say you'll get result x even though there are the exact same steps doing the exact same thing so that you will get their result x y isn't that in here that situation would be in here but that's not the situation we have here so all you have is the claims before these were amended in the prior reexamination you have a week or ten in a cable and that's why those claims were amended they were amended to add the narrowing and specific limitation requiring a thirty percent reduction part of the steps that must be satisfied you do not satisfy this these claims simply by having it were kept in a cable it's only the subset of were consumed cables in which you achieve a thirty percent reduction in polling force and that was not recognized in the prior art there's no argument that it's recognized the only argument is that it was inherent the data clearly show that it was not inherent the board found as a factual matter that the data showed otherwise it showed that the point of force can actually used do not have to it's clear under area that the examples you first were you don't even have to have examples to have a search sufficient written description the examples here used by fifty percent which is really kind of the preferred method here but the claims are allowed to be broader than that there there certainly is no one twelve issue before the court nor could it even be raised here and that's something you can do on is your claim itself in your disclosure is that artist would know how to create a cable that meets that limitation by virtue of what's disclosed in the spec but yes ok so the problem for you is you've got this claim that discloses no particular lubricant and no particular quantity but just says reduction pulling force to thirty percent you're saying the skilled artisan would know how to do that well the problem is somers teaches looper kids in various quantities and even talks about  the numbers claimed one express the same as from the resistance to cable pulling force back i just i'm having trouble understanding how and who are claiming is more specific than summers disclosure and why as a result it doesn't read ri disclosure that would make it obvious or suggest to a person of skill in the art that you could do this there is no argument here sharon never made that argument so there are recognized that it would not be able to prove or i'm assuming they recognize they would not be able approve it that this was obvious to a person of skill in the art so instead they said well we're going to argue that it's inherent it naturally falls and the board was very clear and saying our finding is only based on basis for the rejection was that the combination of summers dow and you all seven were nine inherently teaches that limitation and where this arose was in a request for a rehearing south where presented the notion that your honor was just suggesting whether summers just discloses or suggest to a person of skill in the are based on the limited bit that it does teach sero came back and its response and very clearly said no they said that that argument is quote irrelevant and should be entirely disregarded because it does not address the basics basis for the rejection that's on a thirty one sarah said we are not arguing anything about the disclosure of summers rendering this woman taishan obvious from known to person skill in the art and the court came back on the next page and take yes that's right are finding it's only based on inherits the basis for the rejection was that the com combination of summers down  you all seven were nine inherently teaches the limitation is our new arguments we were raising the fact this summer session disclosed this the board said that's a new argument and it will quote will not be considered that is not the issue that's before th cannot rely on grounds that were not raised by sarah are addressed by the exam or the board it was always and heresy and this is not inherent the data shows that the board found that the test data doesn't necessarily discrete decrease certainly doesn't necessarily decrease by at least about thirty percent as claimed the data sometimes increases if you quote me a new car and it is  and you can't claim property of a whole process this is not a new property of an old process this is a new process the invention for for decades the evidence showed in the record that for decades folks had been using externally applied lubricants that were messy and time consuming expensive and south wires invention here changed the industry that's why we've been litigating for some nine years on these patents and it's terribly important and it's not just some process like summer for recognize it's not that there's even i said no argument that it's only whether it's inherent and there's just there can be no question that it's not inherent that data shows it's not inherent the board found supported by substantial eviden that it's it's a factual matter doesn't necessarily follow this court's cases or queers it's certainty it has to always be the case and here it's clearly not do you have a question of  as part of that secondary considerations evidence there's quite a lot of it here the board found praise in the industry that the evidence shows that this worked like a magic trick and that it was highly praised it's used it's found in every big box in the hall to the board also found that it was praised because it was already invented earlier in practice they do they use that theory to avoid applying the secondary consideration good morning and man please the court i'm paul stedman for the defendant and the tele i have nothing to add to the conversation it's already been had but i'm happy to answer questions of the panel if there are questions i would like you to the exam in a in a case like this with a series of process steps and then a claimed result of the process stops the examiner is allowed to find the same process steps in the prior art and use that to make a prima facia case of obvious cable but the specification of the three zero one patent specifically says the patent includes fiber optic cables so it's exactly the same process it's also exactly the same plastic sheet material if it's nylon which is  it's permissible plastic materials in the specification and it's exactly the same lubricant psylocke same oils which is the same thing that's you that's called out by dow isn't and i believe by summers is exactly the same thirty percent a claim limitation i do not believe it's proper limitation your honor it can't be under the i p x l case we're not allowed to argue that the claim is invalid under one twelve six but if you look at the claim and the and the way that it is structured the claim is a process for making cable that includes the steps of combining a preferred pre selected lubricant to provide a produce friction of friction in which the lubricant is of a type which migrates through said jacket to be available at the outermost exterior surface cama the finished electrical cable having the characteristic that an amount of force required to install blah blah blah is at least about a thirty percent reduction ok if this is a process claim then those steps must be processed steps if they are claiming the the nature of the resulting cable that is directed to the might differ from the prior are assuming sars and have the same spirit specificity it might but down has more specificity so if you if you look at the dow down was a commercially available master batch for exactly this expected including lubricity slip lower coefficient of friction and greater mar abrasion resistance that's an appendix one one two then it appendix one ninety four dow is hell has a very helpful table where it shows that the with the addition of additional weight percent psylocke say up to five percent the coefficient of friction drops by more than half so what they want to say is well you have to have the words pulling forces reduced but this shows a more  the patent itself can define a limitation at issue as a property that is necessarily present and if we look at the three zero one patent disclosure itself i believe this was referred to earlier in the argument that column si itself claims that the data recorded proved that cable construction having a surface lubricants reduced pulling forces and then a little farther down at line twenty it says it was found using this method specimens yielded approximately a fifty percent reduction in pulling force when compared to standard non lubricated cable specimens so the patent itself is saying if you add lubricant that sufficient to reduce the coefficient of friction you are going to get a reduction in pulling forces and the only number that specifies is a fifty percent reduction which just happens to be almost exactly the same teaching that you see in doubt going back to the earlier question with post you know about whether an if the written scripts in support of this selecting a lubricant in a quantity that would result in a four thirty percent pulling force if it's guilders that knew how to do that based on the patents disclosure those would be structural elements and then that pseudo result would really be defining the particular elements in the claim that would be appropriate wouldn't i agree with you i can imagine a claim like that that could be drafted but that's not this kind that is not this  and it doesn't necessarily follow that simply by introducing a polymer into the sheet you achieve this thirty percent reduction imitation and that's why the board's finding on inherent c is just flat wrong it has to be reversed as i mentioned in my opening argument therefore they're finding the reasoning was only based on intensity and it's just not inherent they found so now to be clear this thirty percent reduction limitation is a limitation in the prior ex par reexamined their original broader claims without the limitation were rolled in and out and then when this limitation was at the writ came out of reexamination and that's the ones we had here so it's absolutely a limitation and that counts and it must be satisfied either expressway or inherently in the prior there's no argument of an expressed disclosure suggestion the examiner never reached that the board never reached that the only argument was inherent  may include product characteristics the process can be performed in a way that it she's certain physical characteristics and that's not improper under ip excel or snores at issue presented here but the claim is very appropriately defining a particular method that's not just any method that necessarily achieves this result because it's not a result the board found as much it doesn't necessarily follow it's not certainly wasn't obvious to a person of skill in the art nor was or even an argument the only argument was inherent see the only finding by the examiner in the board was inherent this court must reverse because it's not inherent amount of time thank