court would like to commend counsel for making extra efforts to be here on this difficult day it's obviously reflects your professional responsibility and appreciation for the court schedule and we do appreciate thirteen sixty one middling good morning or honest when it was a blank that i represent to you i present all the appellate given that i have eight minutes and want to get straight to the point i think that the main question the overarching question here is whether the multi directional l need the lighting and the apparatus with a camera lens in the four two three pattern is an invention worthy of a patent or is it obvious based on prior art offices here however i would submit that it could well be relied on moriah look could be relied on in rejecting claims sixty one to seventy two i think it should have been relied on for the more more pertinent question is why wasn't sankyo relied on in connection with the first act your honor i think it should have been i don't think that there's any distinction i think if you look at the prior art patents with respect to the cmos design you disclose as i take it a printing press with a nation system correct with the i believe it's a a standard illumination system it's certainly not and we need elimination system and it is it is and so i think it's very important to note that this entire thing is an apparatus that is not a printing press it is an add on it is sold as a separate device that has a camera a computer an illumination system and that's what it is i think if you look at the other the court has yet remain and the entire case for consideration of so ennio and we believe that right in that the opinion that the board wrote with respect to claim sixty one to seventy two the board got it right that's what i was just saying that yes it was which yes exactly is the second issue which i thought you were going to focus on more than signs which is rush and rush the board seems to have found to be analogous art in respect to sixty one through seventy two but said nothing about ross as analogous chart with respects to one three sixty i think that's an error and is there any explanation for that as far as you can tell i can't see the explanation i think it is an error and i think that what's happened strangely in the first sixty claims is that the board erred by somehow elevating the term printing press into a dispositive clane light from ross or not for yama doesn't teach printing press it does not the printing press but the printing press is not the apparatus disclose it is an application and the apparatus disclosed and it's very specific in the claims and in the in the preamble to the classic did you or anybody raise sannio with respect to claims one or sixty i believe but it's i believe that it was raised within the examiners report i believe that anyone is there anywhere in the record you can point me to did i see at the top of my head i cannot but sunny oh clearly was part of the record and it was it was the examiner referred to  it but did he refer to it with regard to claims went through sixty or just sixty one through seventy two i can't recall your honor the examiner was a woman just for the record and i believe that the examiner was well aware of that but even even all are essentially the equivalent of saying you know what your position i take it is that even if you are incorrect with respect to your submission that a printing press is not a limitation of the claims even then elimination device that rush displays i was born to correct that is the point and go ahead but even more to the point there is nothing in the apparatus and in the claims that describe the apparatus read the section of your brief to the to the board in which you claim that you raised this issue and i frankly do not find that to be at best it was a very start of allusion to this argument it certainly wasn't that was made as directly as you are making and no it was not made in our contention is that it was made sufficient to give notice that and then you've got the next limitation configured to record images printed on the substrate obviously referring to the substrate of the printing print how can it not be a limitation for claims the reason it's not a limitation of the claims is a first of all let's be clear even in the in the introductory section the regarding the invention of substrate is almost always a piece of paper no different from the paper that is fed through and more yama really no different from the bills that get sent through and wrong it's not structural to the visual inspection system and even the cases where that mr low pitney bowes as well as i believe polly america in both cases where there's a preamble that is intended not to be acclaimed and found to be a limited a limitation on the claim in both instances the court decided that you could not interpret and understand the actual claims without reference to the specific preamble that in fact those claims were modified by the preamble and i think in this case you will see that there is nothing about a printing press that modifies the device that's disclosed here well that may be but i'm not sure you answered judge for each question which was not whether in the general law of preambles and whether they're limiting or not this falls on one side of a line or another but rather structurally this claim recites substrate of a printing press and then the substrate obviously referring back to the substrate of the printing press or at least so it would seem why is that the correct reading of the claims such that we should leave read this claim as if one of the lim expressed limitations was in a printing press it's your honor and even if the court were to read it that way i don't think it's dispositive of this case ok i understand the alternative argument but but my question is if you can get back to judge larry's question why doesn't the combination of the substrate of a printing press and the substrate settle the deal with respect to the whether the printing press is a limitation of the plan it may settle the deal so to speak however even if a limitation it is printing presses a thousand feet per second one point seven microseconds to take a picture the ross referenced relates to an a t m where you're feeding dollars in and you're illuminating not all of once but you're doing this kind of reds and greens kind of along the length of the bill which generates this funky signature that they're using to make sure it's not a counterfeit those are the references you know or you rely on this notion that the printing press has this gigantic thing which moves paper to very rapid race that's not all printing presses i used to work in maintenance of printing presses and and this is not years ago but they some of them are actually quite small so the world of printing press is not defined entirely by something that is as remote from let's say the laser printer or the of mary or even the paper moving in the in the but such a printing press i don't know what such a printing press would never be it would not render it obvious so if you're looking at prior art for that kind of a printing press you would look that way if you're looking at prior art where you would want something more such as what the specific system in the ad you never look at rocks that's the point it's not the scope of the claim it's the prior art that wouldn't be combined because what prior art would show would be not marianna obviously it's not a printing press but even if you had a press that were slow there's for certain because i didn't check that last night but what i do know for certain is it may or may not i just don't know and i don't want to say something that's incorrect however what is certain is that the examiner did not cite for the board that the  dealing with claims one of the sixty and sixty one with seventy two i would agree that there could be but again the board actually didn't examine that because that argument was not made to the board nor was any argument as i said for not round we're going to ignore that well the limitations aren't the same pretty close they're close but i thought your brief more or less explicitly disagreed certainly with disagrees with the solicitor with respect to the issue with the board or at least with the solicitor in that regard correct that is correct and in fact we would say that in connection with plame sixty one the seventy two where sign you actually was put in play and this goes back to  court has not been asked in the briefing for sure to remand or argued inconsistency or whatnot so i'm being presented with things that actually were presented to the court but in connection with ross there are several problems in a printing press it scans over time not image and figure out if it matches those alternating hairs it's got reds and greens then blues not take an image all at once and frankly if you're looking at one of these printing presses were you're trying to make some type of improvement you wouldn't look at ross and beyond that even if you did look at ross you wouldn't think it suitable here's the thing that i find most interesting the best thing that they could find in the prior art to try and validate these claims was in an a t m machine for counterfeit detection it was not even a camera you know somebody might take a picture like this it's not a camera the contents of a printing press it's not a camera in the context of industrial machines it's not a campaign camera any time this configuration where you're taking a complete image is not found anywhere in the prior art why is that is because it wasn't his to do and so it was done in this particular match is the first instance where we've seen as actual system where you have a rain around the lens taking an image so if one asks what were the errors the board made their questions substantial evidence one is look at this and there is not substantial evidence to show that one of the burden of proof is on the people attacking the pac it's not on the path known or the only evidence that was submitted is the seymour declaration and you read the board opinion and you think that the other side some know the c word declaration is from the past owner saying these are the advantages the invention gives and the board comes in and says those are the reasons you would do it in the prior art at epstein's there's not a teaching or a suggestion in the prior art that any of these things would be useful so what the court says is first of all it's a high level of skill where that comes from i don't know you won't find it in the briefing that i did look for last night and they say because it's a high level of skill what was put in from the board was a bachelor's degree and some experience which i personally don't regard as a high level i don't mean to but it's not like ph c's and many many years of experience so the bird says that and then they say it would be obvious to increase light no support for that there for multiple light sources no support for that therefore multi wreck tional no support for that prior art there or a certain configuration no support for that therefore circular why not a big bank of lights if you want to increase lights rather than a circular configuration only support for a circular is in connection with that is for the secondary factors the board says no nexus was shown again or look at seymour to take the advantages of the invention and call it a motivation that ignored the rest of seymour rates that one would look at ross argument comes in and says ross applies which is exactly as far as i can see what the p t o what the board found with respect to claim sixty one to check to some lines and there are fundamental inconsistency in the board's problem what the board reference i understand the court's question and i think that part of it relates back to why sandy was not relied upon as it relates to claim one and what's the answer when you look at the prosecution history you see here that this is an inner party's reexamined and in this sort of resentment ations the examiner relies heavily upon proposed rejection and here the examiner relied upon my pc's proposed rejection and the reexamination understanding aspect if it would be different if they hadn't raised at all anywhere but they at least the board considered tainio with regards to sixty one seventy two why was incumbent on the examiner the board to look at and say we need to look at this reference in combination with the other ones as well i think that it was just overlooked and what happened is that what do we do with that i don't understand what to do with overlooked by the look at it in reference to the other claims because they're very similar i mean i think you agree they're very similar why did it take them or look at it i think again it gets back to the type of proceeding that we're dealing with here with the examiner was lying upon up only with respect to claims sixty one q r p feel the not a lot of explanations of why we're here but the question is we have to decide what to do it and i completely agree with the era for the board not to look at any with regards to claims forty three sixty one think that it was simply an oversight and none of the parties picked up on it not to want to see and not the examiner what do you mean by oversight you mean oversight in terms of we can't look at it oversight in terms of it's probably harmless or oversight that it isn't there or oversight in the sense that q i p c did not make the rejection and so the examiner did not identify that as a at least in the proceedings i don't have anything along those lines other than a simple the waiver documents they have a number of opportunities to propose a rejection based upon say why shouldn't we then reverse on the first sixty claims based on that analysis i would agree with the core you would agree with the court that that analysis is correct and that that analysis would drive us to reverse the support why is that indefinite really this whole thing about a negative limitation but i don't understand why saying something black support is a negative when the taisha it seems like a limitation right what is that the issue and claim eighteen is whether or not there is right description support for our theory that supported at the point of illumination ok i get that it seems like it's a written description but then the board say that it was rejecting it for indefiniteness because it was a negative limitation yes but i think that what they were really getting at is the fact that there's no written description ok thank you mr johnson i guess we'll hear from mr has three minutes i will be very brief we agree with mr johnson entirely we think that the ruling of the board for claims one through sixty should be reversed and to make  consistent with what has been ruled on by the board for claims sixty one to seventy two i think property is analogous art we argued that throughout and we argue that you are today one further point on that issue and that is that we board should have held for one hundred sixty what it held through one through seventy two the only other thing i would point out is that we to believe that this was an oversight with a harmful oversight by the board s yes although there was i would like to address some some relate to both and so i'd like to address first crisis comment first of all the inconsistency the board did not find ross is not analogous the board made no climbing on rocks whatsoever it's the board neither shows a printing press which is unremarkable because an a t m machine which is watched is not a printing press and under the procedures that we've adopted you need to actually find all of the elements in a limitation are obvious  in the prior art or obvious and what the court said was there's no printing press and was put before us it wasn't a question of it's not analogous here and it is analogous there or didn't do that so there's no inconsistency said true with sixty one three seventy two as well sitting there and they said the proposed rejection which is what we're deciding is what was proposed marianna and raunch there is no printing press and the whole idea behind but i'm asking about sixty one through seventy two where they  if they found that process analogous and teaches a printing press there than in for consistency sake they should for the first one we could have do with sixty one through seventy two what would i do maybe i'm sorry i'm eating up your time maybe i'm reading this incorrectly but i thought the reason you do is that fania disclosed the printing press and they just got to ross for the l e d light that is what they did for sixty one to seventy two what you don't have is a proper ground projection whether ross is analogous or not is irrelevant to whether either marianna or ross closes the printing presses of what the board found then the question is should the board have gone beyond the arguments presented to it and the board has no obligation to go beyond the arguments presented to it which was not or any other printing press for claims one sixty and if they did have an obligation what should they have done third or coupled with that is that the petitioner have an obligation to put it to the board or did actually even the appellant have an obligation to request that of this board to go beyond the grounds of rejection these arguments were made and frankly your honor if those arguments had been made the arguments are made by the owner those with all shift to and we would have a different appeal that's why article three courts come in they decide the issues that are presented to them because if the court kind of goes into all these other things that were actually requested or argued in the briefing or whatnot you would have had a different appeal not just from their put it there it finds against you if you put up let me see if i could connect with them let me make sure i understand what your argument is with respect that a person's skill in the are concealed number one would have looked to that are naturally in the course of considering the invention and would have found in  reference that contains the printing press correct no actually you do because you know order to reject something based on the prior art you need it in the prior art that's why in the patent office you have to present the prior art and say here are two things and the reason the combine and by the way the board and that's going to be in the same field of endeavor necessarily it could be reasonably pertinent to the problem to be solved which is more like what they said which is elimination our response being if you look to the a t m you can't just take a piece of ross you need to take all across which is a completely different system which is why thank you