morning to be the patent office in this case did not carry its burden of proof in citing the as a reference under the obviousness test jaeger is a dead end accept the existing system as it is and teaches users how to work within the system gordon does not work within the system changes the system she created a sui generous system that did not exist anywhere before and the invention is a game changer because younger is a lot of hard work anyone who has ever tried to count calories knows how difficult it is to weigh and measure food and in jaeger is even worse than it sounds because with the agar you have to weigh and measure sixteen eighteen twenty meals a day entered a way measuring food and not coming to work to pay for the food you want to be in gordon system there is no hard work it's very simple if you just count packages in gordon system you don't need jaeger jaeger becomes moot that is not a sufficient reference to decline if everybody knows but you just said that it is difficult to count calories and waves who why doesn't that make it obvious and modify your to provide that service because you just gave the motivation to make the change nobody did it that everybody knows that this is the most difficult are so the problems existed for decades nobody has come up with a solution it isn't that obvious and the solution is so far removed from what normal people do every day normal people don't buy a hundred pop tarts under khoury tunes that are already are readily available at one point that hearsay evidence at one point in two thousand and one or two thousand there happen to be one can reduce the series alright so that some of the author of that article said that there was some can of tuna in some supermarket even with a can of tuna and a can of pepsi two items in a supermarket that could have ten twenty thirty thousand items which represents a point zero zero zero zero two percent of the store's inventory how could that be construed as a system which would disclose or suggest anything to somebody who is trying to solve this problem and those references the sara another secondary references can't be combined with gordon because gordon is a diet plan which has some threshold requirement for nutrition and these references show a can of tuna and a can of pepsi which is one hundred calories which isn't even diet pepsi not no rational requirement for nutrition is contained in any of these claims only thing in this claim is one hundred calories period there's nothing that says must be divided between protein and vegetables there's nothing at all in these claims that pertains to what you just said in that one hundred calories period so can a soda bins at one hundred calories two points one point is that the claim requires different types of food and the second point is that the references can't be combined so the first step is trying to decide whether the references can be combined without using the claim as hindsight to reconstruct the the prior art for lunchables contain different types of food and they have a plurality of packaging if someone had just put one hundred calories on the front of the lunchables then it would follow them these claims right maybe that's a third item in an inventory of ten or twenty thousand that does not suggest a system where one could collect hundred calories packages and count calories by counting meats simply counting the packages is a diet plan and she does have a threshold requirement for nutrition where arizona claims it doesn't have to be in the claims because what we're talking about at the beginning is combine and whether or not these references can be combined if we look at the claims to define how we're going to combine the references then that would be hindsight the references need to combine be combined based on based on what their established functions are and what they fairly disclosure suggests then we can determine whether the references could be combined once they're combined with they can be in this case but once they are then you determine whether the claimed invention is disclosed in that combination the claimed invention now it does not say nutrition but it does have a requirement for different types of food and the claim the subject matter of the invention as a whole is a diet plan to count calories and eat healthy jaeger the secondary references can't be combined with aig or because you're specifically says eat nutritious food and jaeger certainly does not suggest that you can practice her diet by eating tuna and drinking pepsi not enough there's no substantial evidence of enough one hundred calorie packages within the context of a younger diet that would give anybody a suggestion that you can create a system out of that and in practical terms at the time of the invention how would one go about collecting one hundred calorie packages based on the prior art you would have to look in the supermarket aisle but i will shelf my shelf looking at item by item until you find something that might have one hundred calories and nobody in that circumstance would have a realistic expectation of finding anything systematic if if by chance i walked into the supermarket and i picked up a pop tart and a soda can and two or three other items and they each were one hundred calories would i have infringed i have six items in my shopping cart they're always actually a hundred calories and i am leaving the supermarket have i infringed well you certainly would not have precluded patentability because now you've raised the probability of finding a system from point zero zero zero zero two percent thirty point zero zero zero zero six percent and that still doesn't make a system in order to preclude patentability you would have had to lie in french if i infringe would i also would there also be an anticipation no jill deal with the infringement first design fringe six things in my car well if you had no because those things you have would not have had  indication as a claim requires that this is an element of the system that you would combine to practice the invention you combine multiple of these elements and collect sixteen eighteen twenty done and count them but i don't need to know that there's a pattern to infringe i don't need to know that i'm infringing to infringe is not an end to end matter it's a strict liability if i have in fact bought six items each of one hundred calories have i not inferring that those packages don't have the in dishes that are in the claims no content is one hundred calories and an indication that other food units of different types having the same uniform one hundred calorie content are available to practice a system where you can collect the packages and count them and honestly if you had six items and you couldn't base a diet on six items you could but you might not reach i was i did you meant one item can you can you quickly comment on the printed matter doctrine which is has a long history in that in our jurisprudence yes it does and as in the you of the good part of what you're doing here y can be found this printed matter where we have allowed that are things like a slide rule or a mark measuring cups that are new they're  just a disclosure of what was in the printed matter so how do you see yourself lining up with those cases britain in this printed matter is not just describing the content it's not just describing how to open the package how to eat the food how to prepare the food the printed matter as a matter of fact without that printed matter you have the same food the same package the same instructions by opening a second case was just dosages and instructions right isn't that what you're doing just dosages and instructions no no because the instructions that's in that case are instructions would be mixed with water heat in the microwave for three minutes those are inherent properties of food this printed matter functionally couples a food package to other food packages to create an overall system that the the product exists the i'm sorry the invention does not exist without that printed matter creating an element of a system and multiple elements of the case for example those instructions that were printed on the package they had value and use whether or not they were attached to the package because they describe something inherent about the contents in this case the printed matter has absolutely no purpose apart from the elements of the system on which it is it's a functional couple ing of different elements of the system would you like to save the rest of your rebuttal time yes with an here are generally two sets of claims once that is the food unit claims and those claims are essentially to food in a package with printed matter stating that that food in a package has one hundred calories and that other food units of a plurality of different types are available to the board and the examiner treated that claim is also having the limitation that the food actually have one hundred calories in one hundred calorie portions in order to lose weight over a specified time period that is fair teaches that one hundred calorie cans of tuna with were available containing one hundred calories to it in a package and  nutritional labeling education act as nine hundred ninety required all food sold in a package to have a label stating the serving size and calories per serving size on the package the board correctly found that there was motivation and finally remington teaches that patsy for example about pepsi has one hundred calories for the entire can the board correctly determine that there is motivation to combine here yet her with sarah and the other secondary food kind of fill in these claims but just looking at the claim which defines the scope of the property right here was and i write that i had friends when i went in that supermarket and bought six different items of food that each had one hundred calories you're i think you are right about that in one anticipates infringes later anticipated if earlier at the board was for gather generous i think with these claims but looking at just the food claims aside from the not the claims which i to ask if we resolve this case on anticipation or obviousness or some combination do we need to reach present matter your honor i think that you do need to still reach printer matter  because the there is one limitation of that that indication in print stating a plurality of different types of that are available that the examiner did not find prior art there that does not necessarily mean there isn't any but the examiner did not court cases where there is a new and non obvious functional relationship between the printed matter and the substrate require a real inner relationship between the print and the  on an endless loop and the having the numbers on the loop allowed the calculations allowed math theory samples and magic tricks to be performed if one did not have the numbers on the loop one could not perform those those calculations lot of i would imagine miller's argument would be the hundred calories is the same thing to the diet plan if you don't have the hundred calorie information on the label then somebody can track the the label here for fall squarely into the new guy hamsters and a king president which is really just like a set of instructions it doesn't have to be on the canon to work you could have a little instruction sheet next to the canon that said these have you not on the the next to the can or on the internet saying that they can have one hundred calories and the whole method would still work with it's still function there's nothing there's no there's no new functionality created with with the food by virtue of having the printed matter on the food itself i'm like for example the print for the endless loop where if you take them off and put them next to the loop it doesn't work or unlike for example the nature and cut up in miller where if you don't have the mark all of the simply imparting information yes your honor the way you characterize it yes or i think it is if you could tell what council says is the instructions here couple couples is the time the diet plan together the different hands together a couple  isn't enough under this court's precedent coupling would be like a kid like macgyver where you have instructions and elements of a kid or an element of a kid and instructions really say what you should do with a kid you take the reagent you put it in the  bigger you mix it up and that that couples that's right but that's not the type of functional relationship that this court's precedent requires it would be as if for the eyelash we're in your room the case that we were just talking about if there were a compound that was known in the private prior art that length in eyelashes that could be not that could not be made patentable merely by adding a set of instructions and a brush to put on your eyes is enough because under larry the court held that the printed matter must perform a function and quote glue up requires no more and coupling is a function it's not  doesn't say anything about the inherent quality that would work even without the coupling if i go on the internet that says by these six foods the same six foods i was buying in my  i might not infringing where it were nor ng a claim element and what is that the claimed element is element number two no i'm sorry c two for example of claim twenty three where the indication indicates an availability of other food units of a plurality of different types of food each of said plurality of different types of food having said pre determined caloric content well i told you i bought a and i bought a soft drink and i bought a little package of carrots you see in those who care packages and and so i have a variety of different food groups but they don't have in dish which helps you  it has to do more than that we're gordon is not claiming just one hundred calories on a package that find it was that then we would have a one or two problem with that can of tuna whatever that was there is an entire separate claim element which has been ignored and it requires and it is required to effectuate the system as a whole where you count packages you don't have to count calories you don't have to weigh and measure you just count packages that is the invention as a whole and nothing in that prior art brings you there and this is the problem with the printed matters even say that  units yes and again i got the carrots and the pop tarts they're all what they say on the label fine as a consumer you may have done that yourself but you would have had a really rough time at the time of the invention pulling all that together and there was just no means no physical means for implementing this concept that you're talking about and gordon create a system with those means so you don't have to look i'll buy i'll help looking something for anything with one hundred calories and this is the problem with the printed matter doctrine and this court and its predecessor for decades have been cautioning against the rote application of that doctrine because exactly because it encourages the industry this patent industry to ignore express claim elements in violation of section one hundred three and section one of three cannot give way to this judicial doctrine which encourages a violation and does exactly what happened here and this is a perfect case to illustrate why the printed matter doctrine cannot be used as a litmus test instead of section one of three thank you very