third but because the parties were not informed of that they could not have anticipated any conflicts for that timeframe so we moved the argument to today the case is case number one five one six nine three intelligent may please the court we're here today to review the p taps decision that the five thirty seven claims were not obvious in light of  we think they are and we think that there is a legal matter now there's really no doubt that you and sharon cover all of the claim limitations within the claims of the five thirty seven patent a method of weight except for the identification of wage the precise area that the claims require now isn't part of the problem here is that you simply overstated and you have to provide a motivation it doesn't have to be the same motivation that the inventor had with respect to the claims that issue it can be any possible motivation coming from anywhere but that you chose a very specific motivation that had to do with accomplishing what jan accomplishes which is  s and having stated that that was the motivation aren't you bound by that statement to mean you didn't present anything other than that before the response to thinks we don't run away from the fact that we actually said that for the motivation we don't think the board is a threshold matter ruled on motivation what we're reading it to read is regional expectation of success motivation is a flexible expansive filter we think it's just of all the consolations of our in the world that may or may not cover claims you have to have some motivation to reach out to a couple and we played in our petition to more than a couple suggest why a person skilled we are looking at the s b s method which we understand is narrower than the claims in the five thirty seven at the s b s method would look beyond what was in georgian and would look to zap granny it talks about going to sources for chemical synthesis it's talks about groups that but you kept referring back to accomplishing chan's purposes for motivation so i think that there's two things i think motivated that's right this is clean this part of the problem is i mean with respect the parties seem to be talking all over each other and i admit that the board's use of it's language as it related to likelihood of success was because it's not improper at least confusing and misleading and the but the problem is we grant we actually review judgements not the particular words chosen so we have to look at the findings of fact and to see if those findings of fact support them for its conclusion that there was no showing of a motivation to come out of time only right said even if there is a motivation to come by there is no reason why expectation of us success here yeah i think the words of such a very fuzzy here to what it really seemed to be was their say because nobody would think that this would work there was no by which are two different things i think i agree with that i think it's a good point your honor and i think that the important way that if we're going to view it through motivation then the legal issue for alumina to respond to his teaching a way i mean that really is what  value to it right chan says that it would be that this method should have cleaving efficiency near hundred percent so we think of any of several doesn't give you that kind of cleaving efficiency then why would you put the two together so i think that's another legal error i don't think we reject that person skilled in the art will look at that grotty and say no i can't do that whether it's motivation that's not a legal error that's a factual error here so i don't think so i would say no for two reasons one i think that what the board did or what the luminous trying to justify stripping that poses of their ordinary creativity which is so i have to response to that one is factual but the walter case that we cite says that if the standard the legal standard whether it's the poses the poses a standard for stripping the person of  use of this as it relates to the claimed invention right and the problem is that yes the concept here is a little bit like teaching a way but it's not really a teaching a way analysis when you said is your motivation is to combine this to accomplish chan's as b s and what the board found maybe not as clearly as it could but it seems to me that what the board found is what you wouldn't put those together for that purpose because they they wouldn't wouldn't accomplish that purpose it just simply wouldn't accomplish what channel competitions but i think and i think that a person's skin only are you don't need certainty you don't need a source to say it can be declaration of our expert as well as in this first deposition before even there was a response is look a person is going to look at the structural things what june chen teach are protecting groups which should be small that you can cleaves there's a structural element to that but beyond that if it can be cleaved under mild conditions and it completely can the fleet under specific conditions which means tailored just to that body not everything in the solution then you can really will first of all we say to him we say that lubenow actually is praising as he did that and that the whole thing at the back says you'll only get to sixty to eighty percent but it uses the wrong standard and use pure product yield and that's not something that alumina ever submitted evidence if you want to talk about substantial evidence the fact is that only i believe yes presented evidence on the issue of cleaving efficiency now through a product so so and it sounds like what  is i've been trained to remember the person's skill in the art there's no debate as a ph d in nuclear type chemistry and then five more years in a lab or on the bench extremely high skill we're talking about in the really the issue is will continue injected that internet with our petition you are the one who injected one hundred percent concentrate we injected as we asked for motivation if you look at what we say for reasonable expectation of success we go back to labeling and that and  can i get this to work or into the way and yet effective the problem is the way i read your opinion despite its loose language is that it never actually got to the kind of reasonable expectation of success that we think about as it relates to the claims it was he was talking about success in getting back to chan which is what you're saying and getting accomplishing what chan accomplishes which is s b s and i agree that this claim doesn't claim s p s but that's what you chose to say was the motivation and you chose to show that that was the motivation so i mean aren't you stuck with what i mean i think that i don't think you should've said that was the motivation but that's the only one you came up with so i will address that motivate let me address that motivation one hundred percent let's assume we're one hundred percent first i think that fundamentally a person skill the art will look at the jab ronnie and lubenow and all the other art be deterred by living that they would say they would not feel like they had to accept the conditions that were in zachariah the ritual question as an army on their face they suggest that they might work isn't that substantial maybe i've got this wrong but your theory is to accomplish this and show this you used a specific s p s methodology and chef and combine it with zapatero and you have to show some the cleaving efficiency especially once i optimize it a little bit gets to quantitate the mag also says remember this reaction is a two step there's the clue conversion of the is e to in the mean and then the the mean which really is everyone agrees is incredibly rapid so there is evidence and we also don't think we think that the standard is and i know i'm going back this and i don't mean to not let me try to address your a review and i think that there are evidence which i also wonder walter is misapplying the standard to get there is this corrupted view that lubenow is sixty eight and can't be optimized or that a person scale me arc when faced with the situation and i would not think to themselves well can i think of any cleaving conditions that can get me to one hundred percent and is quantitative one hundred percent i mean you took the board down that road and you went down that road where in the record do you have before the reply deep which we can address later but do you have anything that says to the board or alternatively it would show if you don't need the actual s b s you could accomplish this other thing we do it in our petition we don't talk in the petition explicitly about cleaving conditions  because i mean let's take a step back we still did it by the claims with the claim charge and not only is there not quantity of cleavage in the claims but the pattern itself says living conditions would be obvious they see protected group would be obvious they construe the claims to say the protecting group doesn't even need to be removed which happened after a petition so we have to react to that and they and they base that on so on the ground that they shouldn't in the in the board come up with that construction for purposes of assessing the petition in the first place they didn't say the sequence of events as we submit our petition and the backing declaration and then their after after discovery the response that we handled everything in the reply and we felt that everything we said in reply and i think that's right was responding to what was in the response which i think also that it it's not  formalistic or superficial of us to point out that when we were talking about motivation which is expansive inflexible standard we did talk about the s b s motivation and we did say look a person's skin on the are there are other things that a person skill me or can optimize like size placement bonds let's look at that either bonds these are all the indications and directions in teachings that jew in general providing for the protected group and they g but in our petition i'm sorry i forgot to mention the reply brief and i want to give you an opportunity to say something about it so that you don't waive any ability to respond to it but an even if we agreed with you that that some of the arguments that were presented in the reply brief probably should have been a louder because they do sort of flow from your original for tyshan even if we agree with that don't you have a problem in that that means that those arguments were not predicated on your a national expert and obviously part of my job is to convince this panel that they got that part wrong to the responses i think do have or are reply does have a connection to the petition  i think again in the petition we say and in the declaration we say if a person skilled the art finds the structural things then they will also find these other we said such as and we mention a couple like incorporation there was no data this is the pioneering first days jus chan no one had data no one had actually done anything except consider prophetic pat so we said such as we did actually given the patent at the time in the claims in our claim chart frankly it didn't seem like the cleaving condition particularly given the fact that to get that pat was arguing in very related technology that well no a person is going there wouldn't have known to synthesize the nucleotide in certain different ways it's too complicated beyond the can and the court said well then they should have disclosed because otherwise you have this basic in justice the basic injustices there's a pattern out there that ties up commerce between competitors on grounds articulated the correct standard it's on pages nine in ten of the opinion citing the k s r and the deployed case the question is did they apply that standard or some other standard well the if the board was looking to the prior art references and to say are we looking to see whether there's a reasonable expectation of success in a compilation what the prior art references accomplish then that would have been wrong right it would have but if you look at what they did here they didn't do that and i'll walk you through how we get there i b s relies on two quotes from the opinion and they're on pages fourteen and twenty one they're the only times that the board says expected and the quotes are the prior art suggests that an ordinary artisan would not have expected safdar of these as at all methods group to be removed quantitatively as chen requires and then but then and this is the opening expert report of i b s expert and in paragraph seventy six the expert and i d s acknowledge the criteria for successful use of three prime prime blocking groups that are set forth in chad this is their opening petition and supporting declaration and one of the criteria is the availability of mild conditions for rapid and quantitative to block now there's no dispute here that that quantitative blocking means essentially one hundred percent in page twenty six foot no ten of their brief i d s admits that their expert also admitted it at joint appendix thirty five eighty six and eighty seven then if you go over to paragraph seventy seven of the declaration on the next page one of ordinary skill in the order in order to improve the efficiency reliability and robustness of the sequencing by synthesis method taught in chen would be motivated to use other protecting groups that meet the criteria of chen so they've imposed that the motivation requires meeting chance criteria which they've already said is  skill in the art would have expected that's after ivy has this the two things they quote from the board are simply the board's factual findings that no the evidence shows one would not have expected that the bor wasn't talking about expectation of success in making the claimed invention the board was responding directly to what their expert said would have been expected based on the combination  with that that's a fair reading of what the board said but it also would be a fair reading of what the board said to say they apply the wrong legal standard if in view of the opinion and the quoting of the correct legal standard and the fact that what they say directly response to what was argued by the expert i would posit that the more coherent reading is they were responding directly to what was argued and i b s has taken snippets of the opinion in an effort to try to manufacture a legal issue here what if what if all they said in their petition was that one of ordinary skill in the heart in the art would have had a reasonable expectation or would have been motivated to combine the context of s b s but even if they had and i believe it's on page eighteen of the board's opinion where they say there's no evidence for motivation in this record of combining chen or u was after rodney for the vote the smaller or the broader purpose of labeling there's simply no evidence that one would have been motivated to do that on this record so the board took a belt and suspenders approach they said on the narrow issue of s b s you haven't shown that one would make the combination and why did the board conclude that they did the board say that the it was only because they only tried to prove that you would make the combination for purposes of accomplishing s p s there was no expert testimony in the petition there was no argument in the petition that you would combine jew or chen was after rodney for any purpose other than that yes the only argument that was made in the petition and it's a paragraph seventy seven and there's a corresponding that paragraph seventy seven are in jail eleven forty seven deals with the chen and so after on the combination there's a matching paragraph or jew in chan but the only reason they gave for combining these is to improve the efficiency reliability and robustness of the sequencing by synthesis method taught in china and have you understand the difficulty here that you know one would have looking at this from working in it was i b s is petition they could have come to the board and said here's a bunch of art and labeling there's a declaration on why somebody would do this for labeling but there is no evidence in this record that anybody would do this for any reason other than s b s and the only challenge that was presented was based on s b s and at the hearing before the board when i d s tried to argue that this should be for a reason beyond labeling the board or call them on it and the quote is it's a joint appendix six twenty but to a certain extent the art that's being relied upon is all sequencing by synthesis i think so to a certain extent that's kind of the environment that we're working in because that's what the challenges are based on the board recognise that it was a narrow challenge based on a particular motivation to combine these things could i b s have done it differently yes but what they chose to do and the reason they gave for putting these things together was strictly for sequencing by services now on the idea that there are multiple things you could have done to modify the removal conditions and  this gets into whether their evidence was or was not improper the board found that the only thing they argued was s b s they didn't argue any type of labeling until reply they didn't argue changing removal conditions at all until reply they didn't present any evidence showing that zacharias removal conditions would be quantitative or give you one hundred percent removal even though they acknowledged it in their petition and their supporting declaration all of this evidence came on reply and the board said wait a minute our rules require that if you need a piece of evidence for your prima facia case it has to be on reply and you can't submit new arguments and there is nowhere in the petition or the supporting declaration that talks about modifying example remove all conditions there's no discussion of use other than s evidence of any sort and so the board properly excluded all of their reply evidence and under the trial guidelines for the board they are entitled to exclude the reply and the supporting evidence when you violate the scope of reply so any violation you can exclude the entirety of the reply and the trial guidelines are very specific that they're not going to sort out what's proper and what's not proper and i b s can't point materials from branch out second declaration that aren't cited in the reply brief there are sixteen exhibits in his second declaration that aren't cited anywhere in the reply and that violates the board's rule on improper incorporation which the board found so before they can rely on any of this evidence to support their appeal they have to show that the board abused its discretion in excluding this evidence on this record we don't believe they can meet that standard they haven't shown where these things were in the petition and addressed each and every basis for the exclusion because if any of them apply the board was proper in excluding the evidence that includes the newsy reference the newsy reference is the one thing they point to and say well this shows that one of skill in the art would have expected a quantitative cleavage using this after obvious for move the conditions the problem is it wasn't in the petition it wasn't in the supporting the d n a it would denature the d n a moreover newsy didn't involve nucleotides or nucleus sides which is what we're analyzing here and so the data in newsy doesn't show quantitative cleavage findings that even if we considered these references they wouldn't carry your burden of showing that they would work with jus and chen is supported by substantial evidence in this case i would like to turn to one its joint appendix ten eleven lines twelve through seventeen and they reference it on pages sixteen and twenty five of their brief chand does but it's noticeably absent from the board's final decision and there's a reason for their expert admitted that his deposition and its joint appendix fifty nine eighty eight through eighty nine that regenerate that three prime hydroxyl group that's why the board never addressed it that's why this argument never went anywhere because their own expert admitted that what's disclosed in chen doesn't get you what you need for the claim and so the issue went away for the next one can attach and their expert said that the and three group disclosed in chen you can remove it but it doesn't regenerate at three primal wage group and so it wouldn't work for s p s right it wouldn't work for us  the exact claim language is said protecting group can be modified or removed to expose the three primal which group and their expert admitted that when you remove the end three group disclosed in chen it doesn't create a three prime of the each group and so it doesn't need to cl language it wouldn't work for the s p s method of check and so that issue became a nonevent but given the couple of references in the brief and during oral argument i wanted to make sure there was no confusion about that and if the panel doesn't have any further question we you can see if there were if there were references as to which there were motivation to combine those references did it would not have to teach s b s in order for them to be able to read on planes right if there were references that suggesting suggested putting jew and chanting the other was after rodney for a purpose other than as b s and that had been argued to the board the board would have had to consider it but in this case it wasn't and so that never came up record there were no references suggesting that but i will cede my time but i i do want to express my sincere thanks to the panel for moving this from the twenty third to today i was the one with the scheduling conflict and i greatly appreciate the person d accomplishing x as yes i agree that that was the motivation we proffered it was not for expectation of success i think that for motivation that doesn't mean that the person skill the art has to see something that explicitly says a person is going to get would know the ones are being presented to it and we think that that's wrong legally and factually and i do want to just to back up something i want to read from something that was in our petition this is metal protective group to possess the remaining desired functional properties of the chen protected groups such as now granted i think we erred current thinking this was so obvious and boy i won't make that you know mistake again  and and then also we have a not that we have another deposition where our our expert says and i will get you the sacred moment says once i know it's mild thank you it's a j three five eight seven where he says and this is the first episode not the second i think mild is an operational definition the mylan of to achieve this objective which is rapid and quantitative the blocking is part of this process which is described so i think the person skill me art is going to and we say that in our petition and in its declaration and it's clarified again in their deposition before they even respond once you get the structural stuff first  are going to think everything else is going to be possible or is going to come and then we go on to say that paragraph eighty two in jail of forty eight additionally one of ordinary skill new york would have had a reasonable expectation of success in making using a petition with guard to jew and we also say that in our claim chart so we do make a distinction between motivation and label and labeling that if that's what the board was really looking at that kind of expectation of success i don't know that the board ever got there and i think that as i said i think it's a fair reading of what the board was trying to do to say you said you combine them for purposes of as s b s but there is no no evidence that one would think you could accomplish s b s as lay down a chance with this company's i mean i think that's where the court was going something so i think you ought to focus more on whether or not not not the legal standard but whether or not the the factual findings would support that conclusion thank you and as we've said and as we we think it does of course we are relying on some evidence that is is in the reply what i read in that the testimony and the argument i refer to in our petition of the supporting declaration deposition that that was it was enough for the board to think we met the previous facia case i will say that the board this is not this is not this was something that they recognized that proceeded they said this is really about those years in a metal go to the three primal age does it protect it and does it big the couple so that it really exposes testimony where he said i'm reading that in the carbon talk so basically what he said was as i read it it's not anticipation for at least claim one where everything is contained in a chain because i think there is probably attached to a but as he clarified when they jumped on him in that on their response he said look i think you're reading the law narrowly i'm also i answered the question we then we refined we certainly he refers to that in his petition mom too and then he says but the one that's of special interest is as you know math also a person skilled the are given canoes even given that he's reading or she's reading it says quantitative cleavage a disease to  quantitative cleavage of the second step lubenow is pure product which is ok the denominators everything we put into the solution to begin with and after i do wonder reactions how much is left and you can lose a ton of stuff and so