u of mack is legally improper not only because it finds that mack is analogous art which is against the clear preponderance of evidence to the contrary but also because the board completely fails to about trimming i don't believe that the supreme court in chaos are stunned that we should expand the scope of relevant art the issue in k s r was whether or not the relevant art was properly combinable in an obvious manner in other words that was a motivation case all of the prior art under consideration by the supreme court in that case was not only rebreathing related to automotive braking systems they were directly related to would seem to encompass what that is talking about with its small extra appliance which includes a small that trick motor well again because that's using the interpretation of the word smallest to mean anything that's those teachings apply to and they use the word small appliances in that context as stated by our expert witness small refers to the fact that in tools of this type motors are characterize as being small in the universe of motors motors and outdoor power tools are considered to be small as opposed to large motors in appliances such as washing machines and dryers that doesn't include a miniature d c motor which is an order of magnitude smaller than the motor that you would use in an outdoor power tool and again that's a statement that it's important to understand how one of ordinary skill in the art would interpret that statement and the only evidence of record is that one of ordinary skill in the art would not understand that statement to include a device such an ounce the hair trimmer imac but beyond the point about whether or not mack is analogous art which as i've indicated we don't believe it is more importantly the board has completely failed to explain why a person of ordinary skill in the ark would have modified mat to arrive at the claim dimension instead as to the critical distinctions between the mac reference and the limitations in claim sixteen such as the requirement that the motor be fixedly secured to the mounting plate the board simply precludes statement suggests the fixedly secure limitation the board doesn't explain well maybe what the board was trying to say was that already contemplates that you don't want the motor to be spinning during the operation of the device and so that's why that discloses the use of the yoke and the flap section in order to keep the motor from from spinning and so the idea is well what are some other ways that we know that are well known interventional the keep the motor from spending a hot screws would be a way to do it well so assuming that is what the board was getting at then why is that  well first of all the use of the yoke to keep the stain or of the motor from turning when the motor is energized that of course is wholly conventional you have to you have to support the state of relative housing so not just the armature turns round or them the state or reason why they use a yoke is because that's the simplest thing to use in that application in order to achieve that function there is nothing in math that suggests that you would take the extra steps to now fixedly security to that plate portion of the year casing because it serves no functional benefit and it significantly increases the cost in the complexity of a some blin the device a person of ordinary skill in the art as the evidence of record supports would not do that for no benefit there is no benefit to be gained by fixedly securing the motor to the plate portion of the gear casing and mac that simple spring clip is good enough and it's much simpler to install in a production process i think the motivation to combine or motivation  always must have a extra additional benefit to it i guess my question is what if it was just known in the art that there were many equivalent ways of doing th attachment a lot of different ways and would that all be obvious or must there be some kind of extra special at that using a particular alternative on top of the one that's disadvantage so therefore to suggest that somebody of ordinary skill in the art would have done that and incur that disadvantage for no offsetting benefit is improper and that's exactly what the evidence in this case support explain clip in that application was good enough and it would significantly increase the cost of a sum bring not only the time but the cost of assembling that part if you had to deal with recognize these would be very tiny screws you need you're talking about a motor in this device that is no bigger than the size of your thumb so imagine going to is in this industry it's well established that we're trying to reduce the number of components as much as possible we're trying to ea the complexity of assembly as well as reduce the cost the profit margins are super thin so we're doing everything we can to simplify simplify it why would we take it already a simple elegant solution of the yolk and then rip that out and now have to deal with a bunch of screws for no functional benefit in that application that's exactly right that's exactly right and of course that's one of the significant  just simply take the motor and you place it into one half of the housing and then you close it with the other half and now it is completely supported and all those various points that it needs to to accommodate the kind of working environment that's going to be operating skill in the art would normally do they wouldn't think of adding cost and complexity to actually take cost out of a product well i guess the idea would be again there's so many different contact points in lab for it that you know flanges there's all kinds of support components all of that could be removed which is you know what each of the goal of reducing complexity in the manufacturing tooling to do that if it happens during the molding process what was critically required in that mostly process however because those ribs have to have very very tight tolerances all those various features and labrat you need to use a plastic material that is very very temperature stable because you're talking you're looking at surfaces that have to hold tolerances within a few thousandths of an inch but nonetheless it makes it very simple to assemble that product that's one of the significant advantages of the president's ranch was the recognition that we can get away with using cheap plastic if the only critical dimension we have is so small that even if it shrinks by five percent it's still within the critical dimensions the critical tolerances that we need that's what enables the use of that very simple that very cheap plastic material which takes out the mac itself suggests this claim of invention and at least for me when i read it back i don't see any suggestion of replacing the yolk with screws one of the whole point to try to reduce the number of component parts and make it as simple and cheap as possible to make this trevor assemble the driver easier on with all due respect i think there is quite a bit of  teaching in mac and the board sided too that for instance mac deals itself with not just the concept of reducing costs it has as its goals minimizing complexity and also keeping things quiet and what the board was referring to when it in it's in and in the decision with regard to its findings the motivation is that it is addressing th tremor and so one of the things that it discusses this causing that is inappropriate contact or improper frictional contact inside the housing and so the person ordinary skill they are who in this case is a bachelor's degree in mechanical engineering would understand that reading this and knowing that that's what you're trying to fix the what you would do is fixedly secure that motor to the plate to put that into the group itself seem quite satisfied with using the yoke to harness the motor secure the motor inside the device and so it doesn't seem to be concerned at all with any motor noise with its particular with your honor with this is the yoke was ok for this hair trimmer and that is correct in the fact that it is in a smaller version of a small handheld device but a person ordinary skill in the art when when looking at mack and no understanding what it's teaching to move that up to a bigger motor that has higher torque you would likely need to do something to fix at least secure that so i guess that is what i was wondering is part of this rejection of requirement that we are transitioning from a hair trimmer to a string because right now is the board construed it this is this claim isn't restricted to do outdoor power tools right it's just any tool with these various limitations reside in the body so now we go look at what max says you're not thinking about string trimmers anymore you're not thinking about outdoor power tools you're just looking at math in isolation in wondering what would be obvious variations of mac alone correct so in that context now i'm wondering why would anybody tried to make the assembly more complex arguably more costly when max says that's what you're supposed to get away from that's all object of his invention is to reduce cost and complexity rise talk about noise but it doesn't seem to give any hint that there is a problem with noise with this particular conception of using a yoke to secure the motor the so your honour's would direct your attention to column three lines eighteen through twenty four and that is the portion  sixty two a and sixteen to b which is the group so it's that combination of things that are that come directly from mack that is the way that they dealt with so it was not just the yoke due to prevent the types of movement that they were worried about inside the housing right but we're talking about managing the motor to the plate a subway train yes so you're saying these are the three things that were done to do that  reason the board found that is because it improperly construed that claim term fixedly secured to prevent all relative movement and that is part of our cross appeal in that we don't believe that that is a proper claim construction of that term in fact there were portions of the four one seven pen that did discuss how things are can be fictionally secured and not be quote rigidly coupled which is what the board latched onto from fit within the group which is not knots i mean from the plain teaching of maggots it shows and teaches that it is in the group so they characterize it as not fitting inside the group which which helped them get that reference and in the circumferential groove limitation to get around back and laugh or it was not at issue here at that point either because it hadn't been disclosed labrat show the groove that we're discussing as well but am i wrong that stand a belief that the spring in the spring grade wire of that yoke was not able to fix really secure which is part of the claim construction that we're challenging we don't think that that is appropriate because it can prevent it can allow some relative movement so they did it it wasn't just that argument that got them around mack it was the the argument that it wasn't in the groove either which which plainly it is in the groove argument so i'll just briefly say that our position is that the doctrine simply doesn't apply automatically in the same procedure to contemporaneous statements of claims go another black and decker had and should have taken the opportunity you may have i may be incorrect but i thought that it was not until next year that it expires but regardless though that may change the claim construction the r i vs a phillips construction but it wouldn't change how the dr in a prosecution disclaimer and how it would be arguing that if what they seem to want is to be able to make a narrower claim so intemperate any a statement just claims the patent has expired if you're wrong and the patent has expired oh the same expired they do have an opportunity to amend i don't recall anything in the briefing where they said that that was not open to them with it they couldn't amend i believe the client the patent happened expired but regardless even if the patent has expired and they weren't before they couldn't have amended their claims that still doesn't change the prosecution disclaimer doctrine to allow them to just contemporaneously state a claim scope for a preamble and have it automatically have effect in the same proceeding the doctrine definitely applies in any p t o proceeding or statements are made to obtain a patent as omega says and as court sent in tempo reported that because i really sense that this review is carefully worded in that you are not required to accept a disclaimer but apparently you are able to do was that right like it's it's not the case that it can never be accepted it that if you say it can't be accepted you should go amend instead then that it's you're allowed to do that but let me see if i can send you you examiner or the board can accept a disclaimers yes but they do not always have to they do not have to accept that's a position they don't have to step to claim construction just because it's framed as a disclaimer of claim skull because the question is is there is is there need to be some kind of underlying premise for the examiner or the board to say this is a close claim to structure in question i could go either way on this but because the applicant is or better known as urging  construction over the other oh except that and know that this express disclaimer will be bound up in the hall to make a claim construction of this claim that's one approach another approach could be i don't agree with this pattern though i think this claim means something else but i will in my discretion elect to adopt this application or pet owners construction of the claim could be construed yes but i don't i don't think the examiner or the board should be changing their claim construction because necessarily because there is a statement a disclaimer i think they examine the board has to and do so either in the patent specification or the prosecution history that's true i think you are correct and maybe i'm making that maybe i'm being too rigid and how like the examiner or the board should accept that ma granted in the prosecution are up every exam certificate or other certificate issues yes but the board what i'm trying to be clear is the board doesn't have to think because you said that because you say this is your claim constructions we have to agree it's off i p r is a different animal well there are the court is doing a claim construction argument here where examiners are usually don't are required to get a dry specific claim construction or every limitation claim and right it's really comes down to a fight about the scope of the claim compared to the prior art there's not necessarily a specific claim construction given so and i p r does have adjudication between two parties are presenting arguments in the board is coming up with a clean structure based on looking back at the prosecution history for disclaimers of plain thought scope and you're correct that statements that were made like it to  patent that determine the scope of the claims should be given effect in the subsequent i p r as a prosecution disclaimer but there is no requirement of the board here not to construe the claims under b r i as as any court with the past district court or the board and then come up with a thought what they think was the right construction as opposed to accept the disclaimer as the claim construction because in fact what they're what happens is and the prosecution history has been clear has what that the scope of the claims have been known to the public and they shouldn't be able to then change it i can temper any a statement and of light making an amendment if possible and avoiding intervening i want to go back to if i may the point concerning the analogous are because in the factual findings of the board there is a significant inconsistency in the factual inquiries under graham b john de include the requirement to define in the context of defining the person of ordinary skill in the art the identification of what is the person an art and in this context that has been defined and it is uncontested and as a technician with several years of practical experience developing electric motor powered outdoor power tools  or a person having a bachelor of science degree in mechanical engineering with lesser years of such practical experience so the pertinent part in an uncontested manner is defined a lector motor powered outdoor power tools as this court has recognized in wires the master lock and i'm quoting the court the district court instructed the jury without objection that obviousness must be determined based on the perspective of a person an ordinary skill in the field of blacksmithing the jury instruction appears to define the field of endeavor a house wax method so in there the this court has already made the specific correlation that talking about what is the quote pertinent art for purposes of defining a person of ordinary skill in the art is consistent with what should be the field of endeavor of the invention the board in this case has adopted a significantly broader definition for what is the field of endeavor given what is the uncontested definition of what is the person an art in defining a person of ordinary skill in new york without any