the next case before us is nineteen thousand two hundred and six caterpillar versus workin mr ross are you prepared to begin i am thank you your honor ok you may may please the court the prior art combination presented in the petition a failure to consider evidence that satisfies either of these two requirements warrants a real man and here caterpillar satisfies both  caterpillar does not present a substantial evidence type argument in this appeal the board expressly refused to consider caterpillars manual mode argument and the related row tech manual no that didn't and this is what invokes the anna coren apple legal standard responsive to just something that you couldn't have anticipated right the yes your honor the abuse of discretion standard applies although here this is really driven by the law the law is clear in the finding when the parties are allowed to submit new evidence replied restage if that legal standard is met then the result necessarily follows and what i mean by that is if the board properly considered newly submitted evidence that it was required to consider under precedent then a is the lake sensor only modification are working in response said that a skilled artisan wouldn't do this specifically said the only way to use a length sensor only design would be to have a machine with a manual mode where the operators manually controlling the leds work and then call this design quote exceedingly difficult it said this in its patent response of page appendix page one thousand three hundred and twenty and i made this argument when challenging caterpillar swisher glass in combination made this argument in response to the swisher glasson combination so they linked it to the main theory the caterpillar position just just to be clear and i apologize if i'm being done to headed this statement word can make that the two places i think it's identical after caterpillars propose modification unless the operator manually adjust the height of the lifting columns during travel and exceedingly difficult task the milling operation will be defective so what that sentence says just by terms as i understand it is that raising the thing during travel manually  is exceedingly difficult is that the same point that you think are x five hundred responses but that's exactly right your honor i think the point that they're trying to make there is that if a skilled artis would not opt for a design where you rely only on like sensors to mill because to do that you would have to have this manual mode of operation where the user or the operator is standing on top of the milling machine in the consul and just hypothetically it proves it was actually done before that's why the evidence is so compelling because it takes the evidence that working provides just hypothetical evidence from an expert and it shows that this is actually done in manuals and there was the testimony from the ro tech witness the testimony from the ro tech when this alone is state of the art of events from a personal skill in the art that's sufficient alone to there's really no dispute that this evidence would be admitted i know work and find a motion to exclude this transcript but there's really not much of a dispute left after that point after knowing the work was there to cross examine the witness because we're can simply argue that we didn't serve a trial subpoena caterpillar didn't serve a manuals how to disclose features that were embodied in the machine that the witness testified about the road check witness whether these st of all these manuals were publicly available the evidence shows that the testimony from the road check witness show that but even if they weren't publicly available these were features that were in the actual machine that will sold so we have other evidence that we put in that shows that there was a sale of the rotex r x five hundred machine before two thousand and three and that and show that people were using the machine that dude in combination with the testimony from the road tech expert as additional evidence about what the features in that machine were this all really boils down to there are multiple layers case for the same reasons i'm giving you here and in addition to that the i t c found that this row tech machine anticipated claim one of the five dollars to zero pad the same plane that's at issue here another point i think that's important so understand your honor is that this rotex evidence stands on its own the evidence of contemporary contemporaneous documents very evidence this court's precedent doesn't allow the board to ignore this type of evidence and the reason it is necessary to make sure that it is at least considered and just of clarify one point about your honour's question whether on that motion if it gets reraised by by working but it certainly isn't appropriate here to make any findings based on whether the evidence is admissible because it's not it's not before the court now there is no dispute that and working can't dispute this that state of the art evidence doesn't have to be publicly available and this goes back to your honor's question as well it can be evidence that a company had inside inside its own premises that no one ever saw if it's been doing it's been practicing the invention claim limitation by limitation in the claim before the priority date of the patent that is highly material state of the art of this regardless of whether did consider the rotex evidence at least for the arguments you did so specifically your honor not your thing the board of didn't refuse to consider the evidence it just refused to consider the manual milling unresponsive lacking both foundation expert testimony it was well within his discretion to not to consider that argument along with the evidence associated with it but we do see elsewhere your honor in the final written decision that the board reviewed the petitioners analysis evidence and citation for example on appendix sixteen also on the same page your honor the board states based on the entire record that agreed with the pattern owner and  configuration and this is key because what the p ted did it made a critical determination that swisher was directed towards persistent planing and cannot operate for its intended purpose if there if it sensors removed and this was based on substantial evidence both experts agreed on this point when caterpillars expert was asked in the combination they proposed would he remove any of swisher sensors from a harsh environment he said correct he would not so what work and argued in its patterns response with an understanding of the intended purpose of swisher was that removing the external elevation sensors spiel argument that the intended purpose of swisher would be lost if you look through out work in spiel arguments it repeatedly explains how removing swisher externally mounted sensors would destroy a key feature as the machine could not refer to an extra reference and working even includes an illustration point out the differences between a road surface before milling that road surface milled without an extra little elevation  gin milling with manual set up if you want to but for persisting control you have to have some indication of the ground relative to the drum working never argued milling could not occur with the only argument we heard this morning from the other side is about r x five hundred so i guess i'd like you to return to our x five hundred and explain  just focused on r x five hundred why the board did not commit an error and with respect to what every did on the r x five hundred i say it in those terms because questions in the deposition so for example a reference to the adding sensor rationale one of the statements that caterpillar made was the are excited one hundred had an automated grade and flow control system they moan but they did not use the lake sensors so with that statement caterpillar never explained how the arc five hundred dollars if it had an automated elvish control system why one would use additional data from the lake sensors if that machine never incorporated such at the same time otherwise stated not only did the alleged art five hundred failed to provide any indication as to why one would take the data from the lake sensors to improve the control algorithms or increase the quality of position milling it went the other way the ark five hundred evidence always did was provide an example of a machine with an elevation control system a lake sensors just can i just ask if there's a it would it be fair to say or not fair to say that the board did not decline to consider the r x five hundred but instead examine the  r x five hundred evidence and the lack of explanatory material in the context of the particular combinations and motivations for those combinations and concluded that as to the motivations and combinations being asserted that were timely the r x five hundred did not help caterpillar anough to make it i think that's correct your honor and speaking hypothetically maybe if there did an expert declaration from caterpillar with the reply or maybe if caterpillar does not state that the motor system didn't use the lake sensors the board might have had the tangible benefits which again was a separate motivation to combine it was originally advanced to petition a petition only and there's no point in the petition or the expert declaration mentioning manual milling the petition only discussed shielding the sensors the extra expenses of swisher by moving them into the lake cylinders protecting them from a harsh environment so you have two distinct differences there again the motivation of the buying for the petition was based on a combination to protect the sensors the reply the motivation combined for the obviousness case was to provide an operator the option of man even if we did get to the testimony or exactly what the arcs five hundred evidence was as my colleague mentioned there are seven ensure issues with the work at the time we raised in front of the board evidence based upon the record before to get in with no expert declaration and the statements from caterpillar did not need to be considered or need to be relied on for those or to censor us from there does are two separate things and i don't think the board said we're not considering it andy i don't know how how how one could square that with footnote eight which does actually consider edits but it did say it wasn't relying on it in your patent on a response you said it would be exceedingly difficult to do manual changing of the height of this thing while traveling and that you are excited one hundred whatever else it was was responsive to that is your position that it was not actually responsive to that or that it doesn't really matter because that the board even denied workers motion to exclude the row sec evidence as moot soley because it chose not to rely on this evidence that's appendix page thirty two dollars we have to take the boat borders work it said what it said and it didn't rely on sorry i just get correct me if this is just an oversimplification but why isn't it fair to read what the board said about manual milling that one of the combinations proposed in the petition might well have  might well have been asserted in the petition to be motivated by something having to do with manual milling but in fact that motivation was never presented in the petition and so it's just not available in the case and it doesn't matter what r t r x five hundred would say about that because the petitioner didn't preserve that motivation sure you are so the lake censor only design was the law doesn't require the every bit of evidence to be disclosed in the petition so we have our initial petition argument the swisher glass in combination with light sensors only and now we have after rising evidence from rote showing that a person still in the uk would make that combination has very strong evidence as i've discussed it stands on its own as part of the administrative record and there is nothing requiring caterpillar final every piece of evidence and through its expert