[00:00:00] Speaker 03:
We will hear argument next in case number 241035, Inrei Shalovalov.

[00:00:11] Speaker 01:
How are you pronouncing it?

[00:00:13] Speaker 03:
You would know.

[00:00:14] Speaker 03:
Correct me.

[00:00:15] Speaker 01:
Oh, it says Shalovalov.

[00:00:16] Speaker 03:
Shalovalov, OK.

[00:00:27] Speaker 01:
May it please the court?

[00:00:29] Speaker 01:
I invite you to ask any questions you have.

[00:00:33] Speaker 01:
The missile that I received from the clerk says that you're already familiar with the case.

[00:00:41] Speaker 03:
So you went through it.

[00:00:42] Speaker 03:
So what's important for you?

[00:00:44] Speaker 01:
For me, the major thing is anticipation.

[00:00:48] Speaker 01:
With the issue of anticipation,

[00:00:53] Speaker 01:
Resolved in the patent he's favor, I can go forward with claims 1 through 5.

[00:01:02] Speaker 01:
Without anticipation resolved, there's a few limitations, to say the least.

[00:01:10] Speaker 01:
This is a patent application, 173604.

[00:01:15] Speaker 01:
604 is my understanding, the way it's referred to, of a mirror

[00:01:24] Speaker 01:
mounted at eye level providing a rear view.

[00:01:29] Speaker 04:
Why do you think Anderson is not anticipatory?

[00:01:33] Speaker 01:
Because it doesn't show a mirror that blocks the vision of one eye, all right, like this.

[00:01:43] Speaker 01:
So a person can see forward and a person can see forward with a mirror blocking the view to the rear

[00:01:53] Speaker 01:
of my design.

[00:02:01] Speaker 01:
And Anderson seems to be an attempt to get a compound patent.

[00:02:08] Speaker 04:
And you think that that limitation you're relying on in your claim is the one that says positionable for use in front of one eye?

[00:02:17] Speaker 01:
Yes, Your Honor.

[00:02:18] Speaker 04:
Could something be positionable for use in front of one eye without blocking it?

[00:02:29] Speaker 01:
That's my contention.

[00:02:33] Speaker 01:
This small item can be mounted on a cap so that it blocks the eye.

[00:02:45] Speaker 01:
on the left.

[00:02:46] Speaker 01:
Let's say you're looking forward with the right eye.

[00:02:50] Speaker 01:
And it provides a view to the rear that a person can be confident provides him enough information so he doesn't get hit by a truck.

[00:03:01] Speaker 01:
And that's the whole idea.

[00:03:07] Speaker 01:
The Anderson application seems to, if you take a look at his first figure, it has a

[00:03:15] Speaker 01:
a mirror mounted not in front of the eye and consequently doesn't have the same machine.

[00:03:26] Speaker 01:
And I can't tell what machine he has.

[00:03:28] Speaker 01:
He has simply a bunch of things like being given a Lego box and coming with some idea for some useful thing from it.

[00:03:39] Speaker 01:
If you take a look at the

[00:03:44] Speaker 01:
Like I say, the first figure of his patent application.

[00:03:57] Speaker 03:
So does this argument depend on the clause positionable for use in front of one eye?

[00:04:06] Speaker 01:
in front of one eye, which I describe in my specifications.

[00:04:10] Speaker 03:
Do you have the board's opinion in front of you?

[00:04:15] Speaker 01:
I have his opinion somewhere.

[00:04:17] Speaker 03:
What does the board say about how Anderson teaches that element?

[00:04:25] Speaker 01:
Let's see.

[00:04:25] Speaker 01:
I have specifically here.

[00:04:35] Speaker 01:
They recite what the PE said.

[00:04:40] Speaker 01:
And the PE says that it is implicit that one have visibility forward.

[00:04:50] Speaker 01:
And that said to me that the PE was not familiar with my claim.

[00:04:57] Speaker 02:
Well, certainly, in your claim, at least one eye has to be able to see forward.

[00:05:01] Speaker 02:
Otherwise, you're going to have a problem.

[00:05:03] Speaker 01:
Yes, Your Honor.

[00:05:05] Speaker 01:
The right eye can see around the mirror to the left.

[00:05:09] Speaker 02:
So where is the lack of substantial evidence to support the examiner's understanding of Anderson on that point?

[00:05:18] Speaker 02:
That it is implicit the operator using the Anderson device is still able to move forward, so they must be able to see.

[00:05:25] Speaker 01:
They can't see, but they don't have the view with the right eye at the same time that my machine provides.

[00:05:36] Speaker 01:
And Enrey Morosa says that the examiner has to come forward.

[00:05:41] Speaker 01:
I call Morosa Enrey Morosa.

[00:05:44] Speaker 01:
It's the circuit's opinion in 2013 that once I challenge

[00:05:53] Speaker 01:
the assertion that there is anticipation, the patent examiner has to come back with something about how it can be functional or operational.

[00:06:10] Speaker 01:
And I think that the PTAB disregarded that assertion.

[00:06:18] Speaker 01:
I said at Appendix 388, as described, applicant intends it cannot be determined that the mounting system would be functional in actual use.

[00:06:32] Speaker 01:
And I also said in my specification what in front of one eye meant.

[00:06:39] Speaker 01:
In front of one eye.

[00:06:41] Speaker 01:
How to aim the device.

[00:06:45] Speaker 01:
You can actually see part of one eye.

[00:06:50] Speaker 01:
And that's what distinguishes my application from the Anderson application.

[00:07:03] Speaker 01:
Am I clear with what I'm saying here, whether or not it comports with the law?

[00:07:10] Speaker 04:
Your view is that there wasn't appropriate consideration of the claim limitation, saying that the near part is mounted in front of an eye.

[00:07:22] Speaker 01:
Yes, ma'am.

[00:07:23] Speaker 01:
Yes, Your Honor.

[00:07:25] Speaker 01:
If you take a look at it.

[00:07:26] Speaker 04:
Do you know what the examiner said?

[00:07:28] Speaker 04:
You have the board saying the examiner is correct.

[00:07:31] Speaker 04:
Do you recall what the examiner said and relied on in Anderson?

[00:07:35] Speaker 01:
No.

[00:07:36] Speaker 01:
Except that it was implicit with a mirror, let's say a bicycle mirror, to be able to see forward.

[00:07:44] Speaker 01:
That's what he said.

[00:07:46] Speaker 04:
But your view is it doesn't matter.

[00:07:48] Speaker 04:
Your claim requires that something be positioned in front of the eye.

[00:07:51] Speaker 01:
Your Honor, I think it was a tortured evaluation beyond what would be reasonable

[00:08:00] Speaker 01:
And I think that was error in itself.

[00:08:07] Speaker 03:
And do you happen to have in front of you, where in your appeal to the board, you focused on this claim element, the position in front of the position of the board?

[00:08:25] Speaker 01:
It's in my specification.

[00:08:26] Speaker 03:
No, no.

[00:08:26] Speaker 03:
I'm talking about what you argued to the board.

[00:08:29] Speaker 01:
Yes, Your Honor.

[00:08:31] Speaker 01:
I'm not familiar.

[00:08:33] Speaker 01:
I read the opinions.

[00:08:34] Speaker 01:
But in that aspect, I can't tell you right here, right now.

[00:08:40] Speaker 01:
I could take up more of your time.

[00:08:42] Speaker 03:
That's OK.

[00:08:43] Speaker 03:
Why don't we hear from the government, and then you'll get some rebuttal time.

[00:08:48] Speaker 01:
If I may, there's a couple other things.

[00:08:52] Speaker 01:
Quickly, a matter of indefiniteness is also raised by the board.

[00:08:59] Speaker 01:
The indefiniteness says that plain R is an indefinite term.

[00:09:06] Speaker 04:
I think it's the idea that you have a claim that says there's a plainer element that comprises a bent element.

[00:09:16] Speaker 04:
And that's where the indefiniteness comes in.

[00:09:19] Speaker 04:
It's really just a matter of modifying those claims a little bit that would overcome that, I'm fairly certain.

[00:09:27] Speaker 01:
Well, I think it's clear in the record that at least one supervisor thought I should put in a bendable mirror.

[00:09:38] Speaker 01:
But the reason why the claim says planar is because it starts out as planar.

[00:09:46] Speaker 01:
Figure one is planar.

[00:09:47] Speaker 01:
If you take a look at the patentee application, which is my application, it's planar.

[00:09:53] Speaker 01:
And it's planar for a reason.

[00:09:56] Speaker 04:
But what about if you, I don't want to sit here and tell you to rate your claims, but you've got a one-piece planar mirror surface further comprising a bent tab.

[00:10:07] Speaker 04:
And so to have a planar mirror surface comprise a bent tab is inconsistent, right?

[00:10:17] Speaker 04:
And so if you said a planar mirror surface and then a bent tab,

[00:10:23] Speaker 04:
It doesn't have to be part of the planar mirror surface.

[00:10:25] Speaker 04:
So it's a separate element or attached to it.

[00:10:28] Speaker 04:
That would solve your indefiniteness problem.

[00:10:32] Speaker 01:
Well, since that is an issue, I agree.

[00:10:36] Speaker 04:
Right.

[00:10:38] Speaker 01:
OK.

[00:10:38] Speaker 02:
How's that?

[00:10:38] Speaker 02:
Thank you.

[00:10:39] Speaker 02:
But this was a suggested amendment that apparently you chose not to make?

[00:10:44] Speaker 01:
At the time, because every time I made an amendment,

[00:10:48] Speaker 01:
It seemed that the prosecution process got longer with something else.

[00:10:57] Speaker 01:
And the only way to be certain that I could resolve this was to raise the big question, which was anticipation.

[00:11:08] Speaker 01:
And I don't completely agree with the presumptions here about a patent.

[00:11:18] Speaker 01:
Or not the patent, the presumption about something that is already a patent and enablement, I do agree with.

[00:11:28] Speaker 01:
But a publication and a patent application can be a publication.

[00:11:36] Speaker 01:
The presumption, I think, Morse dealt with once functionality or operability is challenged.

[00:11:48] Speaker 01:
And to have the PTAB make up its own rules and disregard MORSA allows an agency to disregard a court opinion.

[00:12:00] Speaker 01:
And the Patent Office, the PTAB, also said that the absence of a challenge by an application that had been abandoned could be evidence

[00:12:16] Speaker 01:
that it was functional.

[00:12:19] Speaker 01:
And I don't think that that is an appropriate precedent for the PTAB as an agency to set up for themselves, particularly in light of NRA more so.

[00:12:33] Speaker 01:
And I think with the recent decision by the U.S.

[00:12:35] Speaker 01:
Supreme Court in Bright and the recent challenges

[00:12:46] Speaker 01:
I raise that issue also, so I'll take your suggestion and allow the Patent Office to do what they need to do.

[00:13:14] Speaker 00:
Good morning, Your Honors, and may it please the court.

[00:13:17] Speaker 00:
I'd like to just quickly address the enablement issue since that was the last thing we discussed.

[00:13:22] Speaker 03:
Why don't you start with Anderson, would you?

[00:13:24] Speaker 00:
Sure.

[00:13:24] Speaker 00:
OK.

[00:13:24] Speaker 00:
The Anderson appellant has not pointed to any claim limitation in Anderson that's, claim limitation in claim one that Anderson doesn't read on.

[00:13:35] Speaker 04:
What about, he argues that Anderson doesn't teach that there's a mirror surface or a vent tab

[00:13:44] Speaker 00:
Yeah, I guess it's mirror service positionable for use in front of one eye This is the blocking the eye that we just discussed now That was not brought up as an argument in front of the board so the board didn't have a chance to discuss whether Positionable in front of the eye has to or doesn't have to block

[00:14:05] Speaker 00:
The vision of the eye in fact there is a claim limitation at the end of claim one that says what about what about just positionable for use in front of the eye?

[00:14:14] Speaker 04:
Without blocking forget about the blocking, but just that it sits where it sits is in front of the eye.

[00:14:20] Speaker 00:
Yes Anderson Functions a lot like the mirror that with a tab where it sits on a halo frame

[00:14:31] Speaker 00:
That's mounted with a tab in front of one eye.

[00:14:35] Speaker 04:
Would you have a particular page, either a figure or some description in the specification that would support that Anderson positions in front of the eye?

[00:14:50] Speaker 00:
Yes.

[00:14:51] Speaker 00:
Well, we can first just quickly look at the first page of Anderson, which is on Appendix 656, and that shows

[00:15:00] Speaker 00:
helmet with the halo system and in the abstract In sort of the middle of the abstract Anderson says that it's a rearview mirror component is slidingly positioned in the halo band adjustably oriented to provide It rearward view to the wearer of the headgear, so it has to be in front of you

[00:15:23] Speaker 04:
And you're saying when it slides, it can slide forward?

[00:15:27] Speaker 00:
Yes, and if we look at, if you don't mind looking at figures 9A through 10B, you can see the halo in 9A and 9B alone with, that's sort of on a cap in 9B.

[00:15:46] Speaker 00:
And then in the rest of the figures, you can see how it extends in front of the front of the cap.

[00:15:58] Speaker 00:
And then Anderson describes the mirror and headgear in paragraph 13 that's on 668.

[00:16:12] Speaker 00:
And in paragraph 13, it says, the objectives of the present invention are fulfilled by providing a system for retaining and adjustably positioning a rear view mirror on a helmet or other item of headgear.

[00:16:28] Speaker 00:
The system includes a flexible, resilient halo band of clear polymer plastic, et cetera, removeably attachable at each end, thereof to the sides of the helmet, and extended radially around the front of the helmet across the field of view.

[00:16:46] Speaker 00:
Again, that's it.

[00:16:46] Speaker 00:
Appendix 668.

[00:16:48] Speaker 03:
Starting with the examiner, what did the examiner say about this particular element of the claims and their application to Anderson?

[00:17:02] Speaker 00:
On Appendix 404, that's the final office action, the second full paragraph is where the examiner essentially maps the claim to

[00:17:18] Speaker 00:
the Anderson reference.

[00:17:20] Speaker 00:
And let me just see.

[00:17:25] Speaker 04:
At the very... Inherent?

[00:17:27] Speaker 00:
Yes.

[00:17:27] Speaker 04:
So it's positionable for use in front of the one eye, inherent, since it's viewable by the user.

[00:17:32] Speaker 00:
Exactly, yes.

[00:17:35] Speaker 00:
And as you can see from the figures and the description, Anderson does sort of function similar to the way it's described in the 604 specification, where the mirror is in front

[00:17:48] Speaker 03:
So the examiner says this and then what happens in the PTO proceedings?

[00:17:56] Speaker 03:
This is the final office action and then there's the appeal.

[00:18:02] Speaker 03:
And does the appeal brief take issue with this?

[00:18:07] Speaker 00:
The appeal brief did not take issue with this.

[00:18:12] Speaker 00:
limitation at all and Would it be and the examiner's answer which then follows doesn't get back into this point That's correct because there is no argument and so it had it was it is forfeited There's no argument about that claim limitation the there was some argument about The enablement issue but not that claim limitation and on appeal

[00:18:42] Speaker 00:
There's some argument about three different claim limitations, one of which is this one.

[00:18:48] Speaker 00:
And those other two were also not argued at the board.

[00:18:56] Speaker 00:
I'd like to address the indefiniteness rejection just quickly.

[00:19:03] Speaker 00:
The board properly found that the planar surface, comprising within it a bent tab, renders the claim indefinite, even

[00:19:12] Speaker 00:
Even read in the light of the specification, this contradiction isn't cured.

[00:19:17] Speaker 00:
And so it doesn't apprise the public of the boundaries of what's claimed.

[00:19:23] Speaker 00:
And the applicant had some opportunity to amend and did not amend.

[00:19:30] Speaker 03:
Does that opportunity still exist?

[00:19:34] Speaker 00:
No.

[00:19:36] Speaker 00:
Although there is always opportunity to file a continuation.

[00:19:42] Speaker 00:
before this court opinion is mandated.

[00:19:47] Speaker 03:
So a continuation application would have to be filed before this court decides this case in order to keep the priority date?

[00:19:55] Speaker 03:
Correct.

[00:19:56] Speaker 02:
Is it before, excuse me, the mandate issues or before the opinion issues?

[00:20:02] Speaker 00:
I believe it's before the mandate issues, Your Honor.

[00:20:05] Speaker 02:
Did you want to say anything about MORSA?

[00:20:07] Speaker 02:
We heard repeated reference to it today.

[00:20:12] Speaker 00:
My response is that this court's case law in Antor Media and Amgen has held that there is a presumption of enablement and an anticipating reference.

[00:20:25] Speaker 00:
And the appellant must make a nonconclusory argument that it is not enabled before the examiner has to respond to it.

[00:20:37] Speaker 00:
And here, the board determined that the arguments were just conclusory.

[00:20:41] Speaker 00:
It didn't have any wands factors in it and didn't make any any real Argument that the anderson reference is not enabled There are no other questions we asked you for thank you Thank you So I have three minutes reserve for rebuttal

[00:21:04] Speaker 03:
But you don't get all three minutes, because you use some of it.

[00:21:07] Speaker 03:
You get two minutes and 36 seconds.

[00:21:10] Speaker 03:
Come on.

[00:21:10] Speaker 03:
You've got it.

[00:21:11] Speaker 03:
It says it right there on the lectern.

[00:21:14] Speaker 01:
Anyway, Morrissa is a 2013 this circuit case.

[00:21:23] Speaker 01:
It comes after Amgen and Antwerp.

[00:21:27] Speaker 01:
And what it says appears in the MPEP as a footnote.

[00:21:32] Speaker 01:
So it's not as if.

[00:21:34] Speaker 01:
The patent examiner could claim that it didn't exist.

[00:21:42] Speaker 01:
It's in the MPEP.

[00:21:44] Speaker 01:
I checked recently.

[00:21:45] Speaker 01:
They're updated.

[00:21:47] Speaker 01:
MPEP has a citation to the case.

[00:21:50] Speaker 01:
So I think it applies here.

[00:21:53] Speaker 01:
And if the PTAB addressed issues that weren't

[00:22:02] Speaker 01:
They weren't properly addressed in my brief, which is quite possible.

[00:22:08] Speaker 01:
This is my first patent application.

[00:22:12] Speaker 01:
And I don't hold myself out as a registered patent attorney.

[00:22:21] Speaker 01:
But if they addressed it in their opinion, I think it was susceptible of being argued here on the appeal.

[00:22:31] Speaker 01:
If there's an argument that I waived something, then there's an argument that there wasn't such a waiver in my appellant's brief to raise an issue that the PTAB could address.

[00:22:47] Speaker 01:
So there you go.

[00:22:49] Speaker 01:
That's it.

[00:22:50] Speaker 01:
Thank you very much.

[00:22:51] Speaker 03:
Thank you, justices.

[00:22:52] Speaker 03:
Thanks to all counsel.

[00:22:54] Speaker 03:
The case is submitted.

[00:22:55] Speaker 03:
That completes our business for today.