decision in this case on the very narrow set of facts in this case violates both the a p a and is substantively defective on the evidence when to start with the a p a violation and the reason i scuse me the reason i say the facts in this case are unique is that i looked at the a p a case law that is available from this course or is prudence and i find no set of facts that aligns with the spirit of the of the unfair surprise that occurred here the that are undisputed what's the unfair surprise the board just found your arguments insufficient and that you didn't meet your burden of proof to show that these were not obvious yes your honor and this is what you have the board to  circumstance provide the parties with an opportunity to be heard and to make arguments on what for if the born is going to introduce on its own a factual premise on which is going to rule that has not disclosed in carter and you put forth your argument as to exactly where it was yes your honor and the board found it didn't meet the requires the board found that the expert declaration and the evidence we cited to in that expert declaration under the board's opinion which was not supported by any contrary evidence or argument well that's a different question you can get to your substantial like a substantial evidence argument but i am baffled by your a p a argument is not necessarily relevant if they think the prior art itself doesn't show it they're the ones tasked with looking at and making factual findings again i don't tell me how you would see this playing out if we found an a p a by lation in what form would the board give the notice that he was going to reject your arguments and find that you'd made a burden of proof and again it's an unusual circumstance can you just answer my question and one of your posts opposition from the patent owner in the i p r proceeding if no arguments are rendered that would draw a response from the petitioner then the board if they have concerns that were not expressed in the institution decision about a particular limitation i believe the board should provide notice that can then be addressed if you want t board if you make arguments and the patent owner doesn't respond you want the board to provide an advisory opinion that we're going to reject your arguments anyway before they actually were tucked them at some point specific pyar are reference a sense that these disclose all of the elements the board looked at that and said no i don't i mean it really and unless you have some other novel way of doing it it sounds like you think fact finding and you bear the burden of proof and is made under a different standard evidentiary standard it is there is no question the institution decision is not binding on the board that's not our position the position that we have presented is that there is money responding and the board can reject all of their call arguments in your petition without giving you notice could it not post institution with no counter development of the record whatsoever i have the boortz the ones that are looking at the record you have your opportunity to make your arguments on the record if they're insufficient or insufficient you're basically asking for a  a notice requirement that i've never never seen in any area administrative law i will take your suggestion your honor on the substantial evidence side here the board had in front of it substantial evidence in favor of the petition it was the question the question isn't whether they had to stanch eleven's in favor the position the question is is there substantial evidence to support what they found which is that carter doesn't evidence must be judged by viewing the record evidence it seems to me that the problem here with the book is that it really didn't address this isn't obvious it walks about the lookup table and  connection with the jurisdictional profile which doesn't seem to be the right way of looking at that's correct your honor i think fundamentally the problem with the board's analysis here is that they require things even beyond that they were required by the claim specifically the board was asking us to demonstrate that the example we use which was in alphabetical order of the list that it would be obvious to use the alphabetical order and we have not presented evidence that it would be obvious to do alphabetical order we ha presented evidence that it would be obvious to provide a list that was ordered and we used alphabetical as an example let's say that found that the claims require i have it up a lookup table which contains an ordered list of locations an associate again configuration and you argue partner actually disclosed that you didn't argue it was obvious why r p carter disclosed that it's a correct that is not correct we argued that carter disclosed a look up table in a jurisdictional database that correlated jurisdictions with game configuration and you didn't argue that that met the expressly met the a look up table which contains an order list of locations in associated ga hat was where the obviousness analysis came it was in paragraph one hundred and seventeen of mr kitchen's declaration where he said a person having ordinary skill in the art would have understood that ordered lists were extremely well known as  organize information for many years prior to the five a patent citing to a a series of references that he used to inform his opinion it is that evidence that was not considered by the board and in appropriately considered in the sense that they were requiring don't you think it wasn't considered a war they didn't comment on mr hitchens i think the fact that they didn't cite it means it wasn't considered because i thought they rejected hi i don't believe that they analyzed i can't say what was in the minds of the board but i can say that they didn't specifically address the statement by mr kitchen that a person of ordinary skill in the art would have understood that ordering less was  you want to save the little i do your honor unless there's any other immediate questions i can answer all reserve the remainder of my time i think you profiles use the word specifically you're at least a couple of times i'm age forty one but that's not what's required you don't have to show the look up table in the prior art and used for a jurisdictional profile what they were saying was that look up tables for a common way of indexing database and the word doesn't seem to really address that question whether that was a tomlin doing it and whether it was and that order and the look up table was also calm they don't really address that your honor that was not the the argument that fan dual made the argument the argument the fandom made was that carter actually didn't disclose the use of look at tables but with jurisdictional profiles and the only limitation that was missing according to fandoms argument was doing so in the in an ordered list which is why they brought in the tertiary teaching of the sloppy out web page that was their argument that's the way they presented the evidence to the the the board and the they were experts cited several publications that recognize that look up tables are  their expert with respect to the teachings of carter simply repeated the same one sentence concludes yury attorney argument that was contained in and was petition and they say their expert says carter's jurisdictional profiles are stored in a database which quote may employ dot dot dot look up tables and the like and they cite carder at paragraphs twenty dollars thirty one cents there is no additional us you're either there or referring to order lists here so this footnote is getting to a different point the phone later refers to look up table and i think what if you look at that reference  plucking somebody off the street is that you have board members were supposed to understand the the field that they're involved in and i don't see the board here really bear its expertise on this issue which presumably would include the fact that lookup tables were standard ordering them with standard and they just say oh well you didn't show that it was disclosed in connection with jurisdictional profiles that if expert doesn't state cables are common that it is the board's job to fill in a missing limitation in a clean with its own expertise in an i p r which the supreme court said the confines of which is governed by the titian as argued my understanding or honors the board is actually precluded from doing that and that this this court has already met is something you could do in regular examination of course right or the regular examination but in i p r as an adjudication correct that's correct you so my understanding is that the board is not allowed to essentially step into the shoes of the petitioner and make arguments on behalf of the petitioner that the petitioner did what he did if you thought they didn't do their job with respect to the lookup table in the order but the petitioners had the burden of proving obviousness by preponderance of the evidence the commission is given the board made clear in the institution decision that the institution decision was merely s well it's possible that they could have made a different argument than the one they made the argument they made was that carter discloses the use of jurisdiction of lookup tables with jurisdictional profiles and the only thing missing was doing  so in an ordered list which is why they went to a tertiary reference the slots payout web page that was their argument and that's what the board was asked to analyze and to support that argument the point of the paragraphs twenty dollars thirty one cents harder and when the board for an unspecified purpose and then paragraph thirty one dollars says nothing about lookup tables and in fact if you look at paragraph thirty one dollars it's talks about storing jurisdictional it is the problem here that this is just so obvious that they didn't actually bother to fill in the evidence and the board d caught them on that because it's a failure proof i mean look up tables as i understand it and again you heard about it a science parts of what they seem pretty well known in the are and to do them for this kind of thing  seems like they could have gotten an expert to testify very quickly but they did it and so what the board said you did conduct look up tables with this jurisdictional profile and they are and nobody would have the do that i mean i find these lack of you know non obvious s findings based upon a lack of showing and looking up whether it's a lack of substantial evidence difficult because we're looking at basically double negatives in the board right that there's nothing out there and how do we determine that when what we're looking for is a law about that but isn't that really just the case here that there is no they didn't provide specific evidence on that combination and the  the shows general use of looked up but it doesn't say that it necessarily associates it with jurisdictional profiles it just sort of looked up tables or something that you can you see the your honor i think their argument even even in their brief to this court is that they argued that carter discloses use of lookup table specifically with jurisdictional profiles and that the only missing limitation for purposes obviousness was it were lists which is why they went to a tertiary reference for that so and that's certainly the way the board read it their argument and that's the way we understood their argument i believe that's what they argued in their brief here on appeal  i'm sorry you're on right now it's all a look up table problem and you're saying it would solve the order let's correct because the board found that their experts opinion on the order list was conclusionary and based on hindsight and to be clear they didn't make the argument on the look up table believe fundamentally with the board did was treat this as into patient rejection as opposed to giving full consideration to the obviousness analysis that was presented in our petition and supported by experts as to money  the words of their expert testimony that say look up tables are well the expert testimony noted that the lookup table was mentioned in carter itself discloses most of this i think you get the other thing from that that gaming page but there is no testimony from your expert that says a skilled artist would have looked all this without these obvious you had a different one there are theory that the border effected evidence to support the notion that carter doesn't specifically disclose look up tables with jurisdiction you should have said have an expert that said even if carter doesn't specifically disclose this a skilled artisan would understand that look thirty one it discloses a database ok a database that does the correlation correlation between jurisdictions in the gaming configurations so that's imperative it sounds like you got launched out a factual argument and that's going to your work or what a skilled artist would say and you're now well you know reading between the lines of what this paragraph actually said i think i probably entirely agree with you provide completely unscientific perspective but that's not my job and then in the last sentence of paragraph one hundred and sixteen the expert mr kitchens stated therefore carter in view of walker teaches a look up table containing locations and associated game configurations that was the experts conclusion based on the experts understanding of what the earth teaches and i believe in closing your honor that the board substituted its own understanding for that testimony without any supporting evidence to contradict what we put forward in our petition and with that if there are no further questions i will see the remainder of my time ok thank you