declaring two claims of the forty three patty objections forty three patent unpatentable and the as obvious the dispute turns on a single limitation sound damping material forming sides of the sound  about which the parties dispute those disclosure and motivation as to two aspects one is sidewall sound damping material and the other is whether the references teach and motivate sidewall only sound damping so that covering the surface right so the boards first error was that to find sound damping material disclosed it relied on the sidibe as teaching of pressure absorbing material and to die teaches very clearly that the pressure absorbing material does not require sound absorbency but may have sound as a weapon see that rules out the possibility that the pressure absorbing material is in all cases sound damping material and in fact it confirms this when  because your honor that we agree that there is a separate teaching of sound absorb it sounds or being a body meant of the pressured serving material but in that case it's that embodiment that is the relevant disclosure apple made an argument that the pressure is already material for example is made of foam and foam is necessarily sound damping so they're sort of the general teaching of sound damping material and this passage that i quoted makes clear that that's not the case there is this particular embodiment pressure and sorting material with sound absorbency and that is specifically a technique to absorb the wind noise so i can move on to that why that also does not disclose the sound of new tiriel of the claims but i was  pressure absorbing material such as something distinct that's a diets claims to feed standing waves not by absorbing sound but by creating an irregular path that causes there not to be a peak resonance of any one thinking right yeah but it allows for a particular technique of sound editing material which is to absorb wind noise and its sound damping material that teaches its frequency selective so it absorbs in the high range the wind noise that is produced by the narrowing and constriction of saddam stuck and it specifically teaches also that it absorbed avoids absorbency in the base range because the diet is a base range speaker so it wants to produce space sound  and it can dampen out all of the high frequency sound the claim requires that the sound damping tiriel mitigate standing waves that is the argument that apple made below and the board relied on a finding that the claim or cites that the sound material mitigate standing waves those are two different techniques and in fact apple's expert dr reprimand admitted that sidibe does not teach to absorb to use sound damping material to absorb standing waves response to that was well the full range sound is not a claim limitation but that's not the relevant consideration the constructive consideration is with the references have worked with each other to their principles of operation suggest that you would make a successful combination and inori says over and over again it's purpose is to produce you know it's in the abstract summary of the invention to produce full range sound across the whole frequency spectrum but even if it has a particular purpose that doesn't mean it couldn't  how minority is teaching full range sound and so the use of sound damping material that is frequency selective that absorbs the high range sound but avoids absorption in the low range would give you an uneven response of common already and if you look at i mean it's really the entire discussion he has his frequency response charts and when he's explaining his various techniques you know putting the speaker at the end he noted for example it's all to reduce the peaks and dips to try to get an even response across the whole frequency material would cost you signal in the same proportion that it would cost you notice and so it would be d he says is there to absorb standing waves so he's aware of the technique and as the board specifically noted he has frequency response measurements for example in figure seventeen show lateral resonances another side to side and top to bottom resonance as the same kind of peaks of sound that he's trying to eliminate so he had the technique he had the unwanted and even s in his frequency response he talked about it or showed it and yet he still chose not to extend his own sound damping material  the other thing i want to turn to is the only before you know it was apple's burden to prove this motivation and the only evidence of motivation that they offered was their expert testimony experts testimony this would be a routine design choice and one of a limited number of known solutions disclose this and why that would have been motivation to do this your honor i respectfully disagree i mean the only the only testimony is in paragraphs one twelve and one  the presence of spurious residences accordingly it would have been obvious doing so would have been a routine design choice and in fact when he was asked about it in deposition he acknowledged a couple of things apples council acknowledged the the y that there was no technical analysis from its expert so when also admitted that in when asked if that doctor elliot's arguments as to why the references were incompatible because you would be damping out a signal in the same proportion that you would damp that noise and it would conflict with the goals of tom and henri he admitted that he didn't address any of those arguments i mean all he's all he's given is this routine designed to us i think it probably i mean to my rebuttal time probably be helpful to just explain the sort of the secret sauce of the patent is if you look at the record all of the examples of using sound damping material and other techniques to damp standing waves or other kinds of sound waves  the patented invention what it does by the narrowness of the duct in the broadness of the other face is it moved all the resident frequencies outside of the offical range in the broad face and on the narrow side of the patent consequently to have the same volume have a very large number of resonant frequencies in a small area and so when you damp that way you get a lot get rid of a lot of resonances with minimal loss of signals because because it's a small area there is nothing in the if if you got it so please thank you very much your honor good morning and they please the court mark fleming on behalf of apple together with kevin goldman and natalie poss t h x his arguments on claims one and two are all factual they challenge the board's factual findings on the scope and content of the prior references and the motivation to combine them as we explain our briefs we think these findings are well supported i'm happy to answer any questions the court has on them i think the one thing i'd say on this issue about  range sound reference is that this court has made clear repeatedly most notably in re con that just because the proposal obviousness combination might be somewhat less effective at serving the goals of one of the prior art references doesn't mean that the combination questions or the fact that perhaps the combination would have been less effective at producing the particular signal that tom and henri was looking for doesn't mean that the combination of nonetheless not have been obvious it may have meant that you need to turn up a speaker or use a slightly more rather than simply not serving a purpose and so the question is what is your response to your opponent's argument that that there is actually teaching a way that i don't recall that argument being made in any of the briefs there certainly isn't any testimony that i know of that says that t rises to the level of saying do not put sound damping material on any of the walls except for the fact he doesn't actually do it but that's not a teaching away if that were teaching away then there would never be an obviousness case because the whole premise of an obviousness argument is that no single reference satisfies all of the claimed elements so what we have here is a disclosure of sound damping material at the back of the duct in tama nori silence as to whether to put sound having material on the side walls and then the would like to address our cross appeal on claim three because i think that is different in kind from texas factual appeal here or the board regrettably made an error of law in terms of the standard that it required us to apply in proving invalidity of claim three specifically the board faulted us for not identifying examples in the prior art of sound every material that follows a curved contour and with all respect to the board that's not the test case are says the analysis does not have to seek out precise teachings directed to the specific subject matter of the claim its enough if the patented arrangement results from taking one known element in the prior art and replacing it with another known element in the prior art with results and the t h x itself recognizes that standard on page twenty five of it's yellow brief and we show that here we show that the straight backed wall of tone henri which is made of sound damping material could very easily have been curved as the back wall in saddam is there's no suggestion that that would have produced any unexpected results whatsoever the board notably did not disagree with certainly didn't reject our experts testimony that straight and curved back walls have both been used commonly in loudspeaker design with predictable results notably t h x his own expert dr elliot did not disagree with that he didn't controverted he didn't even address claim three in his own declaration it was issue wired to to defer to your experts testimony if the board thought that there was an otherwise support for right well given because your experts said that it would have been a common design choice doesn't mean that it would be without more evidence depositions it wasn't an issue at the oral hearing but it's not as though there are any secondary considerations here that are being asserted to say that claim three circular wall is so remarkably novel that it created commercial success or solve the long felt need or anything like that it is a routine design choice that is frequently made in the prior art and dr a different statement on that is uncontroverted where the board went a stretch is it stated that we were required to show curved sound damping material in a single prior art reason for the mistake is because the board seems to have you figured eighteen of sidibe say as exhausting to the disclosure of so as to how far up the wall the sound absorbing material can go and as we explain figure eight does not exhaust all of the dice teachings so diet pretty very clearly says that the pressure of adjustment section which even t h x admits is sound absorbing material can go all the way up and around of the back of the sound diving part into the sound source space forty one it's a diet call so i i fully agree your honor that is another field sufficient ground on which to reverse on claim three which is that said diaby does in fact show what the board mistakenly thought we had to show which is a cur contrast in our brief on page twelve that i does that you can use your theory right here but it doesn't it doesn't put it on the back wall for a very specific reason the sound absorbing material and the pressure absorbing material but instead i are there to deal with the narrowing of the duck to deal with over pressure and with noise the back of the duct is the widest part of the duct and it's not where the sound is flowing out so heat they never say die never puts back while sound editing material and what the claimed limitation at issue requires is sound damping material forming the back wall and curved to the contour of the speaker cone the border found at a thirty four that that limitation simply is not disclosed  not to mention motivated so their argument is that the the board was required to find it limitation that is not neither disclosed nor with any more evidence of motivation than there are experts saying it's routine design choice even though it looked at the references and said well there's no nothing showing this curve contour backwall sound damping material which is what the claim limitation requires and the only thing our poll relied on for the  contrary was that the disclosure that it the send out doing material goes from the sound sports or space forty one to part forty two and all the drawing show it starting in the middle of forty one and then proceeding outward to forty two and they argue that that language must have been interpreted must be interpreted by the board to also wrap the sound dampening material around the back wall that strikes us as a very unnatural reading of that language and it's not reflected in any of the drawings  i just wanted to come back to this one point on time and or if i may which is that we did argue that there was a conflict between tom and henri tham that the references are required under broadcom and the meme's case this is on page twenty three of our brief there has to be a showing that the references would not conflict with each other and if you look at the tom and jerry abstract the and the summary of the invention it's the object is to realize satisfactory acoustic characteristics over a range of high to low frequencies so sound damping material that would selectively damp out off high frequencies and leave low frequencies untouchable directly conflict with that goal  thank you your honor i get just two points on this the court as for the questions first of all i discussed figure eighteen the whole point of argument on figure eighteen is it does not fully exhaust the teachings of sidibe judge i q your honor is exactly right that's a diet does disclose using sound death material all the way up the back wall my references for that are page five eighty two of the appendix where saddam says that the sound dematerialize for example felt quote maybe provided on an entire surface of the wall surface sound guiding part forty and then again on five eighty three that this includes quote on the wall surface from the sound source space forty one to the sound path forty two and the figures in the pattern including figure eighteen make very clear that the sound source base forty one is the area immediately below the speaker including the back wall dr de mint explains this in his declaration on a five zero four again without contradiction from t h x expert he says that the or the pressure adjustment section is called forming the outer shape of and lining the side walls of the sound up forty including the back wall so the the evidence is clear that the sound and there's nothing going against it on the other side of the th attorney argument there is no reference to anything that she objects as expert said on this point because he didn't say anything on this one and then the second point is there's no suggestion that there's anything all that difficult about this particularly for someone with a master's degree