that there was a motivation to combine the teachings of the j p forty five with something like the g d trade master i couldn't tell that analysis was skipped over and perhaps assumed and then just focused on the whole question of whether anything in the prior art potter suggested using that the thickness detector to prevent the starting of a mother you're right i think the i think the war did make finding that there was a reason for the mine they they say that they credit the testimony from the areas that oration which says that they go on to continue the analysis and they seem to be looking for something in record is fact that if the shredder was not yet running if it had for example a manual on off switch to be able to turn it on and too much paper was inserted prior to the user turning this flipping the switch the trucker would not start at that point the fellows flames and going to prevent the starving and that comes really directly from the purpose of j p four or five and the but board also agreed with the evidence of record showing that the purpose of j p four four five was to avoid paper drams before they begin and it's only in that way when both the configuration there is a configuration that is present and those elements are operating as they are in the prior art now the board seem to be looking for something more but they did not ever complete the obviousness analysis they stopped short and they said things like this that it didn't know the physical placement of the elements didn't necessarily result in the claimed invention and that in so far as it goes is true the physical element themselves if they were operating some way different than the fire are certainly could be programmed a person were next on the earth would understand them to do something else but the p four four five and the patent says in order to achieve that purpose of avoiding jams before they occur now when the thickness violation occurs there is the disconnection or this lack of communication between the power supply and the motor detector is tripped if the machine were running it would stop and j p four four five talks in their language as if the shredder is running but a person of ordinary skill in the art would appreciate would have known at that time that if the shutter was not yet running that lack of communication between the power supply or that disconnection between the power supply and the motor would result in the shredder never starting it would meet that language but preventing the starting of the  because there simply isn't a connection in place at that point the case here we believe is very similar to a number of the obviousness cases before the sports but then we've cited in our brief such as randall and play smart and george martin in the following sense there really is no dispute on the prior art but the result of that would be the claimed invention for that reason like those cases this is a question for this court to review de novo the conclusion that the board came to after its factual findings that set forth those factual findings are on challenge and we accept them and follows not challenge those factual findings we submit that based on those simple factual findings in this very predictable are the best is an obvious invention over that didn't consider what they didn't consider is they look they seem to look for and they said things like that there wasn't an explicit explicit disclosure in the prior of not starting and again that's true as far as it goes i think what the board did not do is go beyond that they almost the opinion in parts reads almost as if they're dealing with an anticipation rejection and looking for some very specific explicit part in the hierarchy they don't i i think the thing your honor that they never did was go completely obviousness analysis and say given the teachings of j p four four five and the other references on present sensing devices with a person of ordinary skill in the archive understood how this was going to run with those pieces acting exactly as they are in the prior art it is certainly true that one could achieve the elements a fellow's claims in some other way but the relevant point is there is a way in the prior art in the way that the board talked about combining it wit sector first in the present sense or second and operating just as they operate in the prior art so the thickness detector operates to stop or disconnect power and if the if the excuse me if the shutter was running then it would stop but if  shredder is not yet running the disconnection results in a in a shredder that is not going to turn on it's going to prevent the starting as set forth in that functional language at the bottom a fellow's plan the and i would direct your honour's if with regard to this this specific evidence with regard to how this would upgrade is set forth in the declaration of talks about the exactly what the person ordinary skill in the art would understand the j p four four five would accomplish if the shredder was not yet run it is true that j p four or five itself does not talk about how to turn th let me see if i understand your argument is when it comes to paper shredders everybody knows the value of a present sensor or the autostart functionality of turning on the shredder everybody also knew that jamming was a serious problem with paper shredders and the better solution is to have a thickness detector that would prevent the jam from ever occurring rather than some kind of jam sensors flash stopper that would shut down the shredder only after a jam it occurred so therefore it be obvious to combine at present sensor and a a thickness detector now the next question is how would you put those pieces together and according to j p forty five for five you would put the thickness detector in the the present sensor is already in the throes of the paper shredder so i guess in your view it would be obvious to have either configuration that mr tech or on top present sense or below or alternatively present some toronto sickness detector below the first option is necessarily renders this claim meets all the claim limitations and so therefore the claim should have been the rejection by the examiner should have been affirmed problems that basically your point yes yes you are that is basically the how come it hasn't been done another of these people this company did make these changes and is of commercial value and interest in retrospect we say oh anybody could have done that so i can go along and now make the change myself it was new very small problem in that same small differences in minor arts where it does make a difference and it does have a value and so was copied jamming it's all the underlying problem of jamming by being able to shut that motor off before the paper got there the minor incremental benefit of adding the automatic stop start feature gets then to the entire claim and that was undisputed fact for example the board had a dispute of what does j p four four five teach it was a dispute does it teach not starting or does it limited to stopping and is incapable of preventing jams because it doesn't allow enough time for a paper to get into the air there are disputes about the scope and content of the prior art there was just use about how long the problem of shutter jamming had persisted in you're out of touch and when you raise the question of crowded art issue and i think that becomes more of an issue when the problem has to sr for many many many years and yet nobody has solved it and that makes it a little bit different from the index systems type of case where there was an f c c order that said you have to have parental controls v s and all of a sudden voila the invention was created shortly thereafter factual disputes about what is there is a long felt but unsolved need then that goes more to secondary considerations rather than the prima fascia case of  whether there's a motivation to combine a sickness detector with a present sensor in a paper shredder i think it goes to both here acco did not offer a person of ordinary skill in the art basically their view didn't identify one so their view was the prior art itself tells you what the level of skill is right you can go read patterns and what we do and we do that is we don't just read the patents in the rejections write we read all the patches that are in the ark to kind of ascertain what the level of skill is and in that sense one must consider that thirty decades years of people trying to solve paper jamming over the years including for many many years even after g p for four or five came out or after presence detectors so when you approach the believe it actually factors in both sides of this equation but let's get through what to me is the heart of the case i mean you're to me the heart of your cases your your patent contribution is the idea of stopping jams before they occur and that's what sickness detector does it prevents the jam from a crime now on a certain fundamental level that's what j p four forty five is also doing now it's true that j p four forty five is talking about after the motors already running and then cutting off the power whereas your invention based on the way your claim is drafted and the thickness detector prevent the motor from ever start along with the present sensor but now i get to the question of if if it is if there is motivation to have a thickness detector from j p four forty five along with the addition of a presen question at hand which to me is if there's only a finite couple of arrangements or configurations of those two sensors in the throat of the paper shredder why wouldn't each of those one reason is it does not appreciate that it's the controller that is making the decisions which means the actual notion of finite options here is not even part of the claim the claim doesn't claim the specific arrangement nor does it require one because the way the inventors approached this problem was not just to design think about the try to design you have to be about how the user interacts with it and that is one problem in this forty five created the sickness detector that it created because it is not it understood just like everybody else and that's people are going to at times over stuff a shredder in a chart you know it and that was a disputed fact and the parts so to speak and that's why it's not reliant on some specific mechanical arrangement if one want to use the find at options in actuality you don't even need the controller because you can use two circuit breakers for example j p four four five has no controller now i mean to me i'm you know i'm asking you to answer the question why wouldn't that be obvious we don't believe it would be obvious because because for a number of reasons one do we consider that a starting point that th even as a starting point that one wants to use because there were many many other approaches to this jamming problem that others have tried and failed in not done and the question is if we go to these finite options and put them right in the machine in just say all that we have to do left is what do we how do we can figure that controller the real starting point is here's the problem and sort of that winslow tablo of his all the different things that you could have out there what do we do from there the g p for five for example someone might look at it it didn't work very well it was not adopted it's still susceptible to jamming it's also in a pit in an area where the paper flaps very violently and that could have an effect on it it's a circuit breaker the power is running through the circuit and you want to have this violently flapping paper up in the room for the moment i think the j p for forty five percent is a solution to a problem with jamming by preventing the jamming from ever occurring there are all these other things going on the prior art about how to deal with a jam after it occurred in j p four forty five was the first one to come up with the idea of hey let's cut off the power let's disconnect the power before a jam ever happens so we've prevented  be obvious have the configuration with the stick this detector first the present sensor second is necessarily what would meet the claim limitations i believe that some if everybody wanted all those parts in the machine it's sort of i think that's how they are presented their case it does beg the answer of with assume that this reason is to combine with assumed all the things true i just put them in the controller i do believe the finite arrangement really is not required by the claim you would have to put one on top of the other with the way the inventions signed because it is a response of control of the processes but i agree but the point is if one of  a comment based on the information it has and it pieces them together in a way that just so happens to be what your claimed invention is then regardless of whether your claims invention designed a different way the obvious combination nonetheless would meet every single limitation of  if you put all the parts together in the way planned yes but if you put the thickness detector first and then you put the present sensor second wouldn't that arrangement necessarily meet your claim limitations the motor would not start until after the paper is successfully passed through the thickness detector and the present sensor if there coupled to the same controller yes because the paper goes down right that's true yes that's the order that the paper touch it and you're correct so the that would call for a reversal of vacating a remount i don't believe that's i don't believe that's true i really don't believe that the finite options are exactly what's being looked at i think the board considered that to a lot of disputed facts on this issue and they also considered other options you know finding in fact thirty seven they noted that the other reference g p five one three talked about shredder jamming problems in the well in response to the argument by the other side about there being only one of two finite options in arranging the present sensor with the thickness detector i didn't really see the board opinion take that argument on it simply said there is no explicit teaching in any reference about using a thickness detector to prevent the starting of a shredder and then stop right there without taking the extra step and asking itself in response to the appellant's argument what would happen if you added these two features together and why wouldn't they together prevent the starting of the motor i didn't see in response to that in the board's vision but i do believe they did tackle that and a lot more detail in the retiring decision and this sort of rubric was presented right to the board and i believe their answer on that one was we find just fact this is a very five that neither the examiner nor the requestor as proven by a preponderance of the evidence that one of ordinary skill in the art would have known as a matter of common sense or otherwise that a threshold notion that there's patentable distinction between starting and stopping isn't it i think that's a very important distinction that is a well but i mean it's kind of a basically two ways of doing the same a warning light that alerts the user why it has not started which actually is important because if you don't start the shredder and people put paper in they actually might think it's broken so the light actually indicates that the shutters align it's well but i'm not starting for a reason but i think that was goes to the point of over decades and decades of dealing with this everybody solution was trying to stop the jam right stop these current sensors and things like that  five tries to stop sure i mean this is this seems to be the first one to do it that doesn't mean it's not obvious it just means they're the first one to do it maybe you have some secondary stroke secondary considerations well it's still not obvious over the prior art but it seems to me the board fail to take the necessary step of looking at whether a person of the ordinary girl would find it impossible difference between stopping and starting focused on that is a critical distinction and just again mike my concern is similar to judge uses but it's slightly different my concern is the board did not tackle the question of why didn't you have created a and i and the board what you quoted and i read it to it it's really stating a conclusion it's not really and then malice of why it wouldn't be the case that an arrangement like the one i just described would result in a shredder that doesn't start the motor until after the paper has successfully passed through both the thickness detector and the present sensor a lot of the argument this is common sense as to common sense what's in the art right and i think this is where we get back into i think the mix question of common sense is something that everybody knows something that's it's not common sense now now we're at a point where we have a configuration that let's say for argument's sake is an obvious combination to make why wouldn't that combination meet the claim limitations of starting the motor only after you've successfully passed through that sickness detector and the present sensor i'm not sure is this did you see the question sure there's an obvious combination in my mind the thickness detector comes first the present sensor comes second ok and only after you've successfully passed through both sensors there's a motor for the shredder begin to me that is what the claim calls for why i wouldn't call that obvious combination and the ordering of the thickness detector in the present sensor rendered your claimed invention obvious and i believe the answer to that is that one if you create a structure that meets all the claim that i have to say it meets all the elements of the claim the question is why would you put it together you need the rationale what's the motivation why would you have done that we don't leave j p for five really provides that because it tells you to stop an already running truck and then you sit there and look at what else is the art teacher because again this when i go over the common sense we have to look at what other options are out there and we have to the first of order skill in the art was undefined for purposes case is gonna have to look it all back right not we don't really look at it and go we have given you the skilled worker these three things with this problem please put them together in a way that solve the problem really only have a few options where they do it say how to do three for ten years his thirty different ways people have skin the cat which path you're going to go down which one do you think is going to work better we have to step back away from those options and started being much further up the road with a fork is a lot wider but but maybe there's more than one obvious combination maybe there's multiple ip condemnation and the concern i have is that when you know that you want to stop the shredder from jamming and you know you want to present censor and that there then you would want to have both of those features together in a paper shredder and the j p four four five tells us to put the thickness protector in the throat of the paper figure just like your claim to the action so now there's only a couple different configurations left and that's where i didn't see the board take that concern on and i do believe it is background to their risotto that we had just eight about the many years of this problem persisting and the different ways of trying to approach it in the lack of common sense that was in the order evidence supporting the rational combine and that was really a lot of the debate that we had at the board below at least that even if that some of those exact items of evidence might not be in their decision that  we would put a present sensor on g p for four five and that the reason that the references teach the advantage of that automatic on off and using the automatic on or off with the thickness detector of j p for four or five would have made this invention