before we get to our business this morning i scheduled business we have other important business admission to the bar a lot clerks  for one and two years greatly assisted in the performance of my work they are very smart and they are hard working the commission on my wall audience just like my colleagues commissions of which some of brightness and learning with whatever learning i have has been enhanced by working with them i have no doubt that they will be successful in the standing with the highest court of massachusetts i have knowledge of her credentials and i'm satisfied she possesses the necessary qualifications well baby jessica is all grown up she has been our baby clerkly we call it that because she's the youngest clerk i've ever had she's also incredibly accomplished for such a young age and what i like best about her is the maturity with which she holds herself out and carries herself the uprightness the forthrightness the morality her faith on her sleeve all the time and uses it in the way in which she approaches everything she does and all the people she acts with she has been a wonderful locker to me over the last year and i have no doubt that she's going to go on to a great and successful career hopefully someday she'll stand here in front of us and argue but i've just really thoroughly enjoyed having your company over the course of the last year and having your help and support on the cases that we've worked on together so thank you for doing that for me and i'm happy to move your admission dramatically what do you think you can let these ki good morning your honor we have please the court counsel this case proceeds from a decision of the patent trial an appeal board rejecting all the pending application claims for obviousness the board's decision we submit demonstrates the risks of assessment assessing the issue of obviousness untethered to the constraints imposed by k s are in the decisions of this court i'm going to focus on three errors that are briefed in further detail first the board erred by because there is no showing of a reasonable expectation of prior art discussed i mean it's like what you get there to have twenty two in one case that's one out of two hundred thirty one possibilities that's not infinite but then i realized there's the third element and you know but you certainly if i were looking at your different claims which you don't separately argue there are some that are shockingly narrow and the world of possibilities in the prior are quite broadly you know separately argue that your claim wind is immensely broad with tend to sixty percent w i'm going to call it da because i don't think i can say whatever it is and then five to thirty percent and the water soluble wiser and thirty to seventy five percent of the alien oxides me you see these percentages are so is your claim your clean one so what what do you think about it yeah whatever the response that your honor is is step and it is the first two to discover that a specific five point five component combination can yield these exceptional results that there are some of your deep and it claims are quite narrow but this independent claim is that seems quite wrong well we do argue first of all that it depended climbs twenty six and twenty seven i believe which are p g related so would you call those out separately but but my point is with respect to the broad claim stepan does have examples working examples of success where the prior art fails right in iraq doesn't have that support i think that's where we need to focus and that's where i think george where his question was really trying to get at what is the by working examples that you can achieve that superior court one that's why i think you're missing and always what is the benefit of the call point yes yes because if i'm just looking a path there's you know there's lots of different things you can put together and so maybe i can put these things together and a parent me from what you're saying is you don't think alice would teach that that there be any reasonable expectation of succeeding with the clown so what's the magic that ok so if i understand right and i'm sorry rather judge milian the benefit is and in the processing and handling of this material it's touched upon in the briefs it's also touched on in the specification but when you're manufacturing this it's made at a high temperature and if you have to wait for it to art alice not only from proves that point because he tests up and down you can go through pages and pages of failures and alice and you've done some of them paid more than our brief that and except in seventy eight and seventy eighty and you can page on from there you'll see failure after failure this would just be routine after invasion routine optimization requires a reason why expectational success it's in the case law and here there is no reason why reasonable expectation of success and one thing that's glaring in this case seven had no failures with me not site that was that that was glaringly wrong it's not disputed that the board's reasoning was was wrong and but but is your point to your point your honor set aside that glaring glaring error and reasoning you need to have expectation of success to rely upon routine optimization here in the record screams there is no reasonable expectation that you want to call out in your application you say well this is really unexpected that we've been able to put these things together and achieve this but you didn't put in actual evidence of unexpected results to you we didn't put in a declaration evidence but the we have our own specification which provides it teaches of what it shows that we don't have to go to there that's it once you establish a prime a face a case of obviousness and we submit that the p t o did never did not come close to that threshold so we have no obligation or burden yet we did come in in our brief and we said in our view that there was still unexpected results and we went through some portion of the briefing on epoch that that's really a backstop argument because we have no burden that the burden is on the p t o in the first instance to show a reasonable expectation of success if you're going to rely upon  hundreds of examples that may be useful for the application may be useful but i think the court went on to say that the reference fails to tie to a three day corporal poxy to any meaningful suggestion of anti psychotic activity desired activity and that's similar to briefly i'll address that the fact that the p t o has looked at the specification and said look we have they have to deal with the fact that it had just those an infinite number of survey acton's and an infinite number of combinations and how can we pare that down to make three pairing arguments and each of them are unsupported they first argue that this fourteen that the columns classifications means a dozen pages classifications a through the well those are just effective napper for by palace but that's not accurate alice describes them all as both affective and preferred the p p o then points to paragraph one thirty and says let's look at this paragraph to the exclusion of everything else in palace which is improper you can't pick and choose you need to look at the reference as a whole but even if you look at that they say we don't so why two of the four classes in that paragraph when three but as you know that's improper that we called out if you're going to look at specifically listed except yes there are one hundred others throughout the case there are the palace reference one hundred and none of those are mean x i i so it just it's shows that you can't make these arguments that you're trying very hard to to make this this fair down this then and the case the palace doesn't support it the next argue that well we don't need to pick two out of twenty two classifications but that argument fails because it was we point out one classification can contain quadrillions of members and you need to test and that's key alice and i need to test to see what works because there's no predictability in this are reasonable expectation of success is a bit of a problem for me because when you understand you can't conflate the two concepts they have to both be addressed and analyzed and there is this issue of the seventy degree cloud and palace there they never even got to sixty degrees using the i mean outside so where is it in the union that the board says that there's a reasonable expectation of succeeding to that cloud point burden in the wrong place right it's yes that if that if it was that alone then yes i would likely to bring it out what did the board rely upon and was there anything in the record about what one of about how routine optimisation we had this conversation could get you to some place where palace failed every time sure and so in the powers are when they discuss the preferred surfactants that they use nine regarding palace and whether or not the example one twenty seven includes i mean not as a failure that was one of the failures in the palace and the board said well this failure isn't relevant because it doesn't include me not se houseless and they said well this is a failure but it's not relevant because it doesn't contain the claimed elements they were incorrect on which is not the water miscible thing that like does have the other to claim element so i feel like that was a pretty big their their their position is that these this long list is all preferred and what policy actually says on a seven forty and then on to say seven forty one is that they say there's we're going to tell you what's the preferred thirty seven fifty four they tell you four categories of the preferred surfactants and so i don't actually think that's right that there's whatever it is twenty two categories are preferred survived i think it's actually much smaller and smaller but in the board everything that actually cited that paragraph but all they ever mentioned no but they did find that this they found that these were the preferred facts i think is completely consistent with that you know personally i feel like we're just completely ignoring that no matter how i'm combination that achieves that well i think the way that i look at it is that the palace discloses is a range which is sixty or above and then they're claiming a subset of that range which is seventy or because you're combining these ingredients and it's not you know the composition is hot when you're doing it and so i want you to have this club point that doesn't occur until you're at least this certain point because that we're more efficient manufacturing process you won't have to cool it down before making certain combinations i think my understanding right i mean i think that i think that's generally right think just simply it is because you want something that's clearly not something that's cloudy i think that's maybe another way to put  it but and but palace says if you can get things that are clear which policy question a story of stability up to sixty or sixty eight about this what's desirable this is what you should spring for and then they go and they have you  many many of us are going to judge o'malley's point which i tend to agree with which is i'm i'm not surprised people might try it might you know palace creates an obvious to try or motivation to try right you know but it's  also in the same boat as she is i think with her questions that i'm just wondering why when the failure occurred this combination and you had a not a failure you couldn't get the club point to even work at a when you have one reference right i'm not sure that it's i'm not sure that it really makes all that much of a difference in the context of this reference but this is this is a sound test whether it's reasonable expectation think that it's a case specific situation so for example if this was a pharmaceutical case where you were looking for something that had biological activity reasonable expectations of success might be paramount because you really have because if it's so uncertain and the difficulty in the optimization is so high in those cases but in this situation we're not dealing it is a chemical are to we're not dealing with that type of instance in here what we're all looking at and i talked about earlier was whether the solutions are clear and it's a test that can literally be run you know in thousand fold in in short periods of time so to screening many many different combinations is simply what people in the are and this particular are could and did do whether there were failures doesn't enter into the equation i think in this type of situation where yes there will be failures but we can test thousands and so we can tell you what the values are so quickly that whether or not it's we have an expectation that any particular one will work we can tell you which ones increase so we never got to this one admitted element of the claim but we can just say they would routinely do it and i and i just feel like there needs to be something more concrete think very recently pushed back and said yes we probably still roll for it and you know kind of putting words in your mouth a little bit that's sort of what you said you explained it but maybe the real answer is when the experimentation is so simple and so easy to do the fact that the art might discourage you from certain combinations wouldn't discourage a reasonable artist and in this field from trying now but we need the board to say that that's got to be the has to be a fact finding right there has to be a statement of in this our people are doing what palace did over a thousand experiment right exactly right yes and so if the board could come along in a fact finding i mean it might actually really helpful law because maybe reasonable expectation of success you know when you have to seek f d a approval on something right like the number of hoops you have to jump through the expense the difficulty of performing the test would discourage people in certain situations in this situation your argument which is actually really that seventy percent is really good and sixty percent isn't good yes yes you're right that's bets with the composition of the components of the bahraini to get that right that's what's missing from the relevance don't i don't think they found that would be which optimizations i don't think they said specifically to that language and one last point if i may if that's ok that this is the type of case where secondary considerations i think would be especially probative because there are so on be brief i want to point out a couple things first of all the house will refer to you in the court referred to paragraph seventy regarding the beginning of these categories a through you or  routine optimization and and i think there's a confusion here about what it might be routine to test but that does not equate with routine optimization under the case law routine optimization under the case of requires a reasonable expectation of success there no car about that we've seen and nothing's been cited that says in a one one reference case i don't need to worry about a reasonable expectation of success i think the law requires that otherwise you're picking and choosing and the law also requires well i don't  i don't know that your argument is fair i didn't understand the p t o to suggest that you should do away with reasonable expectation of success i think that what you need to address is mr holmes point which i think is a very span of minutes that this been cited that i've seen i think that came from counsel i see so maybe that's but that's exactly what i want you to do maybe not quite as defensively as you just did but maybe argue to me and explain why even though he might have a point which is resonating with me because it is the idea that reasonable expectation of success so so what the palace has one example example one twenty seven which actually failed when you have something if you do have something that's easy a test and if the kind of people who would be doing these tests would routinely tested thousands of samples at once at low cost you know maybe they're not dissuaded by example one twenty seven in palestine so maybe your argument then is go ahead you know the argument is that you need to have a basis to select a combine of from amongst the others and if it's just the fact that i have a record well then they have they have nothing in the record to say it was it's a matter of minutes to test thousands i haven't seen that that's that's pure make it out unsupported argument well i think it is actually i