asking this court to affirm a board decision that's based on a doctrine that the board had since then didn't enter a line with the government itself on the last page of its brief calls an implicit finding a finding that or did not make and could not have made on this record and we're talking ever made nor could it have made because it is conceded by adidas invites expert before the board and on page forty one of its own brief to this court that there was a long felt need that persisted through to the findings and patent application at the very least that's something the board should have considered and did not and that's a ground in itself or remit i'd also start with another starting sample of error which is clean for you not that is the claim that requires aperture is formed by omitting stitches and position for receiving laces the government itself doesn't even address that limitation and no wonder because neither of the cited prior art references discloses it in any way schuessler undisputedly doesn't act there are no places and aspirin ishida adidas his own expert conceded a deposition that he couldn't identify any apertures for receiving leases in that reference now the board site was the standard you had to meet with some regulation where you had the burden to establish that claims forty eight and forty nine were patently distinct requirement that the board did not deny the motion to amend on that basis it's very clear about that the basis on which you didn't deny the motion was because it found that we had the burden to prove patentability over an issue then choose or that's an error in itself we'll get to that but even on its own merits there is no way to find that claim forty nine is unpatentable over negative shock ignited because they felt like you did not meet the standard for reasonable substitute number of playing with where you were trying to replace one claim with two pac claims they did discuss that such chance but there is a statement in the decision that they do not deny the motion to amend on that basis which is why the p t o does not defend that argument they don't but then they prove them or together i guess with the independent right they group them together and that you think can probably get the independent claim was not involved but they disregarded the claim that distinguished claim forty nine which is these apertures that are formed by omitting stitches which is not disclosed in the sheet or referenced writing that i am just trying to lose more administrative trying to understand what really what what they did to ground here i come to the ground my understanding was that they didn't quote unquote put the cart before the horse by concluding that the coins were impassable and because they were on patent they would be grouped together right i thought it was more because they felt like your side did not meet the standard the regulatory standard for that these two claims are reasonable substitute number of claims for the cancel claim nineteen or whatever it was you know your honor that is not the basis for the board's decision the basis for the court's decisions on page twenty five which is also page twenty five of decision where they have a paragraph in the center of the page that talks about claims forty and forty nine and then they're talking about the patentability over the shida and they say with respect to the additional limitations of claim forty nine and she describes forming knitting now of course leasing areas says nothing about the apertures in fact there's an area where laces will eventually go doesn't mean that the holes where the latest go are formed by omitting stitches and in fact as our expert mr thompson testified without came up with that idea that to consciously design holes in a knitted material based on omitting stitches while you're knitting it that's that's not an argument we've made but we don't need to make that argument your honor because that's not the basis on which the board this claimant didn't address this at all it's believed that nike's own patents have decided against it for this teaching this is a combination act that's certainly true but then there needs to be more than simply i didn't even if the board had identified this limitation in the prior which it didn't there would have to be some motivation to combine the reference that disclose whatever it is this omitting stitches limitation and there isn't any of that yes or at the very least there would need to be a real man for the board to articulate some reasoning on which it could find that this limitation had been disclosed instead all it has is a faulty citation to the sheet which clearly does not disclose this limitation and then and and not resisting the institutional grounds for claim nineteen do you agree with the other side that's in effect you've conceded i'm happy apertures limitation is is part of the prior are toe area for increasing air exchange now there are no laces in the toe area other silly no suggestion that those apertures were formed by omitting stitches the way the board tried to make the leap of logic from what she did discloses to what we claim in the proposed amended claim is it points to the fact that nike uses the omission of stitches to improve air permeability as a general matter it then says that anyone who wanted to improve air permeability must necessarily have done it the way nike said to do it in it report so at the very least there needs to be some articulation of a basis that for that element in the prior art which is we're not all that they need to worry about these apertures alone which is conceded to be in the prior because apertures is based on omitting stitches is not something that needs to be considered because that's more of a product by process time is a limitation and how the product is made by a particular process is not relevant to an ability that gesture is not an argument that was made below as to claim forty nine if it had been made below i think the board's answer to that would have been that answer it gave on the other product by process argument that adidas made with respect to flatten its structure which is ignored flat edges which is that imparts structural differences when you flatten it an edge or when you omit a stage to create an aperture as opposed to punching out the material when the yarns get frayed and they need to be further sinister whether by searing through heating or some additional stitching or some kind of cover over them otherwise they'll unravel what made that finding specifically as to flatten it edges we think it would have made the very same finding the same analysis as to punching out lacing holes but i never had a chance to answer that question because it wasn't make no finding of that nature was it was requested of the war and it certainly wasn't made an vacating remember that particular denial yes you're arguing we have to and you know vacate the other american attraction correct your honor i mean the the p t o has abrogated or at the very least radically reinterpreted the anything at all as far as i can tell it's simply an assertion that they don't want it to apply amended claims if they thought that was consistent with the statute they said maybe issues and or regulation or something that said that they haven't done that but quite frankly we think such a regulation would be void anyway because it's inconsistent with the statute we think the thing to have done was to recognize that the burden of proof as to the issue that congress has spoken to the proposition of on patentability is on the petition there are plenty of other issues where the patent owner can be given the burden such as showing that you've got a reasonable to the statute and the statutes clear proxy can do not address that language for whatever reason it was raised in that case so this panel is perfectly able to and should enforce the language of the statute as it is written now i do want to make sure that i get through all the points in the last one that's remaining is that there's simply no substantial evidence of a motion that motivation to combine here and this applies to all of the mines at issue proposed amended claims what you have here are two references you have machine and you have schuessler they approach the  issue in completely different ways and she to involve a web of fabric you put the patterns as close together as you can you cut them out and you do your best to minimize the waste by making sure that the waste material is lighter and cheaper was it not in the prior art when you're our prior art the question is what basis is there for considering that a skilled artisan would have taken the cutting of a pattern out of a web in the sheet and say you know what i'm going to get rid of the pattern i'm going to get rid of the cutting i'm going to get rid of the web and i'm going to do this all based on a reference that dates back hundred thirty s there is no evidence of a motivation to do that and at the very least it would have to have been considered in light of the fact that there was an established acknowledged admitted need in this case for a method to reduce cutting wast as would be a long felt need if the board had made a finding on it but it didn't at the very least it should have considered whether there was a motivation in light of this age old prior art particularly given the established long felt need for this invention yet nobody came up with it this is leo pharmaceuticals  are just taking the last issue on motivation to combine i think nike's fundamental argument is that the motivation to combine was lacking because of the way they view the references this issue they raised in their our first thought just on the motivation to combine nike's argument doesn't address the actual rationale the board used to come for which there are substantial evidence we've come back to that with respect to the leo pharmaceuticals issue and the secondary considerations issue but i like to point out is that page forty one of our reply brief of our response brief what we said was yes there was a long felt need to reduce waste when you're making shoes when everybody used knows there's always been that need the very next sentence is the shia solve that need and so to choose her as your honour's posited to nike's council the art knew that you could put the structures next to each other expert dr frederick explained the reason me what nike's fundamental long felt need was all that somebody didn't take the shoes or reference deal with the home swatch textile manufacturing to move it into making shoes and our expert explain that i say wait a minute when you're doing that there are tradeoffs because the complexity of the manufacturing process associated with shoes so it's not yes you could you could as a skilled person could easily adopt the shoes or technique to th technique in fact there is plenty of motivation to do that but they have to consider some other process steps and costs and thus rebutted their showing of secondary consideration which the board never made a finding out well your honor on that point what i would error ok and what we contend is it when you look at what the board did and this instance if you read the board's decision you can see that they did in fact implicitly consider the second regarding the reduction of waste are placing layouts and joining positions so remember the long thought need here is to reduce waste in the board says wait a minute initio which is the part does that and the p including an expressed consideration a secondary consideration well i certainly agree that the board must consider secondary considerations when i offer i mean that's clear in this court's control in case law the board did consider that that was fully in the record i don't believe that under this court's case law the board necessarily has to discuss the when there's other findings of the board makes that indicate it considered it and decided there was no long felt need and here i would urge that any error is harmless in light of those findings by the board there is there simply was no long felt need here sufficient to justify remand i think we have your argument on secondary consideration that i think i asked about the a pharmaceutical you haven't response to that no your honor i don't be on the what i mentioned on secondary consideration ok what about the claim for the not so claim forty nine i think your honor is correct that what nike independently patently to think they're not obvious over one another in light of the prior art the analysis the war goes through where they talk about the shia and the claims is to decide whether or not they're justified in offering to for  know i don't know whether the people that go yeah i mean i don't know whether the i will say i don't remember what i don't freeze but from the way they discussed it in the brief it sounded like it was a two way analysis because they looked at both limitations i looked at what the other art likeness shooter was teaching on that you think that happened here i'm sorry you think that two way analysis happened here well they certainly yes from the way they discuss both of the both of the claim elements and talk about how the claim elements were present both in the admitted claims that were cancelled sorry the claims that were cancelled and therefore were deemed to be in the prior art machine and the elements of times forty eight with you seem for the moment that i've read initiated and then i and i don't see an issue to talking about needing an aperture let alone needing an aperture with a that's based on omitting stitches in a position there in figure two there are no lace holes at the top where you would sort of normally expect places ok and what we pointed out of p t o was but when you look at the towing area there is a net like struc talks about being able to use that and that net like structure of me making that like structure creates apertures because of the holes between the interstices of of the web that creates the apertures and we point out that the skilled person would look the language in one key specification what the board was doing there was comparing the character of the disclosure that ninety cited in support of playing for nine which had to do with that parliament dropping some stitches building to suggest when you can do that in the waiting area for holes and if you compare the character of that disclosure which nike said was written descriptions were claimed forty nine with the character of the disclosure in this you know where you can also  perhaps but that's but but that sort of exactly my point nike's disclosure talks about loose weaving for permian building they point to that to support a claim to drop stitching point here is that at no point does nike say it was any kind of abuse of discretion for the board to say we're going to treat these claims or dinner where in nike's patton's to talk about you create but but that's the one he's nike's patton also talks about creating permian building which is what i was saying the board was pointing to that and also pointing to the corresponding disclosure and machine to both of those permian build the disclosure skilled person will understand are going to create apertures that can hold the lacing that and that's why that's why the board was pointing to that part of nike's disclosure which was also some early in the  disclosure if i could going back to just the final issue that they raised with respect to the motion to amend when i read their submission with respect to master image if you look at the end of master major media sites the the microsoft case the court recently disclosed you know the thrust of nike's opening brief on the motion to amend issue and their reply brief was really a challenge on the burden of proof that the burden of proof should not have been placed on nike and should have instead been placed on c d s i think the microsoft case is squarely resolve that issue and i had understood that from microsoft a footnote for the microsoft case certainly reserved for future decisions the issue of the idle freeze i don't free decision that said you have to also look at the prior art known to the patent are not made of record and i recognize that the p t o has changed that the only thing i would point to your honor's is that if you read the piece have decision on this point when you look at the p tab decision there are a number of indicators that suggest that the key was understanding nike to say to the board hey we know of some prior art but these claims are different from that prior art and the board was wanting to know what is this at a thirty five the p temp says they talk about how nike had failed to identify the other prior art and that is that statement made in the context if you look at a four in the p tabs decision nike had disclosed to the patent office that there were a number of related for scenes involving other patents related to this one and pending application so the board's looking at nike's disclosure and thinking well you guys know about some other part you haven't made it of record we need you to make this of record so the error that would exist under under nike's posture here if you accept the proposition that microsoft as resolve the burden of proof issue is that nike has not had an opportunity to disclose to the board that other prior art and you would be remaining for that we come full circle back to the general doctrine which says harmless error plots if in fact this panel sustains the board's decision on the fundamental question of obvious there is no reason to remand back to allow nike to make the call that type of disclosure under the master master image decision so for those reasons we would respectfully ask the court to affirm but if i prophetically we felt like we needed to well i certainly recognize that if the court were to remand on the secretary considerations issue that would allow nike the opportunity to really address the motion to mint issue under the new master image standard right i mean they they could make the disclosure that the board made if you read the board decision it seems like the board is thinking well you guys know it's a priority disclose it and they had at that point i hadn't made any of those disclosures and i certainly agree that that would be part of the process and at that point they could make the you want to start with master mitch three day sure i read that order as well as the federal register notice to me and saying that the p t o is telling all of us that math image three d serves is essentially a translation document as to what is the real meaning of the i don't mean order and so it's not the p t o stepping away and renouncing i you know the board denied here do not make use motion or men under what was at the time a fair reading of vital free but now master image is explained that the reference to prior art not the record known to the patent owner is limited to seize me the prior that would be disclosed by the patent owner under the duty of candor so i think we would acknowledge that given this clarification the board here may be right i don't freak too aggressively in this decision candor you know not now with the added clarification of that master image if it becomes clear that the patent owner has no really affirmative duty to perform or search or you know submit prior art beyond what is required by the do you can't say so as i understood it there were two independent grounds for denying the motion to them that one was would we vacate or would you be fined if we reversed the other grounds for denying the motion to them that given what you just told us about your understanding of master image through the i believe the master image issue is appropriate and letting the board kind of reapply apply the master image decision to nike's motion i think that would be the most appropriate result making a very big deal about their secondary considerations argument given the ports vision but if you look at nike's original motion to amend in to vote single paragraph to this at the end and the only evidence they proxy sure mr fleming was saying that this panel as an open lane considering whether the statute commands that the burden of proof for little ambiguous because it seems like there may be some art out there that knows about but it's not disclosing it but i wouldn't go so far as to say that nike is violating its duty candor i think but i think it's it's implied that times where the patent board is relying on extrinsic evidence and then when it does then therefore when we are reviewing the patent board's claim construction we're supposed to somehow divine which components of that claim construction rested on extrinsic evidence and to the extent it does then we're supposed to give some extra deference beyond the broadest reasonable construction analysis that we do i believe that this court has applied to have a standard to appeals from board cases so i think that if the board is relying on extrinsic evidence and it's entitle to the to the a much deference you give the board interpretations of the really to your things but i but i agree that i mean the board up this court has applied to have  statutory language in proxy conduct since it was raised it's open to this court to consider that in this case and we think it should and i didn't hear any argument on the other side that section three six sixteen e can be interpreted in any way other than the way we were advancing just to back up i mean i think if this court were to affirm a decision like this it would send a somewhat remarkable message to the board it would suggest that the board can completely ignore properly presented evidence of secondary considerations and it would say that no matter what  you heard a lot of mr stock was arguments about what she did does or doesn't disclose whether there was or was not a long felt need whether it was or was not solved by schuessler these are issues on which the board has not made a finding and it would not be appropriate for this committee doesn't change this when there is a fact finding that is needed by the board it is not for this court to substitute its own judgment rather it's to read and to the board and allow them to exercise their congressional mandate to make the factual findings that are needed and on the point kava all of the alternative arguments that adidas is trying to put in front of this court require some kind of fact finding or require the overturning of fact finding that the board has already made on the issues that it result in one keeps favor for instance with respect to the  construction and the anticipation points the idea that there is a structural difference between omitting stitches or flatten it edges and punching out holes or cutting the edges so that the yarns get frayed that is a finding the board makes on a twenty one i believe y there is a significant age gap in the references in this case and the idea that you can simply combine these references without any evidence and without any explanation at least as to why this reference sat around for sixty years and nobody thought of doing it until this way until nike did it this way is certainly something the board at the very least needs to consider the admission that an idea worth of free was read too aggressively in this case is welcome we certainly agree that's not an alternative basis for permanent anymore