this case involves just a simple claim legal error which is that the board applied a wrong test for obviousness that applied to narrow the test now i think significant aspects of this appeal are undisputed and that as a result addressing these undisputed issues first will help narrow the scope of what's really before the court because i think it's a bit quite a bit narrower than appears on first blush it's undisputed that as a general matter the combination of the in you a reference in there at the narran yes your honor they found that there was a sufficient basis to institute on this but they in their final decision they never actually actor challenge or never said that there was any reason to depart from that that reason they don't have to do that are very clear on that i understand are they that they don't have to do that what i'm saying is the the issue before the court is not whether or not that combination is obvious because that i think was something at the very least the board assumed that it just didn't have to decide because it decided this case on a foreigner or ground and i'm just trying to demonstrate that the newer ground is all that's before the court here in that narrower ground is so the combination of using the in u a e general structure of the air bag with the singe tube of neron that's not the question before the court the question is when that combination is made when the airbag deployed without obstruction does the at the terminal end of the synch to is it drawn with in the air bag or does it remain outside of the air bag you rely on anything other than that elevates his testimony on that point that's the that's a key piece of factual evidence yes your honour's is misspelled which is testimony but what isn't your real problem here that there's also expert testimony on the other side that says the opposite there is a war on the substantial of the interview i mean you may be right that this is actually the way these things do operate but the board felt otherwise based upon their expert and you're not challenging the mission of testimony or the like so i don't see what we can do you honor that factual determination i think is subsequent to the legal question that we're raising the legal question that we're raising is the board went in search of a strict is there teaching suggestion motivation relying on that testimony they said there isn't a teaching suggestion or or motivation and that's where it ended its analysis our principal contention is that the poor are truncated its analysis too soon that what the word needed to look for is whether or not there would be a rationale for a person of ordinary skill in the art to conceive of the combination typically that would be done being via a teaching suggestion or motivation here however there are additional ways that that rationale could have been reached that  articulated throughout your honor both the finite number as well as the obvious design choice so for example the finite number of choices now is it page three of our statement of issues page seventeen where we discussed at length there are only two identif basis for this her testimony is that that it didn't matter if it was on the outside or or the inside that the length of the drawstring months was completely irrelevant now go soon as i said i have really three separate arguments before the court my finite option argument my are arbitrary design choice argument in my factual argument that the straightforward combination would yield that your arms point that goes to my third argument my factual argument  straightforward combination now that the court did what them is valid which is testimony where she said that wouldn't necessarily be so the basis of that testimony that was a prior question where she was asked could there be a way in which the combination could be made in which the since two would not be pulled inside the apparatus and she said well there could be ways if you went and string and that's where in the opening brief we discussed that is the modified and you eat neron combination and we had a lengthy discussion of that in the opening brief  but her straightforward testimony was making the combination between aaron and you eat at without doing any sort of rejiggering of the length of the drawstring would yield something that was on the inside but at the very least with this goes to show is when you're in the course of making that combination of personal or ordinary still in the art would at least conceive of the different options as to whether or not you draw the thing inside or you leave the thing on the outside because that's this whole process of going through and modifying the combination based on the  trigger one of ordinary skill in the art to think about what are the the two possible options here in that's why that only i think in our view confirms the obviousness analysis so yes her testimony did come that way but i don't think that's  actually has a bearing on the ultimate question as to the first two questions the finite number of design choices as well as that this is being an arbitrary design decision again there's just simply no material evidence that this  vent from the pressure that's placed on the airbag is accomplished wholly by the use of the synch two and that's described in there at great length there is no basis in the expert reporter anywhere else that there's a for the claim that pulling internally has any bearing on accomplishing that function and so we do think that it's fair to rely on any sort of conclusory statement that doesn't have any supporting detail as to why that statement is in fact accurate so again we recognize that that statement was made we don't think it has any bearing on this dispute because there's no explanation or warrant as to why it's correct yeah having a bit of a hard time here because here you're trying to tell us not to rely on th expert that in the last case your opponent's telling us author all i think was very expert testimony i mean i think you know if experts say something and there's no challenge to what they say as obvious as completely incredible it should be able to be substantial  well you know i think there is a difference of whether or not there is a warrant that's given i submit that our expert that we were relied on the spell of which we're talking about the same experts did provide warrants for explanations as to why that's correct but you are i think here the point was simply that there was no basis in fact for saying that there was any kind of benefit or unexpected or surprising result of polling that the two would internally that's that's only convince your burden to show that it's not there or that it's your birth isn't it what we have and we have which there is computer expert testimony here where she says i don't understand the distinction between it because there's no functional basis there's no functional benefit of pulling the tube inside versus leaving the tube on the outside that's her consistent testimony so there is contradictory testimony here that that says there's no functional benefit that actually flows from this this claimed limitation there was nothing that was identifying the specification to the contrary the specification says that you can do it either way the specification says you can pull it internally or you can leave it extra only you can have an external closing specification is crystal clear that either option is is perfectly sufficient and there's no there is no benefit or and motivation that was identified in the specification is to one of the two options the only reason this limitation came into the claims is because the initial application was disallowed by the patent office and they had to amend these claims in order to circumvent prior art but there was never any identified any w response to be looking at the limitations that are in the claims i mean they have to live with them rise or fall on them for purposes of infringement but you're going to have to live with them for purposes of us as to when those are the limitations in the claims those are your honor but if well i'm not sure that that that's a credible piece of testimony on it because here it's quite clear even from their specification that the two options are the thing closes on the outsider or the thing comes into the inside i think is testimony you suggest that it takes some sophistication and w to construct on the inside again we don't think that there's a great deal of credibility to that but beyond that the problem with that is it doesn't understand or mind the point that there are only two possible options but beyond that even if i wouldn't be readily apparent to someone it's an arbitrary design choice that's the sort of thing that can't render a claim non obvious because it's arbitrary anyone can can identify a piece of prior art and then make a arbitrary modification to it that would have been an  expressly discussed in the prior art you could paint a particular piece you know a turquoise green color and claim that but it's has no functional basis if it's only the sort of thing that's a you know design feature something that's wholly nonfunctional the court's cases have been quite clear that that can't be the basis of demonstrating non obviousness so i think the course is asians and cooley and rice are clear on that simile that the court's recent decision acco brands i think is directly on point where the court was confronted with a paper shredder that had two sensors a fitness sensor and a present sensor the question was what water to the sensors need to be put in the departure of them being put in one  order the court found it obvious four to do them in reverse order without finding of any motivation or anything along those lines because it was just clear that there are only two ways of doing it and had no basis bearing on function a person ordinary skill in the art would understand how to make describes or suggest pulling the termly into the seats to partially within the airbag interior as required by the claims in fact the board found that narron works the exact opposite manner of the claimed invention because the narran nozzle actually expands away from the airbag as the airbag is deploying where asked claimed invention pulled the terminal and it seems to be toward the airbag interior so what's the benefit of the internal closure right on the other side when it hit really hard and that sure the benefit of the internal closure closing the terminal and so once you pull that terminal and within that airbag and it's deploying quickly it actually essentially works as a suction so when it pulls in then assisting close in this issue so that is that that is the benefit  and their expert said i don't really understand what the benefit is here so basically you have the two experts disagreeing one saying i don't understand the benefit and our experts are saying well i fully understand the benefit with hans when i look at this i believe the inventors did it for this reason so the board started out by considering but that of course is only one option that's that's close right i'm not sure i understand the question generally well i mean that the argument is that you're saying it could be either or well that it's not either or i think i think the it depends on what you mean by either or the testimony here is you can design myriad number of airbags to close on the outside because we're dealing with the force of rushing during deployment and so the testimony is is to turn that terminally in and pull it within the interior requires much more force than simply synching on the outside and that's important because with respect to the new reference what the board found was a new actually teaches it's the hole and what the new teaches is you never actually close the hopefully because what happens is in airbag design you deal with this rob nothing because what you don't want to happen is when the airbag deployed the person bounces off of  given off upon and so you have to deal with the ride down effect and so you want the airbag to ride down as the person is engaging the airbag and so what it the way a new does that it it actually teaches leaving that whole partially open now if you combine that with the fact that it requires more force to pull that terminal in with the in the interior the airbag keep out well what are you still in the art would never look at a new and combine it with marin and say ok i want to put this nozzle on this new airbag and turn that tire milian and pull it with the in and close it because again a new teacher is leaving that hole open for purposes of ride down to address that issue now what's your response of the argument that well this is all well and good but it's still an arbitrary design choice well the arbitrator design choice argument is an interesting one because it relies on two embodiments the one disclosed opposing the outside in the winter clothes posing on the inside well detrimentally as you pointed out that is classic pattern prosecution you start out claiming the that claimed you are minted to argue over priorities talking about that and the claim language has that so it certainly can't be arbitrary it's a limitation of the claims as you pointed out just don't like that we had arbitrary that has no functional purpose well but again judges were oh i understand that and it doesn't seem to me that they've met their burden of showing that it's that it has no purpose but just the fact that it's different or they claim prosecution does it doesn't quite do it on  this reviews still have to show that or they have to show that it's not all but we're asking you i mean did you show i guess you even have arguments about why that actually is a design not just a design choice thought that's that's correct that's where our expert said he looked at this and he said it helps closing the term we end of the tube on the inside of the airbag and that's the functional purpose and he went beyond that and said you know this was a bit against conventional wisdom at the time which we know all the art was closing on the outside and he said no one would design it this way because you're dealing with more force and so you're going to have to reinforce the stitching you're going to have to have the nozzle the blowhard or you're going to have to have fabric so it doesn't blow out because you're trying to pull this terminal into this tube within this airbag opening so all of those factors together along with the advantage shows that this wasn't simply an arbitrary design tools and certainly as supportive as essential evidence in  we submit that because most knows that that is support of a substantial evidence they're actually changing theories on appeal of obviousness and what they say is they want this court to believe that in an obvious design choice case and in those types of cases petitioners are not required to show a motivation about well they're wrong on both counts as an initial matter they can weigh this argument because we saw it for the first time in their reply brief but even beyond that most is new concerns whether a skilled artisan not only could have made but would have been motivated to make the combination and the would have been motivated make the combination is missing here there is nothing in the prior art that teaches closing on the inside at all and there's no motivation to combine the a new in there and references to make that combination and also none of the cases that they actually said rely on in their pov raef support the theory that this court has ever departed from requiring motivation about for example they can understand why a person who orders only art would have either thought of combining two or more references or modifying one to achieve that intervention and be clear the test is no no different for quote unquote obvious design choice cases this court still goes through the typical obvious analysis of those kinds of cases but to be clear for fifty patent is not an obvious design choice for example in the in reach you case which is an obvious design choice case that i rely on in the reply brief the court made clear where there is no teaching or function were different from the proper art which indicated that she has claimed design could not be an obvious angelus well we've got similar evidence in this case the configuration of pulling and then requires a more suspicious sophisticated design to overcome the additional forces a feeling of the end including again like i indicated earlier the size and shape of the airbag the materials the structure the airbag the nozzle configuration all of those are different structural considerations you have to take into account to shredder that prevents paper jams using a combination of two sensors of a present sensor and i think messenger the patent also claimed a controller that only turned the shredder on when the present sensor indicated that paper was present and the thickness answer detects that the paper in the the does not exceed the shredders maximum capacity this court correctly reversed in the board found that the examiner in that case had made a promise i just showing of obviousness because all of the elements of the claim the all the proper elements were there in the plane invention as well as the motivation of that now you compare that to this case the claim structural design of the airbag in this case and its function is found nowhere in the project and most presented no evidence to show suggests that neron provides this decoupling motivation well if you look at the prosecution history of the patent the decoupling argument with respect neron was made in relation to element i'm going to call it when the but it's the it's the next to the last that argument prosecution marron wasn't in prosecution but that argument was made about that distinction point with respect element when deep with spec the element when either we're talking about here today the claim language was added to say pulling within and it unless you have any questions that includes my presentation thank your isms make two brief clients the first point is that this our fundamental point is a legal question that the board made in error of law now judge hughes mentioned that we hadn't met our or not showing evidence here but i think the problem with that is because the the the board never engaged in the correct fact finding and that's because the board didn't realize the depth of the obviousness inquiry that need to undertake once it found a teaching suggestion motivation it stops the analysis it did not proceed to consider whether or not this was a circumstance of finite design options and did not stop to consider whether or not that there was a lack of benefits such that the arbitrary design choice rationale would apply so it's true that the board made no factual findings in support of us but that's because it was infected teaching suggest motivation but a broader search for a rationale that one would conceive of the combination and reverse of the boards to consider the evidence before it under the proper legal standard that looks at all of these different factors in understanding whether or not there's there's a rationale to make that combination we submit that that's the proper outcome the second basis for decision in this case is there still i don't believe any clear answer to the straightforward you meant that the simple combination of  inflated that's a separate additional reason why there would have been a clear rationale to make the combination that exists in the prior art and again the board failed to consider that and that's  considered your proposed mini but what they didn't consider was whether in making that combination one would think along the way as one of the steps that they said one would lengthen the string in order to avoid this result and maybe that so but in making the decision to  lengthen the string one would think along the way if i don't mean the string i'm going to have an internal draw in so that option that would be obvious apparent in the additional testimony is that there is no unpredictable or surprising result that would come from that all of these things