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.