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2012-1006(Serial No. 11/429,507)
In The
United States Court of Appealsfor The Federal Circuit
IN RE JASON ARTHUR TAYLOR,REBECCA ANN ZELTINGER,
and JOHN G. COSBY, JR., Appellants.
Appeal from the United States Patent and Trademark Office,Board of Patent Appeals and Interferences.
REPLY BRIEF OF APPELLANTS
Rebecca A. ZeltingerDirector of OperationsTECHNOLOGY ADVANCEMENT LABS LLC2710 Calgary AvenueKensington, MD 20895(301) 277-1909
Pro se Appellant March 26, 2012
TABLE OF CONTENTS
TABLE OF AUTHORITIES …………………………………………ii
I. Introduction .......................................................................................1
II. Points of Agreement and Other Simplifications ..............................2
III. The Potentially Simplifying “Binding” Element............................5
IV. Reply to Solicitor’s Anticipation Arguments...............................11
V. Reply to the Solicitor’s Obviousness Arguments..........................15
VI. Reply to the Solicitor’s Preamble Arguments..............................18
VII. Reply to the Solicitor’s Written Description Arguments............25
VIII. Hypothetical Implications of Possible Holdings .......................30
IX. Conclusion....................................................................................31
PROOF OF SERVICE
CERTIFICATE OF COMPLIANCE
i
TABLE OF AUTHORITIES
Page(s)Cases:
American Medical Systems, Inc. v. Biolitec, Inc,618 F.3d 1354 (Fed. Cir. 2010)………………..……………………...24
Catalina Mktg. Int'l Inc. v. Coolsavings.com, Inc.,289 F.3d 801 (Fed. Cir. 2002)…………………………………..……24
Colo. River Water Conservation Dist. v. United States,424 U.S. 800 (1976)…………………………………………………..31
Epperson v. Arkansas,393 U.S. 97 (1968)……………………………………………………30
Gechter v. Davidson,116 F.3d 1454 (Fed. Cir. 1997)……………………………………….11
Hyatt v. Dudas,492 F.3d 1365 (Fed. Cir. 2007)…………………………………….…29
In re Arkley,455 F.2d 586 (CCPA 1972)…………………………………………..12
In re Beaver,893 F.2d 329 (Fed. Cir. 1989)………………………………………...26
In re Bigio,381 F.3d 1320 (Fed. Cir. 2004)……………………….…………..19-21
In re Bulloch,604 F.2d 1362 (CCPA 1979)………………………………………....24
ii
In re Zletz,893 F.2d 319 (Fed. Cir. 1989)……………………………….…..……21
In re Zurko,258 F.3d 1379 (Fed. Cir. 2001)…………………………………..passim
Invitrogen Corp. v. Biocrest Mfg., L.P.,327 F.3d 1364 (Fed. Cir. 2003)…………………………....………22, 24
Net MoneyIn v. Verisign,545 F.3d 1359 (Fed. Cir. 2008)…………………………………………9
Rowe v. Dror,112 F.3d 473 (Fed. Cir. 1997)…………………..………………….21-22
Securities & Exchange Commission v. Chenery Corporation,318 U.S. 80 (1943)……………………………………………..……...22
SmithKline Beecham Corp. v. Apotex Corp.,439 F.3d 1312, 1319 (Fed. Cir. 2006)…………………………..……..22
Translogic Tech., Inc. v. Hitachi, Ltd.,2005-1387 (Fed. Cir. 2007) (unpublished)………………………..…..20
Statutes:
35 U.S.C. § 102……………………………………………………...10, 30-31
35 U.S.C. § 103(a)…………………………………………………..…….…15
35 U.S.C. § 112……..……………………………………………………25, 27
35 U.S.C. § 144…………………………………………………………..22, 31
Regulations:
iii
37 C.F.R. § 1.75(b)…………………………………………………………..……17
37 C.F.R. § 41.50(b)………………..………………………………………....21, 25
Other Authorities:
MPEP § 1207.02………………………………………………………………..…26
MPEP § 2111.02(II)…………………………………………………………….…20
iv
I. IntroductionThe United States Patent and Trademark Office’s Solicitor is hereby thanked for
the Appellee’s Brief which supplies additional clarity on the reasons for the
rejection of Taylor’s claims. While the primary goal of this Reply Brief is
obviously to respond with particularity to the Solicitor’s points, secondary goals
include highlighting:
which points are in agreement and disagreement in the two previous briefs
before this Court,
which arguments now raised by the Solicitor are new and, therefore, waived,
and
which of the many possible paths might be simplest to obtain a dispositive
yet fair decision.
To effectively achieve these subgoals, the topical ordering of issues was altered
slightly. While this Reply Brief does not exactly follow that of the PTO’s Brief, it
is reasonably close, and ends up addressing issues reviewed with deference first, as
was done by the PTO.
1
Pursuant to the Court’s Guide for Pro Se Petitioners and Appellants,1 no oral
hearing is being requested for this case. For this reason, and because of Fed. Cir. R.
32.1(c), a brief discussion is also submitted concerning the hypothetical
ramifications, if any, of the possible decisions that this Court might make.
However, this particular section has no bearing on the merits of this case.
II. Points of Agreement and Other SimplificationsThe PTO’s Statement of the Facts (PTO2 at 3-17) is in significant conflict with
the record on appeal. While some of these disputes are trivial (e.g., “>” vs. “ ”;
PTO at 3¶2), others are not (e.g., calorie and fiber limits are neither limiting nor
structural; PTO at 4¶1). However, Taylor agrees with the PTO’s Statement of the
Case. (PTO at 2¶3-3¶1)
Before attempting to jump into the myriad other discrepancies, it may be useful
to consider the most obvious method of minimizing the number of issues that
might be required to be resolved by this Court. A reasonable approach might be to
focus on areas where Taylor’s and the PTO’s briefs somewhat agree, and then to
determine whether or not within that partial “agreement zone” there might be any
1 Accessed at http://www.cafc.uscourts.gov/rules-of-practice/pro-se.html on March25, 2012.2 “PTO” refers to the Brief for Appellee–Director of the United States Patent andTrademark Office, filed March 9, 2012.
2
“low hanging fruit” that might lead towards actionable disposition of the case if, as
a gedanken experiment, the Solicitor’s position is taken for granted and the other
issues either in dispute or in potential conflict with the actual record on appeal are
temporarily set aside.
Unfortunately, the preliminary foundation of any anticipation and obviousness
rejections is claim construction, and it is strongly disputed in this case. Even
worse, determination of an “agreement zone” is nontrivial because the PTO’s own
constructions vary and are inconsistent. According to Taylor, none of Taylor’s
claim elements are within Akkaway. Therefore, the element that is most
consistently treated within the PTO’s Brief can be isolated for discussion.
According to the PTO, the two independent claims have 5, 4, or 2 actual claim
elements carrying patentable weight, depending on what portion of the PTO’s Brief
one is reading. For instance, the PTO adopts two contradicting claim constructions
regarding the preambles of the independent claims (ones with and without
patentable weight), arguing, inter alia, that it would have been obvious to have
modified Akkaway to make it, e.g., low calorie. (PTO at, e.g., 13¶1, 19¶1, & 31¶1;
cf. 27¶2) Therefore, these portions of the independent claims are not ideal picks
for the purposes of simplification.
3
More promising claim region targets are the claim bodies. The broadest of the
PTO’s various “broadest reasonable” constructions holds only two largely similar
paired elements per claim, for a total of four elements to consider overall.
Unfortunately, the PTO again pushes towards obfuscation of the real reasons for its
rejections, as the first paired set is constructed identically in some portions of its
Brief, but differently elsewhere.3 Luckily, the second set of claim elements is
constructed exactly the same in the PTO’s Brief. As this second set is the only
claim element common to all of the Solicitor’s various constructions, it is the first
candidate that should probably be considered if an efficient disposition of this case
is desired. Therefore, for the potential benefit of the Court, this claim element is
now discussed and with hopefully more clarity than was done in the Opening Brief.
If substantial evidence does not support Akkaway et al. (U.S. Patent No.
5,976,598) (hereinafter “Akkaway”) having or obviating this element, this
endeavor of adding two extra sections in the interest of simplifying the analysis of
the PTO’s Brief may not have been in vain.
3 While the PTO initially argues that there is a third structural limitation to claim58, they also argue that it is only an inherent intended result, and, therefore,effectively not nonlimiting. (PTO at 31)
4
III. The Potentially Simplifying “Binding” Element
The Solicitor consistently argues that Taylor’s claim construction is wrong, and
all of Taylor’s appealed claims should be constructed with the following element:
(2) enough hydrocolloids to help the mix bind water
(PTO at 23¶2 and 30¶2) The Solicitor further argues that claims 1 and 58 are
structurally identical.4 The PTO relies upon the assertion that Akkaway’s coated
cellulose can be the cellulose in the other portion of Taylor’s claims 1 and 58
consistently deemed having patentable weight.
Taylor argued that this is probably impossible, because something hydrophobic
should repel water. (Taylor5 at 48-52) The PTO disagreed. The Solicitor’s
reasoning was as follows:
In particular, Taylor asserts - without any evidentiary basis - that thecoated cellulose used in Akkaway's flour replacement would notfunction the way that hydrophilic celluloses “readily obtainable on theopen market” and found in “nature” do. Id As the Examinerrepeatedly explained, as currently drafted, the claims on appeal do notlimit the type of cellulose that may be used in the claimed mixaccording to either surface modifications or hydrophilicity: “There isnothing in the claims rejected that differentiate the claimed cellulosefrom the cellulose in Akkaway. There is no limitation on hydrophobicor hydrophilic, coated or uncoated. Claim 1 requires cellulose and
4 See PTO at 1-2, 12¶1, 14¶1, 17¶¶2-3, 18¶1, 19¶3, & 30¶2-31 and, moreparticularly, the use of the plural word “claims” and the phrase “and/or.” The PTOdid not dispute this interpretation of their position. (Taylor at 56¶2)5 “Taylor” refers to the Brief of Appellants, filed December 27, 2011.
5
Akkaway discloses cellulose.” …. Akkaway's flour replacementmade with artificial sweetener - which contains 10% by dry weighthydrocolloid - must also contain enough hydrocolloid to help theflour replacement bind water. (A76) Thus, Akkaway teaches both ofthe structural limitations found in the body of claim 1. (Emphasessupplied.)
(PTO at 24-25) These statements relied upon by the Solicitor in order for
Akkaway to meet the claims as even he constructs them are unsupported by
substantial evidence. To better understand the underlying reason, first consider
that the original rejection was predicated on the assumption that Akkaway’s
examples used not coated cellulose, but alpha cellulose. A85¶2. This was later
admitted to be false, because Akkaway’s examples allegedly with potential
hydrocolloids used as an input not cellulose (congruent with Taylor’s A55-A56),
but a separately created new product, previously coated cellulose. The PTO later
reasoned even though there is a hydrophobic coating, it would not prevent Taylor’s
claim limitation “to help bind said mix to water,” because Taylor is structurally
identical to Akkaway, so it would bind water the same way. (PTO at 24; See also
PTO at 1-2, 12¶1, 14¶1, 17¶¶2-3, 18¶1, 19¶3, & 30¶2-31; and Taylor at 56¶2.) But
this is circular reasoning. Circular reasoning does not meet the substantial
6 The prefix “A” refers to the Joint Appendix to be submitted by the parties.6
evidentiary threshold because anything known with certainty to be false can be
proved true using it.
Because cellulose is hydrophilic, Akkaway’s hydrophobic coating requires an
opposite response with respect to an ability to be bound to water. Therefore, in
contrast to the text supra, Taylor’s claim is actually differentiable by element (2).
The assertion that Taylor never supplied “any evidentiary basis” is false but
extraneous, because it was the Examiner’s burden in making a prima facie case to
show that the hydrophobic matter is necessarily bindable to water, not Taylor’s
burden to show it was not.
The PTO does not dispute that cellulose is hydrophilic. Nor do they dispute
that Akkaway’s coated cellulose is hydrophobic. That was the inventive aspect of
Akkaway: to solve the water-removal problem. Akkaway’s product even floats on
water, just like oil. (Taylor at 51) Oil and water do mix in certain circumstances,
but the PTO never supplied any reasoning supported by substantial evidence (not
contradicted by Akkaway) to suggest how Akkaway’s cellulose could or would be
bound to water. Instead, the Solicitor took the risk of making a new grounds of
rejection by warping the actual “effective amount” terminology into “enough.”
This merely emphasizes how much the PTO struggled in satisfying an
indeterminate question which the Examiner answered by adopting a different claim
7
construction. Even brushing aside the fact that Akkaway’s actually requires that
the sucrose bulking substitute not affect the texture or, therefore, the coated
cellulose, and, therefore, cannot be in the wet environment the Solicitor now
implies necessarily inherently exists (Taylor at 49; A679¶2-A680¶1), the question
of how much hydrocolloid content is required to bind a hydrophobic mix is still a
tricky question to answer.
For good reason: it is preposterous that it can. (Taylor at 50 & 52¶2) Coatings
prevent two surfaces from touching each other. That is just what coatings do. So
the question of how much hydrocolloid is “enough” is even more difficult to
answer than, e.g., “how big a cannon must be for the muzzle velocity to exceed the
speed of light,” because at high enough fractions there will be no water for the
cellulose to bind; no amount of hydrocolloid can bind the Akkaway’s coated
hydrophobic cellulose to water unless the coating is removed or otherwise
penetrated by using means not discussed by the PTO.
A diagram may help illustrate the situation:
8
Figure 1
Figure 1 shows, perhaps a little more visually, that Akkaway’s flour replacement is
not “arranged as in the claim” (Net MoneyIn v. Verisign, 545 F.3d 1359 (Fed. Cir.
2008)) of Taylor because the coating prohibits the water from being bound to the
mix as the Solicitor argues inherently and with necessity occurs as arranged in
Taylor’s claims. (Taylor at 48-49; A674-A676¶1) The Board’s ultimate solution
to the paradox was to follow the original lead discussed supra: ignore any chemical
meaning of the word “hydrophobic” in Akkaway’s cellulose. (A393¶4, A401¶1, &
A598¶6)
9
To be clear, questions include not merely whether or not the Board was wrong
in its implicit assumption that something hydrophobic can be bound to water. It
clearly was. Questions include whether or not substantial evidence supports a
finding of anticipation when a non-enabled reference is used, because if the PTO’s
position is correct, Akkaway is not enabled, as Akkaway clearly requires
hydrophobic coated cellulose. Thus, to antedate Taylor using Akkaway, Akkaway
is not enabled and is neutered. (Taylor at 52¶2) Since non-enabled references
cannot be cited as prior art under 35 U.S.C. § 102, and there are only two
possibilities, both of which yield the same result, the substantial evidentiary
standard cannot be met even if the PTO’s disputed positions are adopted.
Regarding claim 58, because Akkaway and Taylor are opposites, substantial
evidence does not support the PTO’s finding (PTO at 19¶1) because the PTO never
showed how one would traverse a huge ravine of logic: why someone want to have
added hydrocolloids to something already heavily modified to be hydrophobic. It
is supported by substantial evidence as much as it is obvious to heat something in
order to cool it down. The Solicitor never explained why it would have been
obvious to, e.g., have somehow stripped off and removed the hydrophobic coating,
the primary key inventive aspect of Akkaway. And doing so would also have
rendered Akkaway non-enabled anyway.
10
To summarize, if one starts from a binary analysis of which elements of
Taylor’s claims undisputedly carry patentable weight in all of the PTO’s various
claim constructions, the result is that the sole element common to the analysis
cannot be in both Akkaway and Taylor in a single embodiment or that Akkaway is
not enabled. Therefore, even if we adopt the disputed construction of the Solicitor,
none of the PTO’s anticipation or obviousness rejections on appeal are supported
by substantial evidence.
IV. Reply to Solicitor’s Anticipation ArgumentsIf for some reason the previous section is not dispositive, additional remarks in
the PTO’s Brief must be considered. The Solicitor argues (PTO at 23¶1) that
Akkaway meets all of the structural limitations of Taylor’s claim 1: “(1) at least
about 30% fiber that is at least 50% cellulose; and (2) enough hydrocolloids to help
the mix bind water.” (PTO at 1, 4, 17, & 23) The PTO alleges that “when his flour
replacement is prepared with an artificial sweetener” it has 10% hydrocolloids.
But the PTO never showed Akkaway to have either of these elements within its
four corners, and, despite Taylor’s requests, the PTO refused to discharge its
burden to reveal the secret of “whether, how, and why” within Akkaway one might
find them. Gechter v. Davidson, 116 F.3d 1454, 1460 (Fed. Cir. 1997) What
Akkaway embodiment might one seek to verify this? There is none. It is indeed a
11
“resort to speculation” Taylor cannot win. (Id. at 1457; Taylor at 13¶1, 57¶1,
30¶2, & 47¶1; A760¶2) It cannot be Example 1 because there are no
hydrocolloids. If the Solicitor is arguing that one is to modify Example 1, how is it
to be modified? Was claim 1 actually rejected as being obvious? And would not
such a modification dilute the coated cellulose? Example 3, which might be what
the Solicitor refers to on page 25¶2, answers that question, as it cannot be the
mysterious anticipatory embodiment because it no longer has enough coated
cellulose.7 The reference does not necessarily have 10% hydrocolloid either:
[T]he [prior art] reference must clearly and unequivocally disclose theclaimed [invention] or direct those skilled in the art to the [invention]without any need for picking, choosing, and combining variousdisclosures not directly related to each other by the teachings of thecited reference. (Emphases supplied)
In re Arkley, 455 F.2d 586, 587 (CCPA 1972) (A790-A791) The reference prefers
Akkaway’s flour substitute as the bulking agent, which of course has no
hydrocolloids. But if the various bulking options are randomly selected without
any biased picking the Solicitor desires, one has only 1.3% hydrocolloid content.
(A680¶3) The underlined bolded text supra (“must”) reveals the clash the PTO
has with, inter alia, Arkley. Put another way, the chance is under 13% that one
7 It apparently has 25% 225g / 471g = 11.9% cellulose, which is about 3% toolow. (Taylor at 26, Fig. 2a)
12
skilled in the art given Akkaway and asked to produce the artificially sweetened
hypothetical embodiment would create one with hydrocolloids. Because we know
with certainty and no doubt that ~13%<100% (regardless of what hydrocolloid
definitions are adopted), a more appropriate use of “must” is that Akkaway must
not support a finding of anticipation under the substantial evidence standard
because the chance is definitely nonzero ( 87%) that it must not have “enough”
hydrocolloid solids, and, moreover, that it was disingenuous to have added these
strong words into the rationale. The effective amount of Taylor’s dependent claim
38 is 592% too great for Akkaway to meet the claim. The Solicitor’s argument,
based on only 3.8%, was a new grounds of rejection, and is waived because it was
different from that of the Board. It is also wrong by over 500%. Thus, even
separate and distinct Akkaway embodiments do not meet the isolated elements of
Taylor’s claims.
Walking away from the above discourse, and reading the PTO’s construction of
“cellulose” (PTO at 24¶2), one might be tempted to think that there is at least one
Taylor claim element potentially within Akkaway. But even this one element may
fail to meet the burden of substantial evidence. The reason is because the Board’s
construction of the word “cellulose” is unreasonable. Whether or not the word
“cellulose” in Taylor’s claims encompasses coated cellulose is a matter of law for
13
this Court to review de novo. The notion that the word “cellulose” includes
“uncoated cellulose” which is bound with water with the help of hydrocolloids
encompasses cellulose with a unique and unusual hot melt step encapsulating the
surface-modified cellulose fiber particles with hydrophobic polymers such that it
acts like a totally different hydrophobic fiber is extreme. There is apparently no
documented usage in which the world of such a usage outside of that of the
Examiner, Board, and Solicitor. Not within Taylor’s specification. Not within
Akkaway. Nowhere. For good reason. One skilled in the art would never avoid
the “coating” word, because it is extremely inefficient communication, as the word
reverses meaning of what it is in common applications. (Taylor at 50¶2) The
Solicitor does not actually dispute this. Thus, the PTO’s construction regarding the
word “cellulose” could not be considered as possibly being reasonable by one
skilled in the art any more than it would be reasonable for one to ask, “Did you see
that uneaten sandwich?”8 The broadest reasonable interpretation of claims 1 and
8 Incidentally, the origin of the concept that a negative limitation such as“uncoated” was needed is directly tied to an argument for removing Examiner-distained “comprising” in claim 1 and the fact that the word “uncoated” was not inTaylor’s specification. The argument in play was that while “uncoated” wouldhave easily defined over Akkaway, it would have been new matter, so theExaminer preferred “consisting essentially of.” Taylor’s representatives evenagreed and settled with the Examiner to adopt this solution. In addition to knownpreferences between “consisting essentially of” over “comprising,” the Examinermay have believed it was the ideal method of defining over Akkaway because it
14
58 already excludes the specially coated cellulose of Akkaway, not because
“comprising” is broad, but because it was unreasonable to construct “cellulose” to
encompass cellulose-filled ping pong balls, where the cellulose itself is not able to
touch anything. (Taylor at 50; A375¶1, A676-A678, A783¶1) Therefore, even if
preambles are ignored, substantial evidence does not support any of Taylor’s claim
elements being within Akkaway, let alone all of them by necessity, as arranged in
the claim.
V. Reply to the Solicitor’s Obviousness ArgumentsRegarding claim 58, even if one were to temporarily ignore the issues discussed
supra, the PTO’s rejection shifted the burden to Taylor to have shown that Taylor
cannot be obviated. Therefore it fails the statutory requirements of 35 U.S.C. §
103(a). It failed to produce Taylor’s elements with specifically describing how and
why the fiber ratio in Akkaway could and should be raised to 50%. (A7¶2;
A686¶1; & A759-A761). Both sides in the instant case agree that Akkaway fails to
suggest any embodiment exceeding a 25% flour replacement that also could have
hydrocolloids. Which Example is one to modify within Akkaway? If the highest-
would have been much easier to have examined than other options on the table,such as specific caloric limitations. But there was never any basis to the“uncoated” argument. It seems merely to have been a dual-sided stratagem.
15
fiber food product is selected, Example 3 or 5, the required increase is roughly
400%. But does the Solicitor’s brief explain why it would be obvious to risk
making something unpalatable by increasing fiber/caloric reduction by ~400%?
(Taylor at 7¶2; A759¶2-A761) The absurdity of the PTO’s position is to realize
that it is fully consistent with the notion that it would be reasonable for one skilled
in the art to desire to modify Akkaway’s Example 3 in order to market just the pure
coated cellulose as a final, palatable, food product, because palatability is a clear
goal of anyone skilled in the art even if Taylor’s claim is construed to not require
it. Put another way, had it been obvious Akkaway would have done it since the
market for diet foods is there. (Taylor at 7¶2; A685) Also, Akkaway, like other
bakery products, requires the strength from gluten’s disulfide bonds, and Akkaway
is only a starch replacement, not a full flour replacement. (Taylor at 27 & 56¶1)
The PTO does not dispute this. Because the PTO’s position fails to show why the
basic facts of baking science are wrong, and failed to supply a specific
modification of a specific embodiment in a specific reference meeting even a single
element of Taylor, as well as the flaws supra, the Board’s finding of obviousness
for claim 58 is not, as the Solicitor maintains, supported by substantial evidence.
The PTO nevertheless argues that since claim 58 is structurally identical to
Akkaway, the prior art would behave how ever Taylor’s product does, including
16
being capable of any such intended uses (in this case of polymer formation). (PTO
at 30-31) Thus the PTO’s argument treats Taylor’s two claims almost identically.
The intent of claim 58 was to be significantly different from claim 1, and neither
claim 1 nor claim 58 was rejected under 37 C.F.R. § 1.75(b). (“More than one
claim may be presented provided they differ substantially from each other and are
not unduly multiplied.” See also Taylor at 56.) Therefore, since claim 58 was not
rejected on this basis, the Doctrine of Claim differentiation precludes the Board’s
construction. (Taylor at 56)
Regarding a construction entitling claim 58 to having a limitation of the
claimed binds, the PTO’s inherency argument that Akkaway obviates claim 58
again relies upon the argument that claimed product is structurally identical to that
of Akkaway, so it would hypothetically act identically. Again, this is circular
reasoning, known not to be supported by the substantial evidentiary standard. And
any potential inherency argument especially breaks once one realizes that the main
common element between Akkaway and Taylor is coated such that it acts opposite
to that of Taylor. Further, Akkaway only has a 25% gluten reduction. There is no
reason Akkaway’s cookies are not supported conventional disulphide bonds like
any other baked item. The PTO supplied the following reasoning on the issue:
17
(2) those in the art knew that non-disulphide bonded cross-linkedpolymers form in dough when it is heated. (A8 (citing A730); See alsoA9.)
(PTO at 13¶1) It seems rather conclusive, with the Examiner, Board, and Solicitor
once again all in agreement. However, this statement is incongruent with the
authoritative texts on the issue, including those in the IDS supplied via CD-ROM
to the Examiner and to which the Solicitor had electronic access. And nothing on
A8, A730, or A9 says anything of the sort. Moreover, because Taylor’s Examples
have strength but are gluten free, they cannot have disulfide bonds. Therefore, the
strength mechanism in Taylor must not, especially with the requirement of
necessity, be that in the Akkaway product, which was not heated by microwaves
anyway. The PTO’s circular reasoning is not merely circular. It is wrong.
VI. Reply to the Solicitor’s Preamble ArgumentsThe Solicitor argues (PTO at 29¶1) that, assuming the preambles of claims 1
and 58 carry patentable weight, Taylor’s claims do not define over Akkaway
because Taylor has not shown the claims to be patentable. But if the preambles
carry patentable weight, it was actually the burden of the PTO to show a caloric
reduction in an Akkaway embodiment. Because the PTO never showed any such
specific embodiment whatsoever, if the preambles carry patentable weight the
rejections under both anticipation and obviousness are not supported by substantial
18
evidence. The implied obligations the Solicitor admits the Board made of Taylor,
to have shown, e.g., why one could not use Akkaway as a low-calorie palatable
food (PTO at 29¶1), or why Taylor did not supply a reason to amend the claims
(PTO at 28¶3; cf. A787¶3 & A787 n.21), is inverted. Furthermore, as Taylor
repeatedly did explain, because none of the embodiments within Akkaway meet
Taylor’s definition of “low calorie,” Akkaway is not low calorie. This is because
low calorie as defined by Taylor is a structural limit of the energy in the food.
(Taylor at 16, 19-20, 24; A667, A756¶2, & A774)
Why would the Board have pretended it was Taylor’s obligation to show that
“low-calorie” was not within Akkaway? Two possible reasons exist. First,
because they could rely upon the non-admitted evidence which falsely implies that
it was Taylor’s obligation because of Taylor showing the calculations to the
Examiner. Second, because the Examiner’s rejection was flawed. The Examiner
wrote,
Akkaway et al teach to replace the cellulose flour for regular flour;thus, it is inherent the food is a low calorie food.
(A393¶4) and had adopted Akkaway’s definition of “low calorie” instead of
Taylor’s, something Taylor argued was wrong and which the Solicitor does not
dispute. (PTO at 3-4) The Board was faced with a losing argument.
19
The alternative route they took was to construe the preambles as not carrying
patentable weight. The Solicitor now makes a similar argument relying upon In re
Bigio, 381 F.3d 1320 (Fed. Cir. 2004) that any reasonable construction is
permissible. The holding in that case regarded the reading of a potentially implicit
limitation from the specification into the claims. The PTO relies on the assertion
that the same situation exists here. (A5¶2; PTO at 25¶1) However, in the instant
case, the limitations are clearly already intrinsic to the claims. (A779-A782¶1)
Therefore, Bigio does not apply as the PTO argues. Also, the Examiner failed to
indicate sufficient clarity such that Bigio could have applied even if it had been
cited, as three different mutually exclusive constructions were proposed by the
Examiner. (A755; PTO at 13¶1, 19¶1, & 31¶1; cf. 27¶2) There was no guidance
that the PTO’s advertisements specific only to claim construction of preambles
during prosecution, and § MPEP 2111.02(II) most specifically, should be ignored.
(A783-787¶1) If the PTO thought Taylor’s claims were unclear, the PTO should
have rejected them under 35 U.S.C. § 112¶2. (A787¶1) In failing to do that on
the false basis there was no reason for Taylor not to amend the claims to traverse a
nonexistent rejection that some might argue is predicated on an inapplicable
doctrine mocking the entire purpose of the PTO in which the “classic” case is
nonprecedential (Translogic Tech., Inc. v. Hitachi, Ltd., 2005-1387 (Fed. Cir.
20
2007) (unpublished)), the PTO’s examination was arbitrary and in direct conflict
with the Administrative Procedures Act as interpreted by, e.g., In re Zurko, 258
F.3d 1379 (Fed. Cir. 2001), not to mention the underlying principles upon which
this great nation was built. (A782¶2-A79¶1)
Even if Bigio did apply, the argument is new and is therefore waived, as this
Court is a reviewing body, not another PTO. Note that the basis of the argument is
the distinction between slightly more narrow “plain meaning” Article III claim
constructions and slightly more broad “broadest reasonable” constructions before
the PTO. It is undisputed that this argument is also new that the PTO failed to
preserve for appeal because the Board chose not to denote its decision as having a
new grounds of rejection under 37 C.F.R. § 41.50(b). (Taylor at 37; A797-A800)
Their reasoning, which was that Taylor already had a chance to respond to the
“thrust” of it in Taylor’s BPAI Reply Brief is clearly wrong if the preamble’s
patentable weight is a binary question.9 The possibility that this basis is related to
Rowe v. Dror, 112 F.3d 473,478 (Fed. Cir. 1997) can be ruled out because Bigio
and for that matter In re Zletz, 893 F.2d 319 (Fed. Cir. 1989) have little to say
about preambles, as the word “preambles” is not even within these decisions.
9 A “thrust” imparts an extremely continuous velocity function incongruent withthe binarity of the underlying issue.
21
Appeals are predicated on specific records correlated to actual history. Compact
prosecution was not intended to be akin to a long movie with a surprise twist in the
finale; 35 U.S.C. § 144 states that this Court “shall review the decision . . . on the
record before the Patent and Trademark Office.” (Emphases supplied.) Securities &
Exchange Commission v. Chenery Corporation, 318 U.S. 80, 94 (1943). The
argument is therefore waived. SmithKline Beecham Corp. v. Apotex Corp., 439
F.3d 1312, 1319 (Fed. Cir. 2006). By needing to exceed the record on appeal
thereby further lessoning his credibility, the Solicitor merely confirms that the
actual record of appeal yields a reversal, and that the anticipatory and obviousness
rejections were not supported by substantial evidence.
The arguments preserved for appeal the PTO does make are that Rowe is
controlling over Invitrogen Corp. v. Biocrest Mfg., L.P., 327 F.3d 1364 (Fed. Cir.
2003) even when
(1) The preamble contains structural limitations,(2) The preamble cannot be construed as an optional intended use, and(3) The applicant introduced the preamble to define over the prior art.
The Invitrogen line actually controls in such situations, and it is false that, as the
PTO argues, Taylor posited that (3), which is no longer disputed by the PTO,
stands alone as the sole restriction determinant on prosecution history estoppel.
22
(“Under Taylor's reading of the applicable law … must…” (PTO at 26¶3; cf.
Taylor 15¶3-32¶1, A756¶2-A57¶1, A668-A670, & A774)) Regarding (1), the
PTO argues that Taylor’s preambles are non-structural and do not carry patentable
weight. (PTO at 17, 19, 26-27, 30) It asserts that claim construction is largely a
factual inquiry, and places the basis of its construction in the Statement of the Facts
(PTO at 1¶1, PTO at 4¶1). This information from which the Decision is also based
is in clear error. The energy density of a food is a structural limitation on the
ingredients no different than the only ones the Solicitor consistently admits are also
structural: the fiber and hydrocolloid ratios. (PTO at 4-5, 17, & 23; Taylor at 16,
19-20, 24; A667, A756¶2, & A774) The structural restrictions on energy density
are clear given that the Akkaway examples peak at a 9.7% recipe-based, structural
reduction in energy content.
Regarding (2), the basis of the PTO’s argument is factually incorrect. Solicitor
specifically couches that the preambles as if they are intended uses by using the
word “also” in describing an optional use:
23
Taylor claims a mix for making high-cellulose food or foodcomponents. .… Claims 1 and 58 also recite … [an intended use of]the claimed mix is for making food or food components that are "low-calorie" and "palatable." (Emphasis supplied.)
(PTO at 17) The use of “also” requires an implied optional feature. The reality is
there is no optionality on the 50% caloric limit structural clause, and Akkaway
cannot apparently be used to satisfy it, as the PTO has not shown otherwise with
any “concrete evidence in the record in support of... [its] findings.” Zurko at 1386.
The PTO does not dispute that In re Bulloch, 604 F.2d 1362 at 1365 (CCPA 1979)
is applicable when the label of the claims and invention contain the limit (“Low
Calorie Foods…”, A26). Nor does the PTO’s argument that this court has never
found preambles limiting due in part to prosecution history estoppel hold true. The
argument otherwise does not apply when the preamble contains a structural limit,
especially if it was introduced to define over the prior art. The PTO’s argument
requires the following assertion:
To the contrary, this Court has repeatedly held that a preamble limits aclaim only where it gives “life, meaning and vitality” to the claim.(Emphases supplied.)
(PTO at 27¶2) The use of the word “only” is questionable given that Invitrogen,
Catalina Mktg. Int'l Inc. v. Coolsavings.com, Inc., 289 F.3d 801 (Fed. Cir. 2002),
and, more recently, American Medical Systems, Inc. v. Biolitec, Inc, 618 F.3d 1354
24
(Fed. Cir. 2010) all relied upon a finding of PHE and, more specifically, the answer
to the inquiry of whether or not the there was a reliance upon and introduction of
the preamble to define over the prior art. If the PTO is relying on this statement,
then for this Court to affirm the PTO’s position, it must upset binding precedent
and carve new and drastic law. On the other hand, if the PTO is not relying on this
statement, it has failed to supply “concrete evidence in the record in support of...
[its] findings,” and this case should be reversed on that basis. Zurko at 1386.
However, even if this were not true, the PTO’s intended use assertions are still
false, and if anyone in this Court agrees with the Solicitor that one could use
something that is 9.7% as something that is 50%, they are invited to immediately
contact Dr. Taylor directly at 301-277-1909, who will arrange to sell them bars of
10% gold for the price of 30% gold bars, which, when put to their intended use of
selling them as 50% bars on the open market, will allow us both to split the profit
evenly.
VII. Reply to the Solicitor’s Written Description ArgumentsNothing the Solicitor proffers weakens Taylor’s previous assertion: the PTO
never discharged its burden of showing that any of Taylor’s claims rejected under
35 U.S.C. § 112¶1 are unsupported by the initial disclosure. Because the PTO’s
decision regarding 37 C.F.R. § 41.50(b), the Board waived its opportunity to
25
preserve any potentially new and superfluous arguments for appeal. It so happens
that none of the Solicitor’s arguments are preserved for appeal. All of them are,
therefore, waived. This is not a surprise given that the Examiner boasted not even
looking at most of those sections of Taylor’s BPAI Appeal Brief. (Taylor at 40¶1
& 43¶¶3-4)
Consider, for instance, the PTO’s remarks (PTO at 34¶3-36¶2) specific to
claims 37-43, 47-49, 51, 53, and 57. Quite simply, they are not supported by
the Examiner’s Answer. Take the first claim supra, claim 37, for instance. The
Examiner’s Answer is consistent with the rejection of the claim being withdrawn.
Any notion that a vacuum might be a legitimate source for furthering an existing
argument is wrong, especially when the purpose of the apparent slight of hand was
to, once again,10 deceive this Court in what should have been informative and
collegial arguments. (Taylor at 40 & 58) See, e.g., In re Beaver, 893 F.2d 329,
330 (Fed. Cir. 1989) (finding that the Board was required to consider claims
separately even though the applicants’ arguments were concise.) Furthermore, the
recasting of the record on appeal by the Solicitor, bolstering the fact that Taylor
does not seek judicial review of the partially adverse petition decision (PTO at
10 See, e.g., Appellants’ Opposition to the Director’s Motion to Enlarge the Timefor Filing His Brief filed February 6, 2012.
26
33¶3) as if it justified the Examiner’s non-consideration of the arguments in
Taylor’s BPAI Brief is extraneous and misplaced. The petition decision was based
on the fact that prosecution had already concluded, and successfully allowed the
computations to be uncoded as being declarations anyway. The specification is not
of concern here. The requirement to review the BPAI Appeal Brief (MPEP §
1207.02) is of concern. (Taylor at 37¶1) Given that the Appeal fee was paid
timely, this permitted Taylor to introduce allegedly new arguments in its BPAI
Brief (A630-A711). With the exception of claim 3, the PTO’s statements implying
that the Examiner and, allegedly, even the Board reviewed these inherency
computations at all (PTO at 36¶2 & 35¶2) is in direct conflict with the record on
appeal. (Taylor at 36) Due to these reasons, which the PTO itself admits are true
(PTO at 35¶2; Taylor at 37¶1), the rejection of claims in Group b, c, and d (claims
37-43, 47-49, 51, 53, 55, 57-58) under 35 U.S.C. § 112¶1 should be reversed on
this basis alone. The Solicitor does not dispute that the word “about” in Taylor’s
claims already sufficiently accommodates ingredient variations. But this and other
issues, such as the assertion that standard references such as the USDA’s databases
cannot be used as implicit industry comparative standard whose data is ultimately
used to produce caloric labels nearly everyone in the country sees every day (even
Akkaway probably utilizes the phrases like “full calorie” to refer to it) are all new
27
grounds of rejection unrelated to those from the Examiner, and the Board
subsequently failed to preserve them for this appeal. Furthermore, the PTO’s
reading of its own Ex Parte Shia BPAI Appeal No. 2007-1647 (2007) is misplaced
on several grounds, not least of which is that an Examiner cannot have a valid
opinion regarding calculations they refused to ever read. It is also in conflict with
Zurko because it implies that examiners can be arbitrary and are not subject to
review by this Court. Finally, the notion that calorie counting is too difficult is
incongruent with the PTO’s assertion that “Akkaway also teaches that [] the
amount of insoluble fiber can ‘be varied according to the calorie content desired’”
(PTO at 30 & 19¶1), because it verifies that calorie counting is something one
skilled in the art, such as the Examiner, is actually able to do independently. The
fact is that only a tiny fraction of winning BPAI appeal briefs have a § 1.132
declaration or affidavit.
Another dispositive error was applying the wrong legal standard. (Taylor at
35-37) This limited aspect of the inquiry is reviewed de novo by this Court.
(Taylor at 41 & 46) The PTO’s standard is only appropriate for issues with in haec
verba support (A10-A11), not inherent support. (Taylor at 44¶2) The specific
error of law can be traced all the way back to the Examiner, who, even after
extreme efforts had been made to explain it in detail, still refused to accept that
28
categories of physical properties of embodiments of an invention without in haec
verba literal support in the initial disclosure could ever be claimed:
While the physical properties can be inherent in the productsdisclosed, the original specification did not disclose such properties.Thus, there is no basis for such properties to be inserted in the claims.
(Taylor at 36¶1, A732¶1; cf. A646¶4-A647) According to this logic, if one invents
a rock weighing about 100g and having a volume of 100 cc, one is forever
precluded from ever claiming a rock with a density of ~1 g/cc unless the word
“density” shows up in a word search of the specification. By applying the test
outlined in Hyatt v. Dudas, 492 F.3d 1365, 1370 (Fed. Cir. 2007), the Board
repeated this mistake of law to be reviewed de novo by this Court. (Taylor at 44-
45) The PTO does not dispute this legal error. Indeed, the PTO’s attempt to
modify the reasoning newly employed by the Board (PTO at 32¶1) to risk making
yet another a new grounds of rejection (the first being that the Examiner refused to
do computations to determine whether or not there was inherent support) is
incongruent with that on record and is more of an agreement with Taylor that the
rejections pertaining to Groups b, c, and d (claims 37-43, 47-49, 51, 53, and 57)
should be reversed than a rebuttal justifying the erroneous legal standard
employed.
29
With respect to the PTO’s Group III (Group a, i.e., claim 3), the genus species
argument (PTO at 36¶3) is also new and not of record. It is therefore waived. The
PTO’s only other argument relies on the assertion (PTO at 38) that quantity is
relevant to the labeling of an ingredient. Even if 0.1% of high-amylose starch fiber
is added to lard, that one diluted ingredient is still high-amylose starch fiber
because Webster’s definition pertains to the pure form. The nature of these cited
ingredients is that they are fiber, per Webster’s definition, amount being small or
large. Regardless, this other argument is also new, not of the record on appeal,
and, therefore, once again, is waived. Because no other reasons for the “Group III
limitations” satisfying the written description requirement were supplied,
substantial evidence should probably not support the rejection of claim 3 as not
satisfying the written description requirement.
VIII. Hypothetical Implications of Possible HoldingsA full reversal based on §§ III-IV might have the least effect upon existing
precedent.
A vacate-in-part encompassing the 102 and 103 rejections and remand for
further proceedings might upset existing jurisprudence regarding bedrock cases
unless clear rationale was provided as to how the already thick record on appeal
was not dispositive regarding these issues. Not only might it upset, e.g., Epperson
30
v. Arkansas, 393 U.S. 97, 102 (1968) (“[T]he present case was brought, the appeal
as of right is properly here, and it is our duty to decide the issues presented.”),
Colo. River Water Conservation Dist. v. United States, 424 U.S. 800, 817 (1976),
35 U.S.C. § 144, etc., but it might also undermine this Court’s bedrock
jurisprudence (e.g., Zurko) and the meaning of the word “unless” in 35 U.S.C. §
102. The reason is that such precedent and statutes might become meaningless if
hypothetically blatantly invalid rejections could be re-issued and re-remanded in a
cycle of perpetuity as the administrative agency hypothetically continually tweaked
it to better deny a stationary disclosure, analogous to a suspension of a “habeas
corpus” for patents that precedent actually implies exists.
A vacate-in-part encompassing a written description rejection with remand for
further proceedings might have a similar, albeit, much weaker, impact.
IX. ConclusionFor the foregoing reasons, this Court should reverse in full the Board’s decision
with the exception of its unappealed reversal of the rejection claim 14 under 35
U.S.C. 112¶1, enablement.
Because the record on appeal is already dispositive, and because the PTO’s new
arguments are waived, and because pro se Appellant Taylor has not intended to
present new argument inappropriate for review by this Court, and because to do
31
Differences and corrections made to present version not the Pacer version:
p1. primarily goal -> primary goalp3. either 5 -> 5p4. many not -> may notp8. of much -> of how muchp8. cellulose bind -> cellulose to bindp10. someone want -> someone would wantp11. are supported -> is supportedp13. was it -> it wasp14. it be -> it isp14. that it->than itp.17 by substantial -> by the substantialp.17 supported conventional -> supported by conventionalp.20 do on -> do that onp.21 “preambles” is -> “preamble” isp.23 than only -> than the onlyp.23 Solicitor specifically -> The Solicitor specificallyp26. boasted not -> boasted about notp26. Footnote "10": italics removed.p27. standard whose -> standards whosep28. is conflict -> in conflictp29. another a -> anotherp30. of is -> is
None of these changes altered the pagination at all.