to identify a legally common motivation to combine references and although the board correctly recognized that the law requires a particular motivation to combine particular references to reach a particular claim solution nowhere did the board explain equivalent and secure ations with it could we then say these are just obvious variants to choose one or the other no i don't think you can say let's think of another simple hypothetical and excuse me if this is a dumb hypothetical let's say in my hypothetical twilight world the only way to fasten boots on order for obviousness to be shown someone who points to a reference that uses velcro i guess what i'm wondering is is it is it a panel advance is there something patently distinct is there a contribution to the shoe art or the boot art to now say i claim boots with using laces rather than the prior art known dr straps well at the outset i want to be clear i don't think there necessarily has to be a technical advantage but there has to be some affirmative reason and maybe a design demand for some sort of market pressure which even if leases functionally do not add a technical advantage over velcro there would need to be some affirmative reason which could come in the form of a design demand or market pressure but simple and so there's a bedrock requirement to show motivation to combine i want to point out at the outset that we don't think this is a case where there is no distinction between there is no advantage to the configuration and as we've explained in our b along it's obvious to try to reason and but even there this boarding pass our set of motivation to combine is required for example cancer says explicitly when there is a design need or market pressure and there are a finite number of identify predictable solution statements that declare something necessary and even the statement about reason to make a combination i think says something like it can be important to identify a reason differently for a reason but another way to look at this is not so much start with hocks you need a motivation to go and look at something else the filter can go one place or another  it's not just in the abstract true that it could go in the other place but in fact the board cited what a treatise or something and it's well known that it's often in fact put in the other place and at that point why isn't that enough for the that's precisely the argument for which there was notice there that argument was never raised by whack or the board as an affirmative reason the motive to modify hocking and it was only until the final round decision that that rationale was articulated by the board and so there was no opportunity to respond to this argument i would also add so i think with the air for this court to consider that rationale but even if this were what those references say actually don't address the issue for which we need to show motivation a combine we need to show motivation combined as to the relative placement of the clamp and the filter those references don't speak to that they simply say that the power input is put aside the filters typically put at the power but  instruments product that the board cited to both and fundamentals of power on products neither one of these was raised by whack as a from an affirmative reason to combine black never argue that the fact that it's always done he's a motivation to the term input filter there was a question about whether it was a means plus function plan and these references were cited to show what the structure of an input filter is and what it typically does when where they say that during the petitioning portion or during filter first on the power lines was that something the board found in the text independent of anybody else or that somebody raised that indeed no nobody raised as an affirmative motivation argument that this that specific point that you were contesting as being middle of the reliance on putting the filter at the power input lines so as to avoid interference juz the components right there in the control circuit finding out what this teaches i certainly can't make a contrary fact finding on appeal so i don't see why the best case scenario for you and maybe this is the right hansard is like still not substantial evidence really have an explicit explicit concession by the other side's expert that that language isn't actually definitive of the issue and to address the issue of a good or  references disclosing the fault or first gen the treatise says the filter generally comes first the fact that an expert even for the other side says well i'm not sure exactly what that says that's a fact finding i can't make an appeal i got it if there is a notice problem i have to send it back to the board to do all that i don't see how about how can i do that on appeal i disagree i think that you can say there's not substantial evidence here but if th never raised as an argument for an affirmative motivation to combine back to my analogy about the boots in the sneakers he do you think the p t o should in my eye pathetically grant a patent on utility it's just something else it's just another way but not a sufficient way as velcro starts so that we do have to give a pat now for the inventor who claims boots using laces i'm not certain to answer that question please the court david or a less q for huac like we are far beyond k s r at this point it's at least ten or twelve years and clearly the issue of motivation to combine is a factual inquiry based on substantial evidence and what the p t has done in this case as they are doing in many other cases is they are going through the various statements of guidance that k s r is giving in order to do this factual inquiry and what's important to realize is that in k s r there is a long paragraph that i want to call to your attention as to the guidance that the few times taken from the supreme court in say interrelated think of it that doesn't help me if multiple factors but the very first determination that they made was that both references are directed to solving the very same narrow problem then you can say here's where we get that motivation what is it evasion where i believe and i spend a lot of time going through the p tabs decision and i believe what they did was they actually went through the four or five pieces of inquiry that case are tell them that they should do and it's at the end of it i think at least to my ears you're still not even understanding the question the motivation to do this is tab decided forms the basic knowledge one of order skill in the art would know that you put these things fundamentally at the input there's no notice issue with respect to that one but the peach have also did because this thing was so typical that you put at the front and then she dropped a footnote in a footnote that they're complaining about were the peep taps as well you know what we actually think this is so you know so obvious to put it in the front and it's typical if you look at this footnote source that the patent owner cited that actually gives another explanation for why one would be motivated to put it at the feet can you walk while you since you just referred to it is standard practice to put it input there is this testimony at twenty nine fifty eight from your expert mr chambers it says putting it at the ks the hildebrand reference again the interlake teachings hill hildebrand put it at the very front end of that device and they consider the fact that you know there is some design choice case law it doesn't fall putting the filter at the very front end so lost the stated purpose in other words there's nothing in the patent issue the philips patent that says we have to put this thing in between the two there was no expressed reason why in this patent should be in that particular price and there's no evidence in this record that there would be some novel or unexpected result of the fact that the input filter is not put you know directly on the input in this particular pattern and we also point out took note of the power electronics textbook saying this normally always put at the front end and they separately concluded under the design choice case law is only one factor as to why they conclude there was motivation why that would be obvious and what i was not able to answer the question of why they did it what is the motivation to combine is because there's multiple gro motivation to comply and yet if you could say there are multiple well what would be power savings now there would be to our own preference a third could be a commercial manufacturer whatever there's always a recent people can always enter the question why and yet to answer market demand and demand in the design community if i could just clarify that i don't think the board just relied on this naked buzz term design choice you keep repeating twenty times in fact i think it's dangerous to do that wri another known way where the to the configuration is flipped so therefore because it was known in the art to have it element one element two or element two element one not there's not separate independent grounds it's all these factors that were looked at you know the universe of facts that the tab considered has been expanded based on chaos are there's a lot of different issues then the court motivation for a relevant skilled artist and always to choose one or the other i do because you you literally have not said anything  laces theory but it seems to me that's all you have i have more than that i don't i'm not resting on that because there's these other facts there's that you don't like the knowledge of one of or near still the art that they took into account that knows that you generally put it at the front so so the law is not as you know i agree with with how i may be coming across but it's more complicated because there's these other things in this particular case that were considered by the board it's four or five different lines of he meant different sets of reasoning and again the tingler testimony was credited dr scenes testimony was not credited throughout and it's a factual inquiry they've made their determination that as a matter of fact there is a motivation to combined in a very detailed thorough opinion that goes on and on that tracks k s r and that paragraph that i said you know bridges pages for eighteen of cases are and as a is that this is not an instance where a new argument but why not it's not because the it's the same argument that was raised in the petition there would be a motivation to swap these two components that the that's the argument and the question being and that's the argument from day one and the question is what facts were relied on to support that argument that factually there be a motivation to sw there are multiple sources of facts to support that argument they're all in the record and this pretty much like i'm sorry my specific question is this particular fact that the board use everybody it's great it was it was in the record but nobody had made an argument about it in one of the new face of cases that was michelson figure eighteen or nineteen or something is right there in the record it was a central source but nobody had identified that think the fact that it's in the record doesn't isn't sufficient to meet the obligation to identify a fact that was going to be is going to be relied on the for that decision and say it's going to be relied upon or somebody asks for it to be relied on and here is your opportunity to respond to the end of the record isn't enough yet and i think that what the p ted did this instance they dropped it in a footnote because their position and they say that based on the other reference the other book always require that a filter be added at the input of a switching converter that was the the site that was put into the the the reply at the petition stage arguing for a different reason of it was obvious to two combined the two they relied upon this earlier cited page forty three as a reason why they always put at the front part of the of the design and then it's simply a footnote twell that is being complained about because what the builder did you did just to be clear they have two complaints one they knew ahead of time and they put in their bloopers the second came in their reply brief because they didn't know it about the sleep now well the the fact that the issue of motivation to combine was raised in the petition and evidence was put in and not on that particular issue but the factual record was put in that we were arguing from day one that it would be you know obvious two to combine and there's a lot of different facts that were put in and then the p tab of course relies upon the fundamentals of electronics book at page forty three for one proposition this is not the complaint that phillips has they don't have a complaint with respect to the citation at page forty three their complaint is in the footnote because the peach had said there's actually a second reason why you want to put it and this is the p tab just you know overly supporting their opinion with this additional fact that they were the ones that is we can look to fundamentals of power electronics as providing a motivation to combine our motivation to put the filter first because of how it's going to operate there and and that's the part where i don't think that there was notice given until you from the these sources and said this is the knowledge that they're taking into consideration even though we put it into the record early on in the in the put it in your record if you didn't cite fundamentals of our electronics on any motivation combine anywhere in your briefing until the read three as far as i can tell unless i'm wrong and you can point me i believe you're right on that well so that's the problem the problem is we've got i believe it's ten separate cases now vacating the peak have for making  decision and finding the fact on the basis of a reference where nobody argued that at a point where the other side had notice and an opportunity to respond we've repeatedly said in the p thames only rule rule say reply brief not good enough oral argument not agency can give the patentee notice an opportunity to respond that it's the same if the argument was raised from the beginning about the motivation right if the argument from day one is the same that that summer is going there it would be motivated to that we were arguing there was a motive given yeah well it's it's more particularized because of the swapping argument that was near east by the expert it would be obvious swap you'd be motivated to swap you'd put it at the front and because of the teaching of hildebrand the experts taking all those positions it's why you want to put it first and then it's the p temp that al out all the references to the power of electronics and these arguments a page forty three and forty four and you have enough in this factual record to support the actual conclusion where they credited you know  it would of been motivated to do so i guess what i'm saying is the idea that clamp could come first or second and still have the filter on the input line means that you can have the filter come first or the filter come second in that understanding it's where the filter is right so that's fair to say yes under his testimony i think that is fair to say but i don't think that answers the question one we've got this notice issue but two motivation is a if the argument now is the board found a motivation by pointing to the treatise in the text on forty four this is just like a basement del when the other eight cases where we didn't have adequate notice is that things they would certainly know that it's customary but the filter at the input of the power lines yes i think that the board is addressing the issue of part of obviousness could have been done and so i think they're addressing that issue now there's the second part  but that's precisely the sort of argument that the board rejected earlier so what about a forty five forty seven where the already is playing with hildebrand and discussing it and integrating it with oxygen and then making the observation that based on these two references it looks like there's a finite number of ways to solve the problem of draining off leakage current one is to put the filter first and then the leakage current circuit second and then the other one is vice versa so once again i think even an obvious to try context and this context when we talk about finite number of solutions this court and us are still requires a motivation to combine i think it's also notable that the what does that mean there it still requires a motivation to combine this gets to the question i led with which is the idea that there's a finite number of substitutable components that all are functionally equivalent for purposes in time text of a given technical situation i mean why what is the concern here for ts are so long as one could say that we would have a predictable outcome of reasonably predictable outcome you know that's that's a separate issue why wouldn't all of these different substitutable functionally equivalent options the obvious varian pass and then so we shouldn't be giving out patents on every single little different functionally equivalent full way of doing the same thing given that it's known in the art that they're all functionally equivalent so once again i don't think is that situation but i think that to the extent we're in the hypothetical world we're talking about that situation and the motivation requirement is essential because it deals with hindsight and so courts people are not good with when getting these arguments and telling when something is truly so simple that it would have been obvious or if that's just one side by and so the motivation to combine requirement is absolute and it safeguards against this analysis that goes too quickly and the circuit and the filter it works just as good as out scenes with that be enough for a motivation to come to come by our eyes i don't think so because that's not an affirmative motivation to do it use when they're when they're pretty no different in terms of how the elements would work you are could there be differences your q b differences with the way these issues marketed to be differences or the power factor correction due to some sort of reactivity in the p t o rejected all of those arguments making explicit that findings one two three into one three were both known in the art what is the point you have argued motivation to combine and i'm very sympathetic to the concept of motivation to provide what but you've argued it in a way that that indicates it has to result in an advantage or an improvement and that simply can't be so obvious variants of things could be less efficient but they're still obvious variants of things i don't i don't understand why motivation has to have some improvement or is it advantageous qualities to it my feel like that's what i have to swallow to be able to find i don't think that's true this is a purely a case about paranoiac produce legally cognize of all motivations to combine and it is not and so this is a case of outright failure to raise those arguments and the court doesn't need to decide what would constitute a legally one two three is what you've got with hutch scene but with hildebrand you've got two one three it was generally known in the art and generally used all the reasons that you suggested somebody wouldn't do what it is obvious to do  pitchforks and pick shorts on farms have three problems and four pots and you know i'm the first person to come up with a fork for eating utensil because hey that's great if they can pick up struck a pick of spaghetti so i have a three problem for well three and four guest to be some motivation to add a fourth paul can't just be an obvious variant they're all i don't think the scorning to address that question but i don't think the law says that simply because there's a patent doesn't identify a benefit material these are all very simple things to sum up with if the invention truly is so simple but the fact is the lack is not identified a single reason why and i think it's interesting that the board on page thirty four seems to recognize that the analysis is not sufficient this analysis of design choice and even the same problems ought to set the inquiry does not answer however for even if a person of ordinary skill in the art were motivated by the design needs of solving the leakage current problem we must determine that if that person after consulting the teachings and hochstein and hildebrand would apply the teachings as proposed by petitioner and that's precisely the principle that's in metal craft and these other cases that it is not enough to simply say that it could have been done or that there's this general