a fork lever that would push down on a gear and this gear would selectively engage gears that were on the inside of a hull they spoil your main be able to actually extract the elements from the prior art and plot that into the invention have it serve work perfectly in this environment that rather it's looking at the prior art that cited to determine whether there's motivation for someone to combine not that they can actually take one piece from this and put it with this and have it work perfectly but would want to film the art know how to do that to make it work when you combine this that's correct and what the court said was that they found the motivation to bind because both feeling and more did the same thing that is they said additional line without bumping the head on the ground and they were addressing the same problem name advancing additional cutting line without bumping the head on the ground that of course is exactly what the supreme court and chaos are so it is not sufficient to find the motivation to com dealing with whether one of ordinary skill in the art would be motivated to combine those references and i think in doing so on the are would look at the do taleo circumstances and that's what the supreme court was essentially saying in k s r they were saying that you have to underground versus john deere look at all factors when you consider a motivation to combine our princes what's the upon basically abstract legal principles and determining that there was a motivation to combine references without pointing to specific facts that one kind of lever another well but there are differences in the factual situations in which the leavers are used and the one case in the fuelling case you have all over the l was under attack and so you could use a second class lever there and the more case it's mounted on a pole you couldn't directly transfer it figuring out how to transfer and  by the way it did not move the housing relative to the spall that it that he didn't do what he did was he simply moved sport itself remove the mechanical gear in relation to the inside of the to the invention of more hat but isn't that true every time you combine in prior art reference is that there has to be some modification i mean it's a rare thing that you can actually just take one feature and combine it without some other kind of modification of it is and that's why the court said in k s r that that when you can't directly transfer one element from one invention to reply is that all inventions are basically combinations of all elements but in order to show that there is a motivation to combine you have to show some facts some factual basis that there was a technical principle that would teach the combination somewhere as i say in this particular case there is no or nothing that the pull a court can point to specifically just general mechanical principles it's a simple art but then of course if that's the case every mechanical invention would be obvious and nothing would be invention it's not obvious to the quick to do to go there you have to do some work to figure it out and that is invention now that's a pure factual question whether you call  analogous art or not and now this artist just a verbal why did you put in an affidavit saying that it wasn't obvious to do it would be nice to do so sometimes when you're representing the independent inventor that can be heard as a practical matter but on the other hand we do not have the bird of proving that it's non obvious the patent office has the burden of presenting that we can review their facts findings for substantial evidence and now looking at the fact finding snell they say that more than just that any suitable mechanism may be employed for the mechanical line there and willing to close as to feeling discloses to such mechanical large heating mechanisms and i understand your point is not enough to say anyone can be used in the fueling discloses one but somebody actually has to fill in the blanks about how to incorporate it into more invention because it's not a matter of plucking it out of one and putting it into the other is that my appreciating your argument well my argument on that is  saying that any suitable lying treatment could be substituted is like asking someone to look for a needle in a haystack it doesn't suggest any other to feed a pre determined length of cutting line from the head into the cutting plane is needed by the operator isn't that what fuelling does isn't fuelling habit line of exactly that design but well what what why isn't that enough why does more certainly you agree doesn't have to be explicit more doesn't have to say choose the fueling one but more saying choose any known mechanism that is capable of doing this and there's no dispute that feeling is prior ar so why isn't that enough n guidance as to what kind of structure would would be appropriate to do so but there was no teaching in trying to mount that onto the type of structure that was involved in the more pat and besides what you're saying is that even if fueling had been a weed trim there still would have been no motivation  spool housing on a hand term simply as a factual matter and so that's why i think there is no motivation to combine references i mean without some kind of explicit lever is it's going to be some kind of a substitute for ears they should have pointed something that said that even if it wasn't in the field please the court of greece argues that there is no made of motivation to combine the references here in the record however the board provided substantial evidence to support their motivation finding fuelling discloses a cut in line  but it explicitly states that it's cutting a line feeder doesn't have to be used any cutting line trader can be used and more in order to satisfy that particular device one of ordinary skill in the art reading that teaches the requirements morse code in life peter that's one of the findings made by the board with respect to motivation another is that more and fuelling both teach the same problem in the backgro section of both more and fueling they described the problem of trying to design a cut in line theater that extends cutting line selectively because both of those references teach the same problem naturally would have combined those two references in order to find a solution to the problem but they teach the same problem more there isn't doesn't that really go to analogous arts are you trying to collapse the analogous arts test into the motivation to combine test are you saying that if it is analogous arts and can be considered there where there is the motivation to combine and i'm not trying to collapse the two you're on i'm just trying to address the motivation findings made by the board and sheered board made two clear findings one is that the prior references which i just discussed teach the motivation combine into the nature of the problem to be solved is the same in both so that would have provided an additional motivation for the two references that teach the same problem naturally want to board in our school they are would look to combine those two references to try to find it appropriate problem solution to that particular problem but again it just makes it sound as though you're saying any time to references talk about the same problem that alone is automatically enough for them to be utilized to combine for an obvious this rejection and that seems to me to be a very very low standard now i'm not i'm not sure camps are goes that far but i believe that care started address the fact that if two if if a problem is no in  the ark and there's a problem reference that addresses that problem that would be sufficient reason for the references to be combined here that's just what we're dealing with we're dealing with problems of the problem in your definition is feeding out line without bumping on the ground that's correct your honor when you look at the background of the applicants specify specification he states that a problem with the art is that i don't like peter's need to be bumped underground and that exposes the cut in line features to damage and so the problem that grace was dealing with is how do you design a cut in line theater that extends cut in line without bumping it on the ground and fuelling addresses in its background section the fact that handheld  tremors need to be bumped on the ground so they address the same problem and that is what would cause one of ordinary skill in the art to look to fuelling to address the problem with which grace was concerned sheer the cut in line feeder and the actuation ever they don't produce any unexpected results there is no evidence in the record that shows that this combination produced an unexpected result when that put the burden on the that  wondering where is that of this predictability of putting these two things together what what evidence is there that this all functioned in a predictable way known to one of skin on the well piece references deal with references and then he makes a promise case if the applicant is does not believe that the examiners rationale for the rejectionists out then he can rebut that you can provide evidence for in the form of an affidavit which shows that the examiner got it wrong and don't grip what you're saying is the p t o doesn't need to bring in experts sander really functions as one of skill in the art when reviewing the application his or her  argument and at that point they will stablish the private issue case and if the applicant is dissatisfied with that then he can refute that by arguing his particular position or can submit evidence i suppose we look at the references and we say on their face these references don't provide a motivation to come out and seems to me your position is that the additional showing of motivation this necessary compound from the expertise of the infringement action where hers where there's ability your honor at the point at which the examiner did much as my statement accurate i mean doesn't the p t o have to rely on the expertise of the examiner agree then the applicant cannot sit on its hits it merely cannot wait until we're going to rely upon i just want to think this through here for going to be relying upon the p t o then there's expertise as supplying the evidence related to motivation to combine when reading the references that we need some sort of qualification process to ensure that the examiner in fact has sufficient expertise to qualify as one of skill new yarn in this area since motivation to com does not agree with the examiner's findings with respect to the references and it doesn't agree with the rejection it's up then the onus is on the applicant the applicant cannot idlest sit by and wait until  qualifications of the examiner on a case by case basis we assume the examiner is is someone skilled in new york and that's just the nature of the process that's correct your honor it completely is the nature of the process process if we were to assume that the examiner was one of skill in the art when that obviously be something that would be subject to rebuttal by the applicant if he has an unskilled exam or his particular case wouldn't even be free if he did choose to object on that basis to using that particular examiner as one of skill in the art because he himself is clearly not qualified and would not open that examiners qualifications up to consideration by this court i don't know that that is the in the litigations that we see that are litigations as opposed to p t o actions there's always an expert explaining the leap from his considered one of skill in the our position showing how he would have taken this stuff in this reference and put it with this one because they both say x y and z and this and it let me as one still new york to this conclusion and the interesting thing about the patent office proceedings is you will never have these experts involved and so we're looking at these references and we're wondering to ourselves to what extent do we rely on the examiner as filling in that blank that we see so frequently provided in litigation cases well i don't believe that it should be cop should be characterized as a leader either because the examiner is forced support his findings based upon the evidence and if the court does not agree with the examiner's findings that it can do so because it believes that the examiner did not support its case w theory answer to judge morris or she has to be the agency expertises assume throughout the administrative and that you don't have hearings about whether the particular people involved in the agency are experts not it's it's it's just assume it's part of the assumption that courts have to make in reviewing administrative agencies that they are expert in the field are i would believe that's correct you the part of grace's argument has been that the references to be physically combined so therefore the combination should not have taken place greece's argument really  whole and we're grace's argument really breaks down is that it loses sight of the fact that one or one of ordinary skill in the art would know how to modify references and here as mentioned the references deal with gears and levers and as conceded they've been around for generations so one of ordinary skill in the yard here would know how to fit together the different teachings in the prior art until they operated properly just one last question on  one that taught the proper number of these things namely an equal number of flanges is that right that's correct ok and what exactly can you explain to me was the motivation of combining everard's other than you know it's obviously advantageous because ever it shows that the equal numbers sort of reduce what was that there was some advantage that was actually disclosed in everett's of using the equal number of humans or what it was and that is so that the force that's applied to the that is sufficient motivation to combine everett's with the other references one of ok so whenever a reference talks about an advantage of doing it the way it proposes to do it then is that enough want to have combined efforts with the other references so that it can minimise the amount of stress that was actually on the flanges themselves earlier if grace was the satisfied or disagreed that the references could not be complied because they were in some way an operable grace could have submitted and after david but he didn't do so so there is hundred very briefly first with regard to the discussion of the line tremors and the prior art section of the fueling and the reason why fueling addressed those at all was because he was going to be using a flexible cutting line that's all the fact that is that with the particular problem that fueling was working on he was working on a  second last lever second with regard to this business about the exam being one of ordinary skill in the art the office action did not contain any finding by the examiner that says i take notice of the fact from my experience that this is obvious to a lot of ordinary skill and they are therefore there is no reason for us to submit an affidavit in rebuttal the fact is the examiner as one being skilled in the yard is currently a mess it may have been true thirty forty fifty years ago when examined it's been a long time in our art and those of a background open now have big turnover and examiners and we have features by known mass its would ordinarily be obvious if it produced predictable results and then later on they should the question is whether or not the result is unpredictable in between the supreme court discuss united states versus atta and which the spring court found that a was not obvious because it was not predictable and it was not predictability was not based upon mechanical principles or scientific principles but they were talking about was whether or not it would be predictable to one of ordinary skill in the are here we have no evidence that anybody had ever considered the combination that's not enough what he's saying is that using the laws of mechanics and the laws of science it should be predictable that's not the kind of predictability the court was talking about in k s r whatever made the statement that something that performs a shame function combination of features unknown methods would be obvious if it produced predictable results really means is the result would be predictable in the opinion of those ordinary skeleton they are here we have no evidence that anybody of ordinary skill in the art had contemplated the peculiar combination of mr gray's came up with therefore it's a non factor