board misapplied the law obviousness failing to recognise that identification of a previously unseen problem and providing a solution to that problem is not obvious and inventive by finding no value to the inventors discovery of the problem and mechanically concluding that since some elements of the solution were in various prior art documents the claims must be obvious the board committed legal error dony hook the inventor recognized and solved the problem no one else saw while the  the specific priority issue and they did not see the solution in that priority either in fact when mr her proposed to modify t r itself the key prior art reference here to create the claimed pension the engineers reacted with skepticism they asked him for further explanations they could not understand why the change he proposed was needed even after his nd submission and or counsel this is judge laurie your your a of which are legal issues concerning the obviousness analysis that the board performed and the board here st of all there's a lack of any identified motivation to combine the specific elements committed are ones that the director really offers no defense of on appeal so while i absolutely agree for certain elements of this the review is deferential were the board made an error and the director's not defending it substantial evidence review is certainly not security capabilities to the new network note the setting of the patent is another two network problem and one of skill looking at t r would look to the two network solutions there's no evidence that anyone  together doesn't the possibility of the problem really emerge from when you see what was already on the table you could have mentioned that the possibility of the problem might drown him but there isn't any specific identification of the problem in till mr hose st submission to the engineers of three g p in october of two thousand and seven he identified the specific problem and proposed a solution to address it and there  understand his identification of the problem they asked for a further explanation when he gave that further explanation they then question whether his solution having the device and the capabilities was really needed at all and they continued to cling to the idea that it occasions asking for more information or more explanation i didn't see it as a sort of all this isn't something we need or anything like that they seem to be saying give us a little more information so we can understand it better so your honor there are two key responses from the engineers the st one which came from the october two thousand and seven meeting was articulated as a request for more rationale now his his st submission and it's in the middle of the page there and you'll see it's a reference to a proposal that ended over thirty nine and also over four and then you'll see dhoni whose name there now the discussion here is about modifying an editor's note but the key language here is descendants modify the note to clarify that a security capabilities are needed in step three then possibly they are not needed in line and it's very helpful to look at what they're talking about because if you look at his proposal which was before them proposed solution that the device send the capabilities step three is a step where there is a message from the old network node to the new network node so when we read their comments here and appendix three thousand and eight their position is the negative force that that you attribute to that's just my initial reaction well certainly i don't think they're overwhelmingly negative but what's clear is he has presented to the engineers the in this t r reference mr hurd has proposed especially but the impulse to titian proposed here's a solution to solve this problem and instead of adopting it well of course that's the obvious way of doing it they resisted that they asked for explanation and even here i understand they not outright rejecting it but they're questioning why it's needed and he responded to that further in the final submission which was accepted and you can see that appendix two thousand eight hundred and sixty one he specifically addresses this issue with why this editor's note is finally accepted it on the rd try so certainly this is not the some sort of violent rejection but this is the kind of evidence that is excuse to the purpose of this evidence is to prevent hindsight and concluding well this must have follow the exact obviousness rationale that's dictated by the references so if you start with and it's important as the board repeatedly said you start with twenty three dollars for a while and not as a reference that teaches the exact transition that the claims teach they teach the idle mode mobility between an older network and a new network so three g to l t e networks you're already starting with knowing the transition and the twenty three for a one reference says look when you're connecting to this new network you need to establish security but twenty three for one is a technical document about network architecture so it doesn't go further into how do you do the security you know she asian and so as the board found that's why you need to establish security and then it goes on and details all the security algorithms selection and key variation determinations as the claim says so they're not disputing any of the parts of the claim about how you and just choosing one out of only two finite number of options is just a simple substitution of one element for another so that alone gives you support substantial evidence support for the obviousness to turn nation here disputing that on appeal so they're not continuing to assert that the board's findings with respect to unexpected results was incorrect and with respect to the analysis of the but there's no argument with respect to unexpected results in their appeal brief and with respect to the skepticism evidence as the board found and again i think it's important to note that the board did not find no evidence  not conceding a lack of nexus and we have defended it and we do believe the board's decision based on the documents themselves without any declaration testimony that nexus decision is fully defendable and supported by substantial evidence but the board went further at appendix sixty four dollars and said even if you presume nexus all there is is weak evidence of skepticism because all there was was a request for more information and it's not a request for information because we don't understand it or because we don't need it that because it's completely absent from the documents and filled in only respectfully by attorney argument here because again there is no declaration testimony about why it was rejected nothing from any members of the working group and nothing from mr haye himself so all you have is a three quest for more information and there's many reasons that you could request for more information and facts because they're developing a proposal it could be we just want you to document the rationale for this so we have it in our records it doesn't mean that we are rejecting your proposal and so with respect to that  t the comment about more rationale is needed the board's decision with respect to that statement that it's only weak evidence at best is supported by substantial evidence with respect to the december two thousand and seven statement about seven proposal and you can see on that page the editor's note is put in by himself it says under step three it is for further study whether the security capability should be carried in step three so really this document step one is having the phones on the step three is questioning whether or not you should have it and in that step which would be referring to the old network sending it mr his own proposal reflects what one of would have seen from these documents that there's just two options and all redoing is abated and which one of these two known viable predictable options we should choose the fact that one may have been better does not mean that the other one would not have been obvious so choosing the phone does not need to be more relevant or more analogous that's a language that while we use and it's that having the old networks and what have been the best fit the prior art does not option chosen as obvious does not need to be more relevant and you also don't need to show that it would have been selected over other treatment so really at bottom you have two references both was just close just to run two options and all the board did was find it was obvious to choose one but getting back to the december two thousand and seven skepticism that they've pointed to so you have mr head himself putting in this editor's note about whether the security capability should be in step three and so that's not really surprising when you look at appendix three thousand and eight which is what counsel appointed to that they're modifying this editor's note just to reflect these two options that mr hay put in there they didn't edit the actual proposal they didn't cross off step one having the phone send it and so really when you have two viable options the debate about which one to use as a board found is really not skepticism in fact it really just shows how obvious these two were  scuse me again i'd say that the board it's important to remember that the board did not say no evidence of skepticism they said that at best it's weak evidence and that they went on out of pentax sixty seven and sixty eight looking at the totality of evidence seeing how strong the obviousness case was from these two technical references and the combination of them and considering the the weak evidence of skepticism and finding as a whole that the invention would have been obvious very briefly i just like to address the emphasis counsel has placed on the  v x one decision another decision and aco brands these fellows when an ordinary artist and left with just two choices each one of those two design choices is an obvious combination and that's consistent with chaos are with the finite number of identified and predictable solutions one of ordinary skills we are has good reason to to pursue both of those but the board also went on and i'll point you to appendix forty one to forty two where they talk about the e and the phone is already sending its network cable bill and so when you know that you need security because the reference tells you to do that you know that you need the security capabilities to establish that security because again the reference tells you that then it would have been obvious if the phone is already sending its network capabilities to also send its security capabilities but then the board went further and they said that this makes sense to have to follow the phone and to follow the initial attachment process and thirty three thousand eight hundred and twenty one which is the part where the phone sounds that because there was a symmetry already established in two thousand and three for a one in twenty three for a one in both initial attachment and idle mode between these two different networks the phones and security capabilities in contrast in twenty three for a one when you had an l t e to l t e transition so you're within the same network the phone did not send so the board found it made sense when you were looking outside twenty three dollars for a one hundred and twenty three dollars for one would also follow initial attachment process because it already did that within their own reference and then when you look at thirty three  twenty one it says it seems most natural to assume the phone would send its security capabilities so that really statement alone if you're one of ordinary skill in the art you're trying to figure out who is going to send the security capabilities and you look at a reference and says it seems most natural to assume that the phone sends it and i already have a symmetry established with an initial attachment and idle mode in the reference that i'm starting with that together is we would say substantial evidence that this is just one of two options that is a framing of this problem that is absolutely infected with hindsight it is not correct to frame this as a simple choice between one of two options the t r reference has a uniform solution for two network scenarios the old network always sends the security capabilities to the new network there was no recognition anywhere then two networks and areas having the device send security capabilities was an option recognizing that that was a possibility with the st step in mr his contribution so once you simply decide that there are two options you can frame it that way but that is not how those of skills ought and that is not how the prior art suggests that there's also of possibilities it's not simply two options the old network node could provide some security capabilities the old network node could query the device and acquire more information and then send that on the suggestion this is  one of two options scenario is simply wrong and not supported by the record nd i want to address the question about whether there is a nexus error there is no factual dispute about the content of mr post proposals he and thirty five dollars the director acknowledges that the board made that finding it makes no effort to defend it so perhaps they don't come out and concede that there's a nexus there but they haven't defended this and if you look at the steps of mr her submission and compare it to claim  the invention are all there and further if it were true that as the board found this was simply a description of an existing procedure leave that document whatever it is would have been the strong evidence of skepticism or perhaps less strong than all of the boards and also as was infected by this problem that they failed to see that he had proposed the invention has itself i'd also like to address the question about unexpected result hood explained the rationale for his invention which which describes the benefits that you obtain from using his approach avoiding unnecessary round trips back and forth is how it's described that was not appreciated by the three g p p engineers he was the only one who saw the need for the solution the fact that it would provide a benefit so we haven't articulated in our brief as an issue for unexpected results but that's clearly the issue he laid this before them and they failed to recognize it until his rd submission when they when they finally accepted it i'd also like to briefly touch on the suggestion that the ts itself somehow motivates selection of initials hashim and these attempted analogies between initial attachment and i don't know the mobility are simply not found in these references that language that counsel reference the language that seems most natural that the u s sends its capabilities to an enemy that is a statement in t r and appendix seven that is about initial attachment it has nothing to do with two network transitions in initial attachment the context of the statement only the device could communicate with the network no because there is no old network node to obtain security capabilities from so