credible reason why a person of or a very skilled who did not already have knowledge of the claims inventions would have consulted the site the publication and then combined them in the proposed manner in fact it's clear from the record of this re examination that the examiner and then the board found the claimed inventions to be obvious only because they adopted valid words factually unsupported out patients were guarding combination of the side references the board's finding of obviousness lack substantial evidence that a person that were in their recently combined given by the examiners found in the right of appeal know this j a twenty one thirty three there's a section there reason to combine and it says pat no no argues that the reasons to combine the reference presented in the requests are conclusory and unsupported and they say to our paper the examiner disagrees as the requests show that the a b motor references explicitly state that it's direct drive permanent magnet motors provide efficiencies over gearbo references by using one of the motors found in the e p motor brochure and in so doing would have produced the claimed invention but there is no evidence the person is ordinary skill would have been motivated combined references for that reason or that doing so would have produced t systems is that that finding doesn't line up with the motivation finding that i just read to you from the right of appeal notice which was adopted by the board and the reason is is that the board's finding is the motivation talks about the alleged obviousness of replacing in an indirect system a motor that has a direct driver taking in the director scope and putting a director i voted earlier they didn't they were talking about using the actual motor they were disclose direct price systems on the other they're saying the reason that someone would modify the priority is because they would have wanted to use a direct drive motor in an indirect system well there's a there's a mismatch their wives at some point why would someone insight about but that footnote doesn't do anything to reconcile the board's findings on motivation on the one hand and on the other hand what smith apartment teach in terms of being a director i system the a b b motor brochure statement about its motors can be used in any application is from twenty one thirty three two a few pages earlier twenty one twenty eight this is page twenty three of the r e m it is also one of the preachers that the borders we use to combine paragraph your honor i'm just reading the beginning of that sentence as a would have been obvious to replace the old indirect induction motor system with a permanent magnet motor there i don't see anything in there that talks about replacing one type of direct right motor with another about the a b b motor brochure in that context imagine a person of order skill new york who didn't already know about the zero to a path and they had striven hartman in front of them and they see that neither of those references discusses any problem with the systems that they secondary considerations but you seem to be making that argument and i never cite a lot of that you ever made alone so so what like is the point of that section of which section if you could directly you're that seems to be arguing objective in dishes and yak i don't i never saw that argument presented a little well clearly that your honor we would be relying upon whatever the ever evidence is below and we obviously thank you this morning may please or let me address the motivation of combining arguments we've heard this morning and i want to focus of two perhaps primary references on smith which is a j one seven seven six i so this reference smith teaches you can have a direct route system or you could have the gearbox system it also specifically states that and a c s eight hundred this is on j one seven seven seven is well suited for the industrial environment and that's the drive the a c s eight hundred is specifically in the smith reference so smith teaches a cooling tower that you can use either a motor with a director i've already been direct reference to cooling towers shouldn't be too limiting when and for use in a cooling tower you have to have a particular configuration and you have to have a particular capability get on it by particular configuration if you're referring to the weight and size arguments that crime data has made in the past none of those are part of the claims there are weight and size requirements in the claims itself and in fact the a b b mo motor again with the a c s three hundred drive one of the specific things to space savings so it does even motivate if your concern is space and weight and that is absolutely addressed in the a b v motor reference first you can have either of these two systems direct drive or indirect a b b motors specifically says i think was mentioned here today replaces the gearbox or indirect systems so you can have you have a reference in smith that says you can use either one and we have a secondary reference a b b that says here is the motor that can go in and replace for example a gearbox system or can be used if you want to direct drive system prime data to suggest th prior art has to have some problem in the primary reference that solve the secondary reference that i don't think the requirement of the law there doesn't have to be a problem with the smith configuration for example that the second reference a solves is there simply has to be a reason to combine the teachings that you would result in the claimed invention smith says you can have a water cooling cooling tower with a motor and and gearbox or direct motivation to combine that many things if you get further and further away from a typical obviousness announced its turn it's certainly can't i can't deny that the multiple references that are here is not typical although again the parties and i believe the board now think it was disputed effectively it said the a b b motor reference acts as a single reference they did the same with the a c s the board treated them as i think single references and that's how it's been addressed on appeal even still i think we have two references and i would agree that that's not typical but i don't i don't think that that has been attacked either on appeal or of the board that that makes it improper and again in the in the she references and the one that's attacked both today and in the briefing by prime data the real issue is was there a motivation to combine a building motor with either smith or harlan that is really the issue that's being attacked not whether some of these other references would there be a motivation to combine or not agree that is not typical f do you agree that there was a long felt need for for replacing or i can't your honor and i certainly don't think that that has been developed well enough in the record to give credit that that would satisfy any any long fel know that most of the prime datum argument is focused on the rawlins declaration mr all of this in the inventor and what's very peculiar about that declaration of course is that although they use it to demonstrate both enablement and also to overcome the obviousness argument there is no discussion in the declaration about either smith or hartman at all it seems to me that prime data h in the wrong is decoration this is what i mr all did this is what i did in the challenges i had which speaks nothing at all to whether or not a person ordinary skill in the r would be motivated to combine the teachings of one document a b v motor with another teachings of another documents meth or another document harlem that's the that's the issues before us it is their motivation to combine the teachings of those documents and i think the board's findings with respect to motivation to combine or are adequate when all they did was refer to your briefing and to some comments by the examiner i don't think they should have made their own finding well it would certainly be more complete for us to say exactly which of those findings perhaps although i think the conclusion the only conclusion we can reach is they adopted all of them but if there was something less than that than they had presented of course a bit easier standard under prima here by the parties is a right as long as there's a reasonable explanation given by the by the patent office and the board and here we have two points first of course we got the wrong declaration to descri when he was doing his work combining the motor with the drive he had in his exact words had to go through undo experimentation to find the selection of motor and drive the patent office then also said and say and we've read below to a specification and we don't see anywhere where you did describe the selection process for any particular motor or any particular drive that certainly has to in combination overcome and prove that the o to a patent doesn't that satisfy the enable more harm and their entire act is whether or not the patent office met the reasonable explanation standard in the first place combination of the statements of mr mentioned that smith talks about direct and indirect systems that very well could be the case that has that the problem is just that the board didn't rely upon it for its disclosure of indirect whatever smith happens to say about indirect systems that wasn't what the word was relying upon there was mention of a general motivation to improve things there in the are that's true begs the question how and in what way would you improve them there's no indication here of what direction someone would take that certainly isn't provided by the motor brochure if you take a look at the poor decision they got a fair question of how would you or that you would have wanted to improve things but the unanswered question is how and based on the advertising puffery that's there the b b motor brochure and its general statement could be used in any application that is in the context of benefit so it still leaves open the question of how if it all someone reading smith and partner would have modified those publications if just someone saying that their motors offer benefits is fair game to invite combination with any reference and i don't think i think that we got the law obviousness we also in this context there was other invited testimony of mr rollins regarding the people would have been motivated i understand the comment that there's a statement in there from people i think your honor made the point that i would make that the single aspect in which he had a problem one type of motor from one manufacture was not adequate to support a lack of enablement rejection mr hunt referred to citations to the specifications there was no fact finding though about the level of skill new york the scope of the claims the typical once factors types of