erroneous standard bodily incorporation rather than what the combined or teaching suggest to a person of ordinary skill with common sense and creativity and then in addition the board lacks substantial evidence  that but dr wang adequately in his outgoing in his initial declaration put forth everything that was necessary to satisfy the prima fascia case based on the record at that point what did what did he say about inserted a new structure a new to you but if you look on page thirty eight of our operation we hope that it simply found that the two the only thing that's new is the letter to that too that we have there it's been there since which the arm flows and to cue the cue the tube that extends to the lower level and that merely by using that perspective in combination with the overhead view he was able to do a slight to cross section to show what we have here in example one showing plainly that mean apos had to solve this issue in the two package arrangement of course he did not wrap it around the center lower extending to q every nobody contested that that's why there was no response and he let his claims fall but all of a sudden the board wiil to that we had somehow injected new tutu and pages twenty two and twenty three of a final written decision over and over and over again it's all stuff done something that nobody ever accused us of doing they describe it in many words and each of the different claims but all it does is add a neighboring package that is one of on the same side thereby doubling the run time it's plainly admitted in this case if all elements are present the record says that  wrapped around nobody contested it was a two to two package arrangement so why would a person of ordinary skill suddenly just just shed that knowledge purged from their knowledge and then begin wrapping around the middle pole it just doesn't make they were that they required that you're making all these statements don't comport with my understanding of the record i mean it sounds very compelling if true but where did they require this time old improper standard of showing stapling and every little detail where were told to use by the incorporation at the hearing by automated creel systems and they did in fact as evidence by the basis upon which they really relied to risk inclusion of an opera billing it's conceded in the record all elements are shown in the motivation to go by and there we have the case with the talk about it the only case in opposition to us the case one where there was a highly contested issue about whether the elements were shown it was highly contested whether there was a motivation to combine y of the teachings of these references rather putting together a standard for us where we were required to prove this is a quote to disprove live or log on to primary objective of minimizing it when i felt that i mean the prior art as well as the patent at issue all talk about at some level the concern about breakage the people of ordinary skill in the art should use their common sense and engineering facility to make sure that that that they don't tie yarn around pieces of machinery so it breaks for example lying on offers a preference preference of not turning the arm on what it calls particularly sharp turns which we say putting aside that that is undefined the premise of live on is built upon an understanding that is age old that people have been apparently turning or successfully on particularly short terms whatever that definition is and we know from by the challenger and each of the decisions is concluded with the rationale to be cute if it fits which it was an added structure and if the board finds that it was that a structure or says that it r they did exactly what judge moore mention a minute ago it was hindsight they found a laundry list of everything that was in the claims they asserted it in the end i p r but they never told us how you would put these pieces together when we responded and we hired our expert and asked him to apply and on his he said i don't know what to do because work how these puzzle pieces go together nothing would work and we were shooting in the dark the entire case we submitted first he says simply labeling it in their rooms he's late with something starting in the in the device all of the packages and shot and so this before they have to point towards the the two that the that the thread is going up because you're an s yarn and it has to go towards that to dr wang's example of q none of them point towards the the tube that they're supposed to the example doesn't follow anything he says he doesn't explain what happened next to those if you're going to have all four of those how does the rest of the vice work and you're also fishing it through a tube it's already in munich off it's already in bar magnet and it wouldn't be possible to fit that yarn through there and have it operate the way that the three six zero patent does the three six o n has no tubes to go up through the middle it's just rinse so there are a victim of their own lack of helping the court to understand how they would put these together because there is no way to put those together when we get to the second i p r we have q is new to fish it through there like that would be new and it would in these devices that operate very you know back and forth and the thread is moving very quickly it would be hard for an operator to reach his hand through their fish you've got to tie these things together that priest seems pretty clear there's further language or they say the use of it but you are correct that it is not a new tube to the assembly if you look at the munich coffee reference there are tubes going up through the center so again if we find that break that way none of the packages facing the young guy they all have to face point towards that yarn guy so they can go up the way he's drawn it it would be pulled laterally to the package and the operation would stop and the board addressed that like they say you could so there's fundamental problems if they were going to submit this embodiment should have been in their petition so be in front of us it would be in front of our our expert and they would have dealt with it but because there's there's issues and they knew that they when we move to the second i p r we have an entirely different story this is a one appears case of hindsight i think this court will find i'd like to start with the bigger easier to understand concept in the second i p r we have those three references are all owned by the same company the barmaid corp they've been owned by the corporation for over thirty years prior to shah submitting it would be obvious to combine those you have a company that is  till in the art and they haven't thought of it for thirty years that should be clear enough evidence that it's not obvious to combine the structures number two they have the fact that shuffle is first in a partes review they said they hired dr wang obvious combination i'm sorry they didn't they didn't think then the blame should be used as a combination reference further evidence as not obvious to some of the skill in the arts combined it was only after the first i rejected claims for as one that was being challenged that they then went and we say they went to a scavenger hunt to try to find anything in any reference that could show what was reciting the claim for which is the distance corresponding to comeback with the reference blah blah is pictures on the final written opinion page thirty five at the very back i'm sure that the the appendix page thirty coin four of the three six zero patent and they say that the distance corresponding to because the package has to swing underneath the horizontal bar label the sixty four we responded and said that doesn't make any sense if you look at the row right below it that bars is below the package and it couldn't swing underneath there and we said looking at the third row down it doesn't make sense because it's it's even lower the package would hit that bar can swing underneath the board says to us that doesn't matter with what is in the rest of the drawing they say on page thirty nine of the find over the pinion they say whether the other disclosures are talking about the lower to rows they say teach the same distance is immaterial if you could turn of the final written opinion on page forty to show an arrow they say this this shows that the package much swing underneath that bar that's why the horizontal portion sixty four must be higher than the package it wouldn't it would not break so we argue that there is plumbers and teach height corresponding to the distance of a package it doesn't show it there they didn't find in our favor on that and they say we're going to now combine what we think is the disclosure of a high corresponding to its distance of a package into munich off but here's the other error when they did that they didn't combine the height corresponding to they added adjustability to munich off no where do they say they're read brief we have excerpts of his deposition he didn't understand it one does not teach adjustability the pieces are fixed when we argue that we say you can't put him in a doctor that doesn't teach a disability the board says well don't worry about that because that's plan for doesn't require disability so it's very confusing they're trying to invalidate our claim the claims height corresponding to a package with a reference that really doesn't show that and then what they they say you embody something different somebody has adjustability that's not of the point and this is all of a just thirty nine for forty one of the final written opinion so the the the problem here is that we still have never seen anywhere in this case a description of how the lung would be actually incorporated with music off regarding how that work there's been one drawing but the packages of munich off are not shown to swing underneath anything so there's no distance corresponding to somewhere there was a shell game here we put the l shape bracket under a shell they move them around when they lifted up there's this suppose to just ability part portion there but one doesn't adjust it it looks like it does if you read it quickly but it doesn't it has a a restriction on this tube sixty four that shaw said is a telescoping tube and that's why you would move it into a cough or blow but that self that we do has a fixed bar sixty five that keeps it from telescoping when the machine pivots it pulls that sixty four around and telescopes it but it's not anything you set for an adjustment sixty five moves around exploiting this very clearly in our great brief in the first ten pages title thirty five chapter thirty one section three fifteen grants the patent office the three fourteenth at the patent office the ability to conduct these i facilitate these a p r s in a timely manner and to ensure that each of each of the claims of looked at and that there's a final disposition by that by that period if if they get a conflict case and maybe  to meet their deadlines and need to work harder or more efficiently but just too many different grounds of rejection being lodged on the same claim i didn't understand them to make a factual determination that the reference to pain was redundant for example if the reference was a can off they said that  the court good afternoon your honor just before i answer the specific question you had about redundancy and where that comes from i'd just like to start by saying that this court laxer stiction to review the u s p t o s decision to institute  which talked about a writ of mandamus would not be appropriate when there is a decision not to institute when there is a denial of an institution decision on that can't be challenged even by way of mandamus and what you have here is an effort to institute redone pain that reference was redundant of these other references but rather i think it's important it's important for us all purpose is important so that later in a district court litigation if somebody tries to argue pain that they can then bring out this redundancy and say no no p t o already disregarded that they found a pain factually redundant of mood can offer whatever it is and therefore district court you should reject it too you see why it's important it's very important that exactly what the p t o meant by redundancy be made clear so what exactly did they mean i understood it to mean redundant in terms of too many different rounds of rejections were going to only decide these were not expressing any indication her decision was regarding the validity of these other your understanding is correct your honor when the board said that the grounds are redundant they weren't talking about cumulative or something of that nature they were basically just trying to say we've already found that we can go forward on this particular claim under one theory we don't have to go for it on that same claim under multiple theories even though those other theories might be totally different and the pain reference might disclose very different that a thing that is correct your honor so for our purposes and we talked about this in our brief although we don't think it's right here we wouldn't find the stop off on that team based around because we didn't institute on it just to further follow what you said about it's important to know because a district court would need to understand we simply are saying we are going to institute the particular grounds and the reason why we did institute on these grounds is because we didn't feel that we needed to i know that your primary argument is i don't have the authority to review the decision right and i get that but let me just ask you a few hyatt you said i'm going to limit you to x number of claims if you need more than that tell us why we think these claims are representative of all your arguments and you did the p t o did a really great job of putting the onus back on the person s this excessive amount of stuff to justify which things were the most important but what seems to be occurring here in this process is the p t o is putting a blindfold on and throwing darts at the wall and deciding which grounds you're on now let me be clear there are two sets of claims at issue in this entire review and they have been divided nice and neatly and evenly the interposing claims on the one hand which are six seven thirteen fifteen eighteen and twenty one and the in claims on the other understand what i'm saying so far i do ok so the p t o decided it wasn't going to look at ground eleven twelve thirteen fourteen or fifteen i notice and i'm sure you would as well that the anticipation under important function or purpose or i don't know rupture there's only one road of rejection of anticipation made on this entire set of claims and that's the ground the p t o said it wasn't going to reach because it's redundant instead what did it do it instead decided to choose one of the obvious this ground based on the cumulation of like fifteen different references three to be honest not fifteen but you get my point i understand so i guess what i'm wondering is whether i can reach it or not to seem like anybody put any thought at all into deciding that pain would be redundant and that the whole world would be better served when there are only fifteen grounds of rejection lodged by the agency choosing which ones to go forward makes sense or not the board has to do what it feels it's best considering what it has in front of it so why then would be best give me any logical reason why you think this decision that it made in this case makes any sense and leaves them better off for the world better off  the as we said in our brief the board said look we've already instituted on this but figure around eleven we did ground five we don't also need to do ground you didn't go to the ground eleven no no that's my point we don't have to institute anger on the left but patient of these claims there's no other grounds for anticipation of these claims what i'm saying is maybe i'm not being clear so if you look at ground zero eleven it's talking about particular claims one to five  border saying is how is it more probably more efficient to look at three reference obviousness for those claims than one reference anticipation of the board found that there is a reasonable likelihood that it could go forth for example on ground three which includes the six seven and some of those other claims and says we don't have to find other reasons to go forward on those exact same claims we have then when the board came to the conclusion as it did in this case that it was wrong in terms of having reviewed it was wrong when it said this like more likely than not that these claims are going to be rendered invalid by these references why not then at least go back to pain or let me ask you this isn't it true because i think it is so they could institute another review right now you said they're not a stop terminations on the ground on a substantive level of reasonable likelihood ok so they're not a stop definitely not they're not a stop so the answer to their there would be there might possibly i just have a fact i don't mean to interrupt you i'm sorry your honor but if fall before a new declining to address it's not on the merit you know you're on but they could go to district court if they wanted to and if that and again i'm not saying that they would be barred i don't know but if they weren't they could try to bring in but don't you think that there could be a more sensible approach to doing this kind of like what you all did in hyatt i mean first up is only fifteen grounds here and there's only three primary references and there isn't a patient for all three of them why in the world wouldn't go review it or not i mean doesn't it and then make a heck of a lot more sense when you turn it back on them and say you tell us we're not reviewing all these you give us your best five euro whether or not there's a better way i can speak to what i can tell you is that it isn't it's within our at different claims and saying well this one is not a good one or is it similar to this one or let's not prosecute on this one because if we decide this the right to the right to well under the a i a the right to this particular proceeding but in the district court the right to a jury and and my fear is that you know we've done the doctrine that doesn't exist is doing exactly that choosing to institute on part of the grounds that were presented in the petition but not all of the grounds that sort were presented in a petition with the party there not to stop or prevented from arguing those grounds it's just not going to go forward in the particular but we're just saying you can't do it here because we're not going to institute on it we're not giving you a reason we're not saying there's not a reasonable likelihood with respect to them we're not making a substantive call we're just and just to point out they don't rush into the side what's in the efficiency of i've seen lots of i p r come up already where there's thirty grounds the p t o results all of them what if on the thing day this determination was made no really going to do ten appeared there's another determination where they go ahead and review all thirty is that is that ok is that it is an exercise of discretion to allow the agency to do make different decisions in different cases like that yes because actually we don't know what's going on us cases just because a case has less even references or claims doesn't mean it's not more complicated it being made that that something is redundant are you selecting the claim for the grounds that are the most complex and that's what you want to do with or the ones that that will resolve the entire the entire case  choosing to look at the petition as a whole and make a call into what would be the most efficient for that particular petition the reason i'm not specifically answering what they decided is because it could be different for the v institute on doesn't have a reasonable likelihood of success you're not we don't even have to state in our decisions our institution decisions why we're choosing not to go for it they happen to do it here and use the word redundancy but they could have simply just said we're going to institute on grounds x y z and said nothing else but they said we're going to we're going to we're not going to institute because we don't like your company period suppose that they clearly went off line and indicated they  to institute for a reason that would not be viewed as even vaguely or plausibly reasonable or within i would think within the delegated authority given to them by congress to promote the efficiency whatever whatever whatever and so your question is if they did know what would happen we would would that be a case where we could review it that would be the case that you can choose to possibly be an improper motive possibly i mean if there  right if there's constitutional implications and obviously ten that's not the case here but suppose it is only one claim one ground and you look at it and go oh this is a really difficult complex play we're not going t of going forward we can deny to institute on that claim that it was in our discretion to do it's not something that usually happens but it is permissible where does it say that does it say that section three sixteen  institute so if you look at three sixteen a and b that's where we get our story to go four hundred thirty seven c f r forty two point one and so at three sixteen ok so it's three sixteen two right i'm going to help you and get right to the point setting for the standards for showing sufficient grounds to institute a review and you've set them forth and you've said more likely than not invalid right isn't that the standard that you set for yes and then if you look at a thirty three sixteen a for status and governance or parties review under this chapter so that gives us authority to do it and then if you also look at three sixteen b we can take into consideration the account and you're saying that your regulation forty two what is it thirty seven c f r forty two point one there ok and that's the one that allows you to tell me exactly what that says that allows us to institute on some grounds and not  determination that pain itself was redundant and the other references were you just deciding ground i'm a little concerned by the p t o s explanation and the fact it may have the lack of clarity in your decision in this case and what effect it might have so what does it say precisely that regulation you can do so the regulation reads that at any time we start a when it's turning into parties view the board may authorize are to proceed on all or some of the challenge claims and on all or some of the grounds of the ability asserted for each claim and then under be it so that any time prior to the institution of the departed review the board may deny some or all ground from penn ability for s choosing not to go forward on pain for reasons other than reason the likelihood of success they could be choosing that to go forward on the pain grounds because the already have decided that the claim that pain is covering in the petition already has one theory applied to it or two thirds  can decide it we can decide this ground on this particular grounds well that's efficiency because you're saying we've already have one theory applied to claim one just to pick a claim so we don't need to consider five other reasons and references as to cl reason that's the argument that i'm trying to see so i just want to remind score i know we've sort of talked about redundancy and whether or not i do some discretion but i just want to remind of court that this court has already decided whether or not  decision can be reviewed under hodo in st jude and i mean in the us and cases well which goes to both of the arguments that a c s and shot were making in their briefs to this court so i respectfully ask that you dismiss on that battle that the a c s may say that we are stopped and they'll be an outcome by the district court judge and one side or the other will having a plant that will be back here in umpteen years to talk about whether we were stopped or not perhaps will be another case of the government consistently taking the position that you're not a sign and we're encouraged by that and that's why i'm going to we want to disavow the russian liberty mutual is a case that talks about two hundred twenty references this is a handful and one on one or two in particular and the other point i want to make quickly  responding to the i p r to the bloom reference there is no error of law even to talk about there and there certainly was substantial evidence the ball the board said that this limitation corresponding to the distance of the packets was shown plain as day on all three so i want to return quickly to a couple points that effectively i did hear one misconception that it's a three reference obviousness case to make sure just more of the understand that it has to turn to no it's actually well it's three secondary references one primary reference in three three argument i'd think i meant agreement on that just was i i don't know what that means is the use of two q the board linked its decision on page twenty two and twenty three to the fact that it had the misconception that we all  used in the two package arrangement there was no one's there but that's why they wave the white flag on those claims because people knew enough that when you move from a i mean they draw a distinction between the new tube and the new analysis and when it's not just a new two they're saying there's new analysis as well i don't i don't follow that for from what they're saying it's given that they're trending across a script given that there is stranding on the same side when there are specially saying is that a person of ordinary skill let's say the image is a shoe issue with two i had let that person of ordinary ordinary skill would have solved the problem hey i'll take my lace i'll tie the shoe together add for a while and suddenly i