lens in three dimensions phrase as creating a quote possibility unquote of a three dimensional surround frame the board construed the surround frame based upon his being any shape in three dimensional space important consideration because lighting designers part with that in mind can you tell me if the wind chime pendulum disclosing three seventy is a lighting fixture it is a lighting fixture you're on what evidence in the record the other differences were subsidiary points relating to how thick a surround frame could be or its maximum limits of thickness which are supported by the experience record and also the subsidiary points related to  far partially would extend also those and those issues are separate separable from the one being argued here the one being argued here is the one central core which is the meaning of surround frame design necessary decide for purposes of this appeal the thickness or the extent of the partiality and so your honor respectfully submit that we did not waive the the central concept which was presented separately to the court below three different claim constructions were offered by richmond and they had subsumed differences among them and you've got all three of them subsumed into this in thirteen words your honor the only thing that's in the thirteen words relates to the primarily in a plain character of the surround french and that is all that is the only character that is necessary to decide people and so that's what we argued everything else there was in our claim construction below it was well supported by at least the extrinsic record but it's not necessary to decide those points and that's why we're not pressing them here but undeniably the primarily in a crib you know in a plain character was what we argued below and it was a central part of our argument and was separately addressed in argued in that way i find your your argument that that you're you're basically you have the same con place and and i'm kind of troubled by that i mean we're looking at a claim construction so we're looking at the preciseness of language words not general concepts and when you're arguing below a particular word said a word and you come to us from there it's a different argument because there's different words added to it and you say well you're interesting concept i don't think our case mostly works there your honor we are arguing the same interpretation we are arguing with we are arguing it with fewer words and fewer limitations if anything our construction now is broader than what we present to be low because our our construction below dition a limitation is that we're not currently arguing just because we're not going to argue our already we're in a different plane construct we are are we are arguing only put a portion of our claim construction argument below that is we're arguing a broader the you see the film is what you get if you change claim construction arguments and you're presenting something different to us and that means that the board below didn't hear that argument and it's not part of i understand that presents away very soon your honor issue but i don't believe that it's properly just well i don't believe it properly applies here because what we presented was in essence if you will like a depend like  main claim and then dependant limitations we're only arguing the main claim the main claim portion of the of the construction below and that is pretty nearly in a plain character it's primarily what we argue below as it had a primarily you know plain character and a certain limited reasonable thickness and a certain extent  regarding the language partially so we were construing a different term partially in that sense and so as far as surround frame we are presenting exactly the same construction the primarily in a pla n surround frame that is what we presented below and that's what we're presenting here and if i may what here what the board did is the board read the specifications may surround the the lens in three dimensions as creating a possibility of the three dimensional surround frame but the broadest possible of record that was considered by the exam richmond one o one and also up and six pressley found that that prior to not teach all the elements that claim construction adopted by the board in fact causes the claim claim one or how does your or your proposed construction read to the specification you're looking for something that's that's partially that's basically one dimensional laugh experts and the the degree of contour is is some degree of three dimensional aspect and perhaps that's what was being discussed in that section but the fact is that the examiner it's not just good for the prosecution history if i may including the prior art forms part of the intrinsic record and the prosecution the the prior art of record clear shows that under that under the construction adopted by the board that's not the rule your honor that is not a per se rule but we are talking about evidence that we are talking about prior art a record that the examiner considered expressly found that as he understood the broadest reasonable interpretation would not be encompassed by the prior art of record and where this court that while it's not a per se rule where this court is presented with two possible constructions and i submit that richmond was a possible construction it met claim construction requirements it read on the prior to read on the preferred and by human and otherwise with a perfectly permissible construction that what they chose was a construction that read directly on the prior ar record and that i submit is not a reasonable construction and violates the the presumption that the patent was issued was valid when it w term implicated in other words display effects use glare and later on in the questioning he says when asked about whether there are ways of calculating glare he said not so much calculating but in taking account in the design of obviousness fact strong evidence of non obviousness and what we have in the claimed invention and i think this court has said it is that  non obvious non obviousness and i'm quoting from to we we is especially strong where the prior art teaching undermined the very reason being offered as to why a person of ordinary skill would have combined the known elements we believe the evidence of non obviousness declare being a foreign and a big time consideration that's the that's the words of dr jekyll is evidence that undermines the reason that persons of ordinary skill would have combined convention with grouping and so and we can we can look to the evidence that it's not consistent with the with the evidence at one thing to note is that the decision of the board has no discussion of this there's one discussion of blair page sixteen it talks about the relevance it actually affirms the relevance of glare and also undermines and yet evidence shed some light on this for discuss the council indicated the can the dispute here is whether the claim is properly limited to this primarily in a play and structure and the intrinsic evidence certainly does not support that as  some of the court's questioning noted the intrinsic evidence specifically rebut that primarily in a plane construction you have the specification talking about the surround frame maybe partially  circling the lens or maybe partially or fully surrounding the lens in two or three dimensions that's very clear evidence from the specification that the surround frame is a three dimensional structure if you look at the claim language the board looked at the claim language in the surround frame first appears in claim one and claim one of the limitations on surround frame is and have to be attached to this connecting frame support structure and it has to receive the light  differentiation decided that in circle and surround have different meanings and the surrounding frame of claim one must be broad enough to encompass both they looked at claim forty nine which talks about the surround frame having different geometric shapes be could be an insect could be a flower could be other things there's no indication based on the claim language that these are limited to two dimensional structures and if you take the specification richmond clearly understood how to use the term two d and three d so if there was any intention in the claims to limit these to two dimensional structures he should have put two dimensional structures in there the specification clearly indicates that he contemplated that i looked at it and decide decided no that's that's not what i want so then turning to the prosecution history that also supports the board's construction claim fifty was added by amendment and it was added to add the phrase this round for impartially surrounds the lens doesn't say anything about dimensionality dimensionality but what richard richmond said in the context of that amendment was that he was adding it in reference to paragraph one fifty two of the application which is the paragraph that describes the sum may surround in two or three dimensions so the prosecution history also is consistent with everything else here so i want to turn first counsel mentioned just a little bit he makes an argument based on the prosecution history and this reasons for allowance based on this all stop in richmond reference which we didn't assert in the i here i can't find it right now but it's it's a it's a generic reason for allowing to doesn't call out these references at all in fact these references aren't even discussed by the examiner they're part of the they're part of an i d s with forty plus other r and the board hearing council was asked to try to connect the dots here is there any disclaimer in the prosecution history regarding these references is there any teaching in the prosecution history regarding surround frame that the board could could the we don't know why the examiner allowed the claims over these references it could have been because he didn't think they have a surround frame it could have been for any other number of reasons there's just nothing in the record and there's nothing legally that  mr richmond site in the context of this argument that would say that somehow acquiescing to a generic notice of allowance somehow effect when construction is drawn or noted it k yes i can your honor so as we pointed out the original construction here the first construction it was i don't remember how many words but that was that was sort of in the then in the actual response mr richmond set forth a ninety two word construction that had a bunch of limitations in it relating to what the surround frame is and negative limitations as to what it is it  must surrounded at least two hundred seventy degrees it must not substantially conceal or cover the latins things like that that is the argument that was made in the construction that was presented to the board that is the construction we argued through the entire case and as a council stated that construction is narrower than the construction that he is proposing now and so my understanding on the law issue is you can't change the scope of the coin on appeal here the scope of the claim has changed we go from limitations in there that the degree of completeness of the surrounding must be at least two hundred seventy degrees like a door to door frame all that stuff is gone and so here i think this argument has been waived if he wanted to present this construction before the board  should have done so and now on appeal the will the board didn't pass on this construction and all the board passed on the ninety to work construction below the scope of the claim has changed and i think this argument has been waive that i'll turn maybe briefly to the wind chimes for a minute mr richmond makes two arguments with respect to the wind chime claims both of which were before the  don't teach the claimed invention but there was no motivation to combine that's an issue of fact and here substantial evidence supports that there was a motivation and that the arguments that mr rich would make and we touched on the glare and that letter is a big time consideration but those statements are made in the abstract talking about glare in the abstract and petitioners thought those statements were prejudicial and actually move to exclude them at the board level because of that because they were they were made in the abstract and they were not trying to be used to argue you should combine these references and the board considered that the board rejected our argument and said no we do find these statements rel in the board looked at not only these statements but the entirety of mr rich with mr shackles deposition testimony which is all in the record and the board concluded there is motivation to combine here  is that the board didn't write enough about where i mean i think there's no doubt the board considered it said it it just didn't find it relevant in the in the scheme of the entirety of the evidence turning to the substantial eviden to back up for a second here so the other flavor of this argument is the illumination a flat affect vs display effect argument but as the board found the richard patton itself doesn't use the word glare the claims don't use the word where the true way reference doesn't use the word glare to my knowledge nor does the leading reference neither of the references nor the patent uses the terms display effect illumination effect or any of that stuff the board considered all of that looked at what the references themselves taught looked at ten or fifteen pages worth of testimony from dr shackle on motivation to combine the thirty eight to six ninety one three eight two seven zero eight and  concluded that there is motivations to combine here and legally speaking for references to teach away from one another like the like the argument they're making there needs to be more than there actually needs to be more than simply something that just is a reference to a quote from one of the cases reference must actually discourage a person or to a skill in the art not simply express a general preference for something he references don't even do that they're totally silent on this layered display effect illumination effect argument and bottom line on this argument the board considered it substantial evidence supports that there is no reason for this court to alter that decision the second flavor of the arguments with respect to motivation and combine that is made is that the references wouldn't operate for their intended purposes if you combine them and that's relying on a piece of the tube a just consider our stuff a piece of the cube a reference that he's and talks about the fixtures can even add circuitry to further indicate a wide variety of facts and then again there's there's no there's no evidence in the record that we can see that talks about the bor that  would indicate that these references wouldn't be combinable and again there's six or seven paragraphs i believe of dr jackals declaration that support that argument the last thing that i'll touch on briefly here is counsel mention playing for briefly so the surrounding frame issue effect if the court of forum is the end of the issue with respect to claims one through three and forty eight through fifty there's an additional argument with respect the claim for and that is that the combination of the norton and chan references even under the board's construction don't teach pla for and that argument is based on claims for is the language where the surround frame was partially encircled the lens so this all of this also would be a question of fact as to what the references did or did not teach and substantial evidence supports that the references do teach fine for norton the norton reference the figure that's relied on one of the figures that's relied on is a is a rose th connects to the decorative element connects to a universally compatible with it again indicating that this this decorative surrounds frame can have a variety of shapes and was a board asked some questions in it  board also i think indicated a statement from council in connection with the surround with this with the meaning of surround frame and the construction of a council made a statement judge grossman made a statement that how would something that surrounded in three dimensions not also fully and circle meaningless around frame and council said well yes it does fully and circulate and granted that statement was made in the context of figure eleven but the question that judge grossman asked was broader and councils original answer was broader and then well got back into figure eleven and i think the board also picked up on that but bottom line the there was the color quit you council was from the board council if you surround in two or three dimensions it seems like you're only in circles like you can only in certain two dimensions and right so one circle would be plainer in fact the the board and goes and certainly encircling limitation is not in that by by norton unless you magically draw a arbitrary plane cut it through the middle of it some are but somewhere is not is from