was wrong first as a matter of law because there was no comparative testing between the closest prior art and the claim subject matter and second because there is no substantial evidence to support the conclusion of unexpectedness what the board did is performance depends on the type of by grace woods over so what shaffer did is they made up the vibration absorber gave the results to dr parker their expert and that's what he had to work with and he couldn't explain during his deposition absorber to the order of excitation so what one of your new school of the art would have understood is you need to match the natural frequency of the absorber to the order of excitation it does not disclose even that's correct and this is black letter law getting back to your question judge hughes about the matter of law even if say for had over the board had it in the five right prior art the range and eccles to invalidate the original claims and that's what they needed to show unexpected results over that would have been one one test result that would have provided some  the r and they disadvantage that person by saying that they would have to guess that what the prior art result was and we don't have that prior art result and that's the starting point for one of ordinary skill in the art what they would have expected when you look at what the prior art results are now even ignoring that failure to compare the results of the closest prior art whether it's eckel or holler or pseudo with the claim device in august and still expected that the training value could be adjusted to achieve the best possible result for a given absorber and there's three points to a very intensive record in terms of the number of facts but there's three points i'd like to make first there's not a single prior reference that teaches that even tuning  optimal and oil all instances in the record whether it's a declaration or some one step is ition testimony or reference whenever even tuning is best if you look at the underlying of where it's operating in  and this is common sense and one would expect that if using component like an absorber pendulum the driver would operate differently in the oil than in air and it's also supported by some of it so let me ask you one question  the most extreme outer mine is totally oil i believe that that's correct not just what's in six that's right that's the actual torque converter component they call the to hydrodynamic component ok those systems so the the the curvature of the swing paths of the pendulum assumes that sine fade equal status if you want to get mathe matical and for small swinging angles that's correct but when the vibrations to get larger and this pendulum is swinging farther and farther back and forth that starts to break down and then you get non linear aries and there's there's the the other point or one of the other points wanted to make was that one of orders going the art understands the implications of tuning if i break ins are made worse safely as expert dr parker again admitted that if you add in the former to a system and it actually makes the vibrations worse dr parker admitted that one explanation that would occur to one of ordinary skill in the art is that tuning is not optimal that's even based on shaffer's test which isn't representative of the prior art and artists and still would have recognized that even tuning is not just an oil and the third tuning by its very nature assumes that the tuning parameter can be optimized so they can get the best calculate what the optimum amount of absorption is this is dr parker's formula in the appendix at two four ninety five so this isn't just a predictable art the optimum result attainable is calc is calcul and an artist would know to keep it just in the tuning this is the trial and error that that our expert dr saw and the cells and talked about in the papers trial and error process that you are just tuning in to get the optimum result the board also found in considering the level of skill in the art that an artist in would have an understanding of the influences on a pendulum absorber in different operating environments so what the board did getting back to judge chooses original question i think is the board is focused on the wrong expectation and required an artist and to guess how an observer would operate and set of actually having the results from the art for example pseudo where where there's actually an absorber operating unoiled artisan would have that result from the prior art and that's what they should have been focused on this is similar to the was it the board to make a finding that p and the federal circuit case law have previously cautioned board that such as not only proper or legal standard second the board raised this requirement for the first time in the final written decision thus depriving shafer of the opportunit specifically hold that it is not necessary to recite the operating environment in which unexpected results are demonstrated for the proper finding of commensurate yes for this reason we believe the board's decision concerning substitute claim fourteen and argument regarding that doesn't mean that the board can't make its own determination that you haven't met your burden of production we're not arguing that on a issue of burden of production specifically arguing not on a notice issue concerning administrative procedures act specifically the idea that the excitation order should have been respected in subsequent fourteen was raised for the first time the fundamental decision so we were afforded no opportunity to respond to that so our concern with the idea that never raised the idea of the resident they relate raised it or not seems completely irrelevant because they could say nothing and you could still lose because you didn't have the burden of production you didn't meet your burden of production i understand that you're what the argument trying to make i because this issue was first raised in a final decision we had no opportunity to inform the board that their legal analysis concerning the commensurate is was incorrect our argument is their finding in the final written decision that a person that you would have  excitation order which is the environment in which the invention works in the claim is contrary to case law concerning injury choppin rachman we didn't raise that because it's not a legal requirement for us to recite the environment to establish   primarily that it was a legal error but it was a legal erica which we did not have an opportunity to response had the board raise this or overlay or raise as we would have actually been able to point out and reach operant reacting and say you've got the law wrong but we're not afford opportunity to do so can you i understand where you are on this can you address their appeal i'm baffled why the board used eccles the range and eccles and invalidating source for over tuning of the original claims and then didn't look to the as the prior are forward the proposed amendments certainly are there's a few reasons for that first and foremost for the original claims the board made a finding specifically at pages twelve and sure but that's not what i'm concerned about about whether it discloses oil or life it seems to me that what the board found was it looked to a different reference and said the reference to the prior are disclose your your proposed amendment specifically confined it to an oil atmosphere and therefore eccles wasn't good enough yes pacifically rotating well the argument was made that the recitation of oil influence and s in original claim one was rotating where does the board explain that's why it's not using calls well that explains why it is not adopting that understanding oil influence at pages twelve and thirteen of the decision it finds that the oil you just answer my question or civically your i know you're reciting generally to that in this discussion do they explain this is why we're not looking to ackles i know but i would direct your attention to that and specifically i'll find the say your honor i mean it just seems an odd way of doing things to me when we have these range cases and somebody proposes unexpected results for something in the range you always look back to that prior range and say why the was noted that acol did not reciting a torque converter with rotating will so either suit our hall or were discussed as describing the rotating oil environment so that is why i believe they went with hollering so that i could because there was that additional recitation of rotating all that being said the references can be described or or broken down into two categories there are references the talk about the idea of tuning and if you look at each of those references they describe that even turning works fast that includes  the like it would have made more sense at least probably would have been substantial evidence when they completely ignore eccles for your for your amended claims when they do use that same for cypher range to suit and validate the original claims it seems logically inconsistent well the the finding that the board made and that is in view of acol as well because akhil suggest that if you want to improve damping you even tune if you look at the master reference with this reference they also in the same thing if you want to improve performance you even to know you get closer to even spec hard even suggest under two so the expectation the board found was looking at the prior art and so the prior art tells us that if we want to improve results we undo we even to the testing was provided relative to that understanding from our own whether you pick akhil whether you pick another reference that would have been the expectation at the time that even tuning improves perform and that was true except when you're dropping stuff when you're operating in rotating oil claim fourteen recites over tuning operating and rotating oil and it was unexpectedly found that in that invention and that torque converter with rotating well over tuning improved performance rather than degraded performance and what was understood the prior art was one thing even tuning work best you could slightly over tune but that would degrade performance but extend the operating range of the device what happened in the rotating oil environment claim is the exact opposite over tuning improved performance but actually reduced the operating range and that is the distinction that was founded as the closest prior art including akhil which doesn't describe it or converter said that if you move closer to even tuning you will get improved damping results and i believe that's at nine o nine of the of the appendix that was the factual finding of the ford made that the expectation at the top whether you packed akhil whether you picked holler the expectation was the same is that over tuning would be great for and what was shown by the test results is that in the claimed test range over tuning improved performance and that was what was unexpected and what the board is doing is making a determination of would the person in the ordinary school in the art have expected this result and the answer was no and we believe that answer would have been the same regardless of what particular piece of priorities chosen and i'd know considering the end really holiday case that the applicant may choose what reference and the board that reference that the layer doesn't agree with what the closest reference is goes to the problem here that no reference to is particularly close you either have references that talk about rotating well such as holler but they don't say anything about tuning or you would have expected would have been what ackles results work with which we don't have and again if the whatever the border are safer says that even tuning is working best that's always in the context of complete resolve this issue about the the burden in shaffer's brief the talk about a production of burden of production shifting back or more to the petitioner but that's not the case the rate of production is always on the whole of the ranges in the patent or in the context of a four cylinder engine with the second order excitation and there has been no critic ality established for any of those ranges given that they cover situations where the results are worse the enter a chuck case is distinguishable because there the compound always provided security results with corn and soybeans here as i just mentioned you've got ranges that give you inferior results for portions of the ranges the enter a johnson case i think discusses holiday and and says a holiday doesn't stand for the proposition that the pattern or only has to test one reference that's not the way it works and there you have contested one reference but not another and the court found there were no other unexpected results because there isn't evidence that the testing of one one reference was representative of how the other reference was behaved in conclusion if there are no more questions what shaffer is asking is if the court broaden the unexpected results analysis to include testing and consider testing relevant even if it if it's a comparison between the invention and a device that here yields the worst possible results irrespective of whether that device is even representative of the prior art this is a major departure from all of the cases that ask whether there was an expectation that adjusting the range that did not you know show unexpected results but that is not the issue in reach up states that the invention need not produce superior results in every environment in which the compound may be used it goes on to state the expectation that persons would want to use comprised of a number of species each species of which shows unexpected results in subsequent collecting it happens that the unexpected results happen in various environments one species works best  species works better in a nine cylinder engine but each of those species were demonstrated to have unexpected results the burden that the board applied was that we didn't recites the excitation of the engine but that's the environment and in reach chop says you don't have to show that it works in every environment and it doesn't matter that it might not work in some environments because it does us no one's going to use an invention where it doesn't work that's for much of it is not a pharmaceutical it's a weed killer so it's a chemical case it's a compound so i wouldn't equate in reach up to a species and what the board says you have a species that works well in some environments but not in others but it doesn't matter because all you need to show is that it works in and vironment what we have in the present case is a genus with a number of species and we have shown that each of those species work in different environments and the in reach up says we do not need to recite each environment in the