whether the board in the petitioner will be allowed to rely on hindsight laden words common sense to fill in a missing limitation in the prior art work gave no rational explanation for why when performing an add to address book  ok so the supreme court's telling us that in that obvious to sink rate common sense is a factor that we're to consider correct how much sense is a factor with respect to carriers are and how it was distinguished in k s him per your where the common sense is relevant common sense of one of ordinary skill in the art at the time is relevant to coming up with a company how one would combine reference to the case so is it your position that as a matter of law that the common sense that use of the common sense in korean obviousness analysis is limited to use in connection with considering whether there's a motivation to combine as opposed to aspects of the inquiry so if common sense were to apply it has to be you have to have evidence of this common sense you need testimony that can be challenged and that can be presented to the court and stand up as soon as evidence and in this case we have a situation where we rather than commonsense you have the board asserting and irrational suggestion so in their first reasoning they go to the paper address book so they look at a paper address book but that's irrelevant to this claim it would be common sense maybe to search my name correct dr menasha i made some general statements but that's what they were relied on to the extent that the board thought there was evidence to support what they did isn't one of your arguments that that evidence of thirteen as well this is where the court said this testimony is generic and bears no relation to any specific combination of prior elements and that's all you have here he made some general statement  concluded that having to do with avoiding the same address and so you don't have any evidence that is particular to what even if even or more than it just being different because somebody might say well d he said it would be common sense before you create a new phone number for someone in your contact to look to see if you already have an existing phone number for that person by looking for it by name and testifying more than he did but that's the most that can be said about what he said right and isn't it true that since the claim focuses on searching by the first information which is actually the phone number and not the name that  that would be common sense idea breaks down because you could have lots of repetition of phone numbers you know my husband works at a big law firm i actually have to have three former clerks who work there now they all have the same phone number so right i mean that and that's one logical reason not i phone number i actually pull up four entries in my contacts and there are many there are a number of reasons why it's your rational to support  notion of a search which is not found in pounded at all by having a telephone number another reason this impaired that you're adding to an address or you have a telephone number if apple would argue or does argue that what needs this phone number so you do that you do the address book the computer does a search it doesn't find your entry because it needs the telephone number so you give it the the name and the name goes with the telephone source from the first program and so they're just trying to shoehorn pand it into our claim by imagining a search when you're doing an add to address book with a telephone number and they're saying you would avoid a duplicate entry it ing a telephone number to an address doesn't teach the extra step of doing a search that's correct and that now the argument on the other side is that well it was well known at that time that in some databases if you want you could automatically do a search before you had it a name that some databases by default would automatically search to argument is that if it was found that in certain certain databases and i think even your own expert stated that some databases by default would automatically check for duplicate entries some didn't so to the extent that they would it it would probably be when there was an entry identifier and you might look for the entered on a file like with the paper address book you're entering a name maybe you would you would check that section of your address book when it went when you did that telephone number search which is of no value because it didn't find the entry and you entered into that one could have also done a search for the name and found found the entry and avoided the issue but are the information that's being asserted against our claim is this telephone number and in that instance is just data content and that it's not rational to  is the motivation to combine what is arguably common and old elements namely searching for duplicates that might be true for an entry identifier but here it's not true for the telephone number they  could be a benefit they say would be common sense and they say it's reasonable to presume but they don't have an underlying rationale that i understand for there to be a benefit that they don't you're arguing they don't have that teaching that it came up with and its decision all we have was the general statements from the expert apples expert including the new methods of database searching to pander to ad address book example now i think it's important to go back and look at what panned it actually is disclosing here but let's let's back up because i want to asking us to do is to use common sense and to basically substitute for something that absent in the park right is that right no no your honor we're not doing that i think it's important to distinguish between two distinct concepts one is common sense which is the motivation to modify or to mine and the other is common knowledge the common knowledge of a person of ordinary skill in the art and that's what the board was relying upon here when it was looking to modify panda it was relying on the common knowledge of database searching and i think that but it didn't really say that it was that it would be it's common sense to do this search and no your honor i think if we start at each well the boards opinion in this is going to continue on to a thirteen but it says the obviousness inquiry not only permits but requires consideration of common knowledge and common sense and then if we switch skip down to the next paragraph or next paragraph on page thirteen it says in this case a claim structural feature is not missing from the applied prior art the conclusion of obviousness follows from a benefit that readily would have been apparent to one obscure only part of the time of the invention that benefit is provided by the mere retrieval  this play useful preexisting information to a user of information a database using known methods and then if we look at the next paragraph the board specifically cites and relies upon pen owners expert that some database programs conduct a search for you because by default so the board right here is relying upon what's the general knowledge of the art that people of ordinary skill in the art understood databases  databases searching dr minissha are expert explained at a one sixty eight and a one seventy but this patent claim hesse is not about searching for duplicate particular kind of information which is the first information which in this case is a phone number and it has nothing and it doesn't care if there are deep pockets no you or i think if we actually look at the claims and the specification of the eight for three patten i'm looking at the claim it's very clear that it searching for duplicates now let's go to where in the bay seventy four and twenty one at column sixty three i  me what column two to three that one sixty three causing the search for a search term in the information source using a second computer program in order to find certain information related to the search term so what it's doing is taking shamir the first information i think would be in it for three patent would be a name such as you would find someone's name and then you would it could be multiple things but the name is that example they mainly use in the four three pat and so what that does is that it benefits a name it searches for that name in an external database and then it retrieves information if it finds a duplicate of the name this related to the name in other words if you think a address book it basically takes my name brian mitsui it searches for prime net suing in the address book and then it pulls up my address my telephone number we email that's what the claim is doing but if it searches your name and then it pulls up your address to find i'm sorry for your name i'll get your phone number yes you are but the way that it does that is it use a search term this is the first information the first information is my name that's in the document and it uses my name to search as the search term in that external information source in the external database if it finds my name which would be a duplicate it would be my name brian mitsui in the original document my name brian me at least a direct answer on that never got it right so pinned it does not disclose searching in the add to address book example the board recognized that but there was a known method of database searching but so so why i mean every invention where the inventive the invention claimed is a combination of things is a combination of old things that are old and well known but it in the absence of hindsight nobody knows to combine them except for the inventor yes your honor but there is a motivation here there's a common sense reason that somebody would want to search for a duplicate before adding in a duplicate toll phone number in the address book now i think that one of the things that we've been discussing a lot is it and in the context of telephone numbers and i think it's important to note that panned it is not limited to telephone numbers its teachings with respect to the entry of data texts including for example e mail addresses nouns verbs names and street addresses can be recognized in other words panda express the disk loses that you can use a to address a function and so even if this court says well it wouldn't be common sense to go search for a telephone number because major law firms major businesses all have the same telephone number for multiple different people there would be a reason to do that with respect to a name so you would first search to see if the name already exists in the address book in if the name exists in the address book it would display what name what information respects you are the first us we're not using common sense here to sort of create a limitation we're using common knowledge we're using information that is in dr levy's death aeration which the board found where he can see that some tax such as encyclopedias or legal case books using keywords or search terms so searching itself is disclosed in pand it is the only issue here is whether or not there would have been a motivation to combine and menus can for example then a fight executable programs which provide the meaning of the highlighted word so that is taking the word it's searching for it in an external information source once it finds it it brings up the meaning of the highlighted word such as the definition in a dictionary so again i see that just simple database searching for that right there is pinned it explaining how it works and that's substantial evidence that support the word decision with respect to what was known to a person of ordinary skill at the art of the time the invention now i just would like to make additional point on the the here where case and some of the law that was discussed here with respect to common sense and common knowledge it's very clear under this court precedent that common then you pull that associate information now in the board's decision to institute a four eighty nine didn't they express we reject the site you just gave me you just said a substantial evidence for the institutions decision was that after the board said an incentive to sion decision was that it didn't find at that time enough argument or evidence to to look at the noun for it didn't reject it it simply said it found enough why don't you start with that last point the last point that says that and it allows a at analysis of a second set of information retrieval of a second set of information to help define the first  moore recognized the ward excluded the noun verb proposal in pound it as a part of this as part of the i p r trial so it was not one of the grounds that we dealt with the  claim is much more searching it requires recognizing first information and using that first information you know where in a specific information and there's performing an action in which the action that's performed is of a type that is dependent on the type of the first information and so the whole claim has to be satisfied and they've only tried to do that with respect to the telephone number and body image and so that was the only each of the you need to find evidence of the complete claim you need to find an incentive to make that combination of pand it and other common knowledge that's not  that the step step i claimed requires at least three recited features requires a search using the first information it requires a search of an extra and all information source it requires finding second information having a type that's the pendant on the type of the first information so to just pull one sentence out of saying that names can be recognized or announce verbs can be recognized is not sufficient and more  the the four three patent has a whole paragraph explaining how one recognizes the different types of information so there are a lot of things that could have gone on had they been in the trial but this trial and the decision were all directed to the telephone number embodiment in