order to retract it's not automatic retraction, and it provides no safety at all so so you're saying that Acker doesn't have a spring that would allow for an auto retract

[00:02:40] Speaker 01:
Accurate does not have a spring that provides auto retraction.

[00:02:42] Speaker 01:
Accurate has a spring that provides retraction assistance.

[00:02:46] Speaker 01:
So in Accurate, if you look at both the board's decision and the director's briefs, in order to retract the blade, the user must push down an actuator button and dislodge that actuator button from the fully extended position just enough that it won't pop back out and lock again in the open position.

[00:03:05] Speaker 01:
So there is no auto retraction.

[00:03:07] Speaker 01:
In order to retract,

[00:03:08] Speaker 01:
Anytime user wants to retract the blade in accurate you have to push down the button and pull it back just enough to Separate a peg from a notch so that then when you release They no longer align and then and a spring will assist in the rest of the retraction But that is not auto retraction because it provides no safety at all if a user is using the accurate knife The as the director and board admit the blade will be locked in its open position so if a user drops the knife or if it slips out of the user's hands

[00:03:36] Speaker 01:
That blade is going to remain in the extended position.

[00:03:38] Speaker 01:
It's not auto retraction.

[00:03:40] Speaker 01:
It's auto locking in that extended position.

[00:03:44] Speaker 01:
And this was the fundamental error in the board's decision, where the board premised obviousness on a finding that even after the lock was added to Jennings knife, you would still have that auto retraction safety feature.

[00:03:56] Speaker 01:
You would not.

[00:03:58] Speaker 01:
And there is no evidence of that.

[00:03:59] Speaker 03:
But Examiner actually talked about making a modification to

[00:04:07] Speaker 03:
Jennings safety knife with the Ackert locking feature, right?

[00:04:12] Speaker 01:
Right.

[00:04:14] Speaker 01:
But they didn't change the operation of Ackert's locking feature in the combination.

[00:04:17] Speaker 01:
In fact, the board states that Ackert's lock would operate in the same way in the proposed combination as it would have on its own.

[00:04:25] Speaker 03:
So you're saying that you don't need to do anything to initiate an auto retraction?

[00:04:33] Speaker 01:
Yes.

[00:04:34] Speaker 01:
If you look at Jennings and you look at the other

[00:04:36] Speaker 01:
prior to the talk about a safety knife.

[00:04:38] Speaker 01:
The whole point of providing the safety feature is that as soon as you let go of the button, it will retract.

[00:04:43] Speaker 01:
It's a fail safe.

[00:04:45] Speaker 01:
In Akerat, it's a fail open.

[00:04:47] Speaker 01:
If you let go of Akerat's knife while the blade is in its open position, it'll stay open in a potentially dangerous position.

[00:04:54] Speaker 01:
That's why Akerat's knife is not an auto-retracting safety knife.

[00:05:01] Speaker 01:
So returning to the board's rejections,

[00:05:05] Speaker 01:
Appellants argued below exactly what I've just said, that it wouldn't be obvious to add the claimed lock to Jennings Auto-Retracting Safety Unit because it would defeat that safety feature.

[00:05:16] Speaker 01:
The board responded with two arguments.

[00:05:22] Speaker 01:
One, like we just talked about, the board argued that you would still have that safety feature, but you wouldn't.

[00:05:27] Speaker 01:
Like I said, the board and the director both admit that in order to retract Acarette's blade,

[00:05:34] Speaker 01:
the user has to manually push a button.

[00:05:36] Speaker 01:
That is not auto-retraction.

[00:05:38] Speaker 01:
I agree with your honor that there's a spring inaccurate.

[00:05:40] Speaker 01:
It's spring-assisted retraction, but it is not automatic retraction.

[00:05:45] Speaker 01:
So the premise of the board's finding that it would be obvious to add this lock is erroneous.

[00:05:57] Speaker 01:
So now I'd like to turn to the board's replacement rejection.

[00:06:00] Speaker 01:
Because I think the board recognized that trying to defend the examiner's position that the combination would still provide auto-retracting safety is false.

[00:06:08] Speaker 01:
So the board instead... I guess I'm still trying.

[00:06:10] Speaker 03:
Let me go back.

[00:06:11] Speaker 03:
Sure.

[00:06:12] Speaker 03:
So you're saying in one, if you release a button, it auto-retracts, and the other, if you press a button, it auto-retracts.

[00:06:20] Speaker 01:
No.

[00:06:21] Speaker 01:
Under Jennings, any time you let go of... So you constantly have to use your thumb to keep the blade extended in Jennings.

[00:06:27] Speaker 01:
That's the safety feature.

[00:06:29] Speaker 01:
in order to extend the blade, you push on the actuator button and push it forward to pop the blade out.

[00:06:35] Speaker 01:
Any time you let go of that button, it's going to retract.

[00:06:38] Speaker 01:
Whereas in Acoret, if you push the button down and push it into the extended position and let go of the button, it will stay extended.

[00:06:46] Speaker 01:
It will lock extended because when you push that blade holder into its extended position, that button actually lines up with a notch that locks it there.

[00:06:55] Speaker 01:
So in Acoret, any time you push the

[00:06:58] Speaker 01:
the blade into the extended position and let go of the button, it will lock extended.

[00:07:04] Speaker 01:
That is not an auto retraction.

[00:07:06] Speaker 01:
That's auto locking in the extended position.

[00:07:09] Speaker 01:
In Akuret, the only way to ever retract Akuret's blade from the extended position back to a protracted position is by pushing that button down and pulling it back a little enough that you can misalign the notch and the peg that's attached to the actuator button.

[00:07:26] Speaker 01:
So a person has to manually start the retraction process before accurate spring can provide the rest of the retraction.

[00:07:34] Speaker 01:
That is not auto retraction.

[00:07:35] Speaker 01:
That's manual retraction with a spring assist.

[00:07:39] Speaker 01:
Did that clear up your concern?

[00:07:41] Speaker 01:
Thank you.

[00:07:46] Speaker 01:
So now I'd like to talk about the board's new replacement rejection in which the board concedes alternatively

[00:07:54] Speaker 01:
that the addition of this lock would result in a knife that lacks auto retraction.

[00:08:00] Speaker 01:
The board's replacement rejection should be vacated because it's new, because the board is forbidden from relying on new facts and rationales that were not previously presented by the examiner.

[00:08:11] Speaker 03:
But the board's position is that it's not new, that they're simply just explaining an additional basis to support the original conclusion.

[00:08:21] Speaker 03:
isn't that different than an entirely new ground of rejection?

[00:08:25] Speaker 01:
Well, in truth, the board's new rejection is the opposite of what the examiner did.

[00:08:29] Speaker 01:
The examiner maintained consistently that the combination would still provide auto retraction.

[00:08:34] Speaker 01:
The board's new rejection says that the combination results in a knife that lacks auto retraction.

[00:08:41] Speaker 01:
And that lacking of auto retraction, it's the opposite of the examiner's finding.

[00:08:45] Speaker 01:
It contradicts the examiner's finding, and it uses new findings of fact to do so.

[00:08:50] Speaker 01:
The examiner never relied on a second embodiment in Jennings, which provided a fold-to-retract knife, because it wasn't important to the examiner.

[00:08:57] Speaker 01:
It wasn't important to the issues when the record was opened before the examiner.

[00:09:02] Speaker 01:
The board newly cited that second embodiment for the first time to try to create a new definition of safety knife, whereby a safety knife could somehow be a safety knife even without auto-retraction, and that the Jennings auto-retracted.

[00:09:14] Speaker 03:
All the board was saying is that your definition of safety knife

[00:09:19] Speaker 03:
didn't make sense in light of this second embodiment in Jennings itself, right?

[00:09:24] Speaker 01:
What's important here is not my definition of safety knife.

[00:09:26] Speaker 01:
It's the definition of safety knife that the board was trying to rely on in order to justify that even if the examiner was wrong and the examiner's assertion that there would be auto retraction, that the resulting knife would still be a safety knife.

[00:09:38] Speaker 01:
That fight over safety knife is entirely new.

[00:09:41] Speaker 01:
The examiner never disputed that a safety knife required auto retraction.

[00:09:45] Speaker 01:
It was only the board that in the first instance

[00:09:49] Speaker 01:
said that this new and different combination would be obvious because the resulting knife would still be a safety knife.

[00:09:55] Speaker 01:
That decision is new because the board never made that finding.

[00:09:59] Speaker 01:
That decision is new because the board relied on a new rationale in that second embodiment in Jennings that the examiner had never touched.

[00:10:05] Speaker 01:
That decision was new because the board relied on a new and different definition of safety knife that didn't require auto retraction.

[00:10:11] Speaker 04:
OK, but I'm looking at claim one.

[00:10:14] Speaker 04:
Yes.

[00:10:14] Speaker 04:
And I'm looking for where it specifically states that this is the mode of operation.

[00:10:20] Speaker 01:
So, okay, so the mode of operation for the claim is that there has to be a lock.

[00:10:26] Speaker 04:
And what the issue... It doesn't include the limitation that you're telling us is the distinction, or if it does, it will be helpful if you could point it out.

[00:10:34] Speaker 01:
Right.

[00:10:35] Speaker 01:
The distinction between the prior art and the asserted combination is that the claim requires a lock, and that it would not be obvious to make the prior art combination.

[00:10:43] Speaker 01:
That lock is really the opposite of auto-retracting.

[00:10:45] Speaker 04:
Lock's in the prior art.

[00:10:47] Speaker 04:
So what we need is where in the claim it shows

[00:10:50] Speaker 04:
Again, the mode of operation that you just told us is the distinction.

[00:10:55] Speaker 01:
So the distinction relative to Jennings is the addition of the lock.

[00:10:59] Speaker 01:
The lock exists in the prior art in Accurate, but not in Jennings.

[00:11:02] Speaker 01:
And Jennings avoids using a lock for a very specific purpose.

[00:11:05] Speaker 04:
But the plane locks the blade.

[00:11:06] Speaker 04:
And that we know is in the prior art.

[00:11:09] Speaker 01:
Right.

[00:11:09] Speaker 01:
Both of these individual features are in the prior art.

[00:11:12] Speaker 01:
But our appellant's position is that it would not be obvious to combine these features, because Jennings specifically says that you're supposed to provide

[00:11:20] Speaker 01:
particular safety feature of auto-retraction.

[00:11:23] Speaker 01:
And auto-retraction isn't in the claim.

[00:11:25] Speaker 02:
It's the... Where does Jennings say, you know, when I say safety knife, I mean auto-retraction?

[00:11:32] Speaker 01:
So there's several places.

[00:11:34] Speaker 02:
First, if you look at Jennings... In the way that you mean it with respect to embodiment one of Jennings.

[00:11:39] Speaker 01:
Well, Jennings title is Safety Cutter or Safety Knife.

[00:11:42] Speaker 02:
Right, and then there's two embodiments.

[00:11:44] Speaker 02:
Right, there's two embodiments and as I'll get to... And then the second embodiment, the blade is in an open position and there's no need to hold the finger down on anything to

[00:11:57] Speaker 02:
keep the blade in an open position.

[00:11:59] Speaker 01:
Right.

[00:12:00] Speaker 01:
Now, this issue was never an issue before the examiner.

[00:12:03] Speaker 01:
Only in front of the board did the board say that you'd still be a safety knife without auto retraction.

[00:12:07] Speaker 02:
This was in response to your argument that safety in Jennings means something very, very specific.

[00:12:14] Speaker 01:
And we provided lots of evidence below that Jennings explains that auto retraction feature is what provides safety, that Bierman and Greiner both also define safety knife as providing auto retraction.

[00:12:25] Speaker 01:
This was never an issue before the examiner.

[00:12:27] Speaker 01:
The examiner agreed with us that there was no reason to provide additional evidence.

[00:12:30] Speaker 02:
When the board used Jennings' second embodiment to try to... Well, just looking at the two embodiments of Jennings, what do you think is the fairest understanding of what Jennings must have meant when he used the term safety?

[00:12:44] Speaker 01:
The fairest understanding from a person of ordinary skill in the art looking at this record is the main embodiment in Jennings was the safety knife, the auto-retracting embodiment.

[00:12:53] Speaker 01:
I think that it

[00:12:54] Speaker 01:
an attorney just added that second embodiment.

[00:12:57] Speaker 01:
And if you look at the detailed description of the second embodiment... So the second embodiment is something we should sweep under the rug maybe?

[00:13:02] Speaker 01:
It's not a safety knife.

[00:13:04] Speaker 01:
Nowhere in the detailed description does... Is any... So Jennings illustrated two embodiments.

[00:13:09] Speaker 02:
Yes.

[00:13:10] Speaker 02:
One that it intended to be a safety knife and one that it did not intend to be a safety knife?

[00:13:15] Speaker 01:
It never says that the second embodiment is a safety knife other than in

[00:13:19] Speaker 01:
an errant description in the drawings.

[00:13:20] Speaker 01:
The detailed description never identifies any feature of that second embodiment.

[00:13:23] Speaker 02:
An errant description of the drawings to have labeled embodiment number two in Jennings as a safety knife?

[00:13:29] Speaker 01:
Yes.

[00:13:30] Speaker 01:
It is, because Jennings identifies nothing about that second embodiment that would provide safety.

[00:13:36] Speaker 01:
Basically, the board is saying that any knife that folds is a safety knife.

[00:13:40] Speaker 01:
But that just doesn't make sense.

[00:13:42] Speaker 01:
A switchblade would be a safety knife under that definition, because a switchblade can fold closed, but nobody would consider a switchblade to be a safety

[00:13:49] Speaker 01:
So, but again, this is an issue that the board raised for the first time on appeal, not just in response to appellant's arguments, but in order to justify its new finding that you could eliminate the auto-retraction safety feature, yet still be obvious because you still, according to the board, have a safety knife.

[00:14:07] Speaker 01:
This isn't just a rebuttal of appellant's arguments.

[00:14:10] Speaker 01:
The board is making new findings to justify a new and different rejection.

[00:14:13] Speaker 02:
Why wouldn't it still be safe?

[00:14:15] Speaker 02:
Because you have the ability to retract the blade

[00:14:19] Speaker 02:
into the housing.

[00:14:20] Speaker 02:
The blade isn't just permanently sticking out all the time.

[00:14:24] Speaker 02:
But you have an opportunity, if you like, to bring it back into the housing so that it won't, you know, unintentionally stick somebody.

[00:14:34] Speaker 01:
There are lots of ways that a blade can be protected.

[00:14:36] Speaker 01:
But if you look at the art and everything that was available to the examiner, Beerman, Griner, and Jennings, they all explained that the safety knives provided auto-retracting.

[00:14:46] Speaker 01:
So there was a fail-safe retraction

[00:14:49] Speaker 01:
That second embodiment in Jennings does not provide fail-safe retraction.

[00:14:53] Speaker 01:
Once it's open, it's open.

[00:14:54] Speaker 01:
If you drop it, it'll go through your foot.

[00:14:56] Speaker 01:
It does not auto-retract.

[00:14:59] Speaker 01:
It doesn't provide the safety feature that was the focus of what those ordinary skill in the art understood to be a safety knife.

[00:15:06] Speaker 01:
And I'll try to reserve what little time I have left.

[00:15:08] Speaker 04:
Thank you.

[00:15:08] Speaker 04:
Let's hear from the office.

[00:15:12] Speaker 00:
May it please the court.

[00:15:13] Speaker 00:
I just wanted to address two points that were made.

[00:15:17] Speaker 00:
I think the first thing is this auto-retraction discussion is a little bit distracting because auto-retraction is not required by Jennings.

[00:15:25] Speaker 00:
As you pointed out, Judge Chen, Jennings never says that the auto-retraction feature is the central feature to it.

[00:15:34] Speaker 00:
And if we look at the abstract, for example, on 525, we say, and as the opponent had admitted, that the feature that Jennings considers the safety feature is that it folds.

[00:15:47] Speaker 00:
So that's referenced on APPX 25 in the abstract.

[00:15:52] Speaker 00:
They said that it's adapted to be safely folded.

[00:15:55] Speaker 00:
And then again, if we look at 533, it says safety cutters that include, I'm on paragraph two, that include ergonomic handles to adapt it to be safely folded.

[00:16:10] Speaker 00:
And then if we look at the brief description of the drawings, when they talk about the embodiment two,

[00:16:17] Speaker 00:
figures 8 through 17, 12 to 21 all call it a pocket safety cutter.

[00:16:25] Speaker 00:
So I don't think that that's fair to say that's an errant or clerical mistake in Jennings.

[00:16:30] Speaker 00:
The fact that the safety cutter, the safety feature that Jennings envisions is the fact that it can be folded.

[00:16:37] Speaker 00:
So the auto retraction feature is not required to be

[00:16:43] Speaker 00:
retained and when we talk about the claims, the claims are simply to a foldable knife having a manually operable lock.

[00:16:51] Speaker 00:
The fact is that Jennings has the foldable knife aspect of it, accurate no dispute that it has the manually operable lock.

[00:17:01] Speaker 00:
I also wanted to take issue with the fact that this safety question was not before the examiner.

[00:17:08] Speaker 00:
If we look at

[00:17:12] Speaker 00:
you know, some of the statements made by the examiner.

[00:17:19] Speaker 00:
So if we look at, for example, APPX 351, they talk about how the non-locking and the locking blades are both desirable configurations, and then to switch from one to the other is not destroying the reference, but merely catering to consumer preference.

[00:17:36] Speaker 00:
So the examiner was certainly making the same rejection as the board, the combination

[00:17:41] Speaker 00:
of a foldable lock and a manual lock.

[00:17:44] Speaker 00:
And again, in their appeal brief, they had also argued, again, the examiner, sorry, again in 441 talks about the principle operation of denning this to cut boxes and that they say that the modification

[00:18:11] Speaker 00:
may provide the user with a lock while still maintaining the ability to be a safety knife.

[00:18:17] Speaker 00:
So this issue of retaining Jennings as a safety knife was before both the board and the examiner.

[00:18:24] Speaker 00:
If we turn to the site that I was looking for is on 370, where in their appeal brief to the board,

[00:18:41] Speaker 00:
appealing the examiner's rejection, they talked about it would not have been obvious to further modify the knife because the modification would defeat the central auto-retracting safety feature.

[00:18:53] Speaker 00:
So this was not a new issue that was not before the examiner.

[00:18:56] Speaker 00:
This was before both the examiner and the board.

[00:18:59] Speaker 00:
And the board simply pointing out the fallacy of, you know, they were saying, hey, Jennings requires this auto-retraction feature.

[00:19:07] Speaker 00:
And the board was saying, well, no, that's not the main feature of

[00:19:11] Speaker 00:
Jennings as the safety feature, was not a new rejection.

[00:19:15] Speaker 00:
It was simply pointing out the fallacy of the argument that they were trying to make.

[00:19:20] Speaker 04:
So is it correct that some claims were allowed?

[00:19:23] Speaker 00:
No, it's not correct.

[00:19:25] Speaker 04:
No claims were allowed.

[00:19:26] Speaker 04:
OK, so that the claims that aren't mentioned, like claim four, had been canceled?

[00:19:30] Speaker 04:
Correct, yep.

[00:19:32] Speaker 00:
OK.

[00:19:33] Speaker 00:
Are there any further questions?

[00:19:35] Speaker 00:
I'll yield the rest of my time.

[00:19:38] Speaker 04:
Any questions?

[00:19:39] Speaker 04:
OK, thank you.

[00:19:43] Speaker 01:
I'd like to make one main point.

[00:19:45] Speaker 01:
The director argues that auto retraction is not required by Jennings.

[00:19:49] Speaker 01:
That misses the point.

[00:19:50] Speaker 01:
Auto retraction is required by the examiner's rejections in the board's findings.

[00:19:54] Speaker 01:
The board based obviousness on its findings that the modified knife would still provide auto retraction.

[00:20:00] Speaker 01:
It would not.

[00:20:01] Speaker 01:
That finding is error and demands reversal.

[00:20:04] Speaker 01:
Second, the director argues that the same issue was before the examiner.

[00:20:07] Speaker 01:
It couldn't have been.

[00:20:09] Speaker 01:
The examiner argued at all points that the combination would still provide auto retraction.

[00:20:13] Speaker 01:
The board's new rejection saying that the proposed combination would lack auto retraction is contradictory to what the examiner found.

[00:20:21] Speaker 01:
So it is new and was not before the board.

[00:20:23] Speaker 04:
So which of your claims then include this specific limitation that you keep arguing to us?

[00:20:31] Speaker 04:
Obviously not claim one.

[00:20:32] Speaker 01:
It is claim one.

[00:20:33] Speaker 01:
Claim one requires a lock.

[00:20:35] Speaker 04:
I'm not... All they're requiring claim one is a lock.

[00:20:37] Speaker 04:
Yes, claim one requires... There's nothing automatic about it.

[00:20:39] Speaker 04:
It just requires a lock.

[00:20:41] Speaker 01:
Right.

[00:20:41] Speaker 01:
But we argued that it wouldn't have been obvious to add that lock to Jennings because Jennings says that it's important to provide auto retraction.

[00:20:48] Speaker 01:
In response, the board found that the combination of Jennings and Ackert or Griner would still provide that lock and would be obvious because it would still have that safety feature, that auto retraction safety feature.

[00:21:01] Speaker 01:
So let me try to phrase that a little better.

[00:21:04] Speaker 01:
The board found that the proposed combination was obvious because it would still provide that auto retraction safety feature.

[00:21:10] Speaker 01:
It's the board's finding.

[00:21:11] Speaker 01:
that demanded the auto retraction still be there.

[00:21:14] Speaker 01:
Because it was the basis of the board's assertion that the combination would be obvious.

[00:21:18] Speaker 01:
That finding is false.

[00:21:20] Speaker 01:
So the auto retraction is not in a claim.

[00:21:23] Speaker 01:
Auto retraction is a finding by the board that justified the obviousness of the combination of prior art.

[00:21:31] Speaker 01:
And because that board's finding that the proposed combination would still have auto retraction is false, the board's consequential finding that it would be obvious to make that combination

[00:21:40] Speaker 01:
must also be reversed.

[00:21:44] Speaker 04:
Thank you.

[00:21:47] Speaker 04:
Thank you both.

[00:21:48] Speaker 04:
The case is taken into submission.