you're correct so you rely on that and i don't think generally representations about that case are wrong when there's an unknown problem but the problem here and what makes this case difference from different from that one is that there was a separate reason the agency found for combining which is improving structural integrity so i don't know if that case governs here when there is a separate motivation at play i mean yes your inventor came up with a problem and a way to cure their problems but if there was a motivation to come to that same conclusion but for other reasons than i don't understand the problem well i think it is analogous there's more to th problem it's twofold with respect to that i think you can accept the fact that in certain situations there might be another motivation to get to the same solution right that we don't dispute that in those instances i no you are well i don't i don't have something to that is the first in the on final action the three words that the examiner used was obvious design choice round and base what that office action they talked about improving the strength of the product and structural integrity correct and then in the examiner's answer they repeated that again and as i understood the proceedings below mr conrad like they rebut it with sponsible theory correct of the invention story here and i guess i have the same question dr moore has which is you know we have cases such as per your pharma for example you've indicated when there is a separate through line for ultimately making the claim product and that it would be obvious to do so then why does a process are good law and you know it's ultimately up for us to decide to what degree discount on apply and do we agree therefore with the board's approach here which was to not wrestle with invention story given that there was a separate independent line of motivating a motivation to make this adjustment to this year and deflector that doesn't need to somehow at all impact the invention story just ten i think i think if you're suggesting that the p t o ten ignore the spawn of all i will process evidence if there's a separate reason to get to the solution i think that's incorrect in the law meaning i didn't detail a what law under this case this court's law in as well as in what case or what right so turning to do farmer for example you mention pretty far making it so in addition to that we have leo products they are pharmaceutical products i was just very very similar to this case in that there was the claim in that case was directed to  composition of three components it was vitamin d and last quarter for steroids and solvent and there was a long recognition that in the prior art there is a stability problem and they claim require that it be a stable looks like in hindsight an obvious design choice is not really obvious and i would like to also by i'm sorry i just feel like this is a very basic concept and the basic concept is throughout our cases for decades we have held that the reason that someone advocates the skilled person may have been motivated to make the combination does not have to be the same reason that the inventor sought to make the claim company combination w that's throughout our cases very clearly judge moore i accept that in some cases in many cases in fact but there hasn't been a case that has to address this issue  if we're talking about about i mean a backup if we're accepting that the examiners you know four or five were explanation of why to modify the prior art is sufficient something that you did not argue against below well that's what the p t o is our you know i say let's let's assume for the most that's true that's right i'm assuming for the moment for my answer right now that that's true and so what i'm suggesting and i think advocating is that you have that evidence on one side of the obviousness line and then we have this noble responsible i will process evidence on the other side and so even in the situation where you have both routes to the end product there has to be some weighing of the episode p t o so great i don't even understand the logic of it if there is one reason to make the combination and skilled ours that would make it for that reason it doesn't matter to me at all if there were ten other reasons to make the combination of the skill who cares if the skilled arson didn't understand all the other reasons i don't see why that's relevant it doesn't have to be obvious for every reason christians why i agree with that as well but let me let me let me focus on the board's analysis here because i don't really think that that's what they did  and that's a fundamental problem with the board's analysis any later developed some combination of elements necessarily solves a problem that was identified solely by the inventors and solved solely by the  the inventors there's no way to reconcile that statement and that reasoning in the board's opinion with either i have a process or a spiral now i think i'll be honest i don't really understand that sentence either but i do understand the board as to have separately at the top of the page adopted the improving structural integrity of strength and connection motivation i agree with that but what i'll say that in terms of the merits of that separate motivation to modify the prior art i just don't think it's sufficient under this court's case law for example if we look at the reason and this is this was the reasoning and the final office action and process focus so much on the importance of why the inventors who had solved the problem in terms of the pitch angle for the printing machine why that invention was not an obvious it's and it goes back to rationale for obviousness strengthening the product having them improve structural integrity then this argument in front of us right now is off the table what it boils down to is your theory that the invention story counts every single time and need to be taken into account every single time even if there is a completely separate theory for motivational to render the claim obvious is that fair to say in terms of church in terms of that describing our legal position let's say that i think that's right but if i may just restate so i'm clear  because i think right when you when you assess obviousness in terms of a motivation to combine or motivation to modify the prior art you're always assessing the strength of it you're as a set of all how strong is the motivation is it is it almost directly on point is it telling you to modify this particular element is it telling you to modify this element for this particular reason by the different device and therefore you could use that reasoning to the prior device that's being that that's at issue in the rejection all of would improve structural integrity or countervailing evidence would be structural integrity wasn't important in this space because you want to devise that was more flexible not less countervailing evidence would be a separate wholly distinct silo of motivation i don't understand how that is countervailing evidence that well your honor it certainly is i think it is because it tends to that that it does it countervail whether someone would be motivated based on structural below where did you will argue that the examiner there's claims about structural integrity or insufficient or inaccurate or flexibility is actually prefer where did you make some theory to that which is if there's a completely independent basis for a motivation to combine references that renders the claims obvious that the invention story is not really something that needs to be taken into account thank account in any one of three analysis when it's presented and that it's a curious thing to say because it runs in the teeth of what judge moore was saying before which is whatever the motivation for an inventor to come up with a particular invention doesn't have to be the same basis that perhaps the p t o would use in order to find quite the obvious thank you i don't think we said it that way what we strong case because the board in the examiner discussed the problem so i think in the best of both worlds even if it should not have been considered the examiner board expressly consider that and respectfully inviting the court yes yes because above that to near near where the footnote is dropped it says we are looking at appeal brief eight to eleven in the middle of that page and addressing the problem proposed by a understand that sentence and i don't miss in your alliance that it makes absolutely no sense for other opponents to not apprise us how to combine teachings of conrad and robbie and drum would fail to inherently solve the problem that's exactly the point the point is his argument is that we put two things together that it never been put together and solve the problem so for the board to say it doesn't explain to us how when you put these two things together it doesn't solve the problem that is what makes no sense and your articulation of your argument makes even less sense to me right now because you're under the the board was addressing what was presented to it was noble and the problem evidence and all that was in the specification was seems collect liquid so the board said and largely relying on what the examiner said the examiner said in the quote down below the argued problem and the in the argued problem collects no liquid and so then we said with the board an examiner did it was spot on because it considered both the prior art and his little evidence of a problem in the evidence i think it could help considering the evidence and that's what was presented in the brief to the board in the brief to the poor respectfully inviting the court's attention to page one sixteen of the record that passage don't like the talk about how it legal pharmaceuticals was the case concerning a lot of secondary evidence going on there it had won passages in the opinion about unexpected results evidence that you think that the board as a matter of law has the obligation to weigh somehow in assessing motivation for high of both the inventor's story about what caused him to make combination of alongside  applicant's identification of a problem as urging in the applicant's favor and this matter of fact i think the case law goes to if it needs to be either in the form of a video or in the specification which was in this case and combining alongside the articulation of the solution to a separate problem which would be positive evidence and they have to somehow weigh those two against each other yes i think we'll pharmaceuticals says that that you're in ultimately causes and decay smell that's very undesirable and so they figured out that the cause of that problem that no one else had figured out and so therefore that can be a basis for patentability per eyeball process and spinal the board never took that out with the board did was it clung to its alternative independent theory for why the claim to be obvious strengthening the overall product or whatever and then said that resulting obvious product would inherently solve the problem raised by the other side but that's not the same thing as actually taking into account the invention story of recognizing a problem that had not been appreciated before in the art and the board never actually took that piece on and that's the problem with what i argued problem and intended use have been carefully considered so that's the problem evidence so the examiner expressly considered it and all it was was seems collect liquid and they said that well look at its own problem is that it suggested it might motivate a skilled artist in some sort of structural integrity problem based on a seam if i don't if i don't receive the board's opinion as having done what you claim it did on page board as having addressed whether that evidence was strong or not how can i leave this decision intact because the board referenced independent and separate from the motive the inventor had behind his invention story which were based on some recognized problem that words unappreciated then that's all the agency needs to issue a legitimate sound one of three rejection it doesn't need to take into account that separate invention story yes your honor because ok some disagreement with but apparently mr piccolo disagrees with me and believes the p t o did have an obligation to analyze that argument that's the way understood it or like today lots of quotable portions that said that so if i were to and i think part of part of the issue in this case is sort of if in fact that wasn't just the position today that was kind of their position in the brief on page fifteen was that in their position in the brief on page fifteen was the agency did consider this evidence and came to a conclusion correct and i think we addressed that fairly clearly in our reply brief i have been aware no case from this court that would uphold that footnote from the board as actually evaluating the evidence that was presented to what you have to do with the spin novel and i will process evidence and i think part of the confusion is that it's this is an issue that does not come up very frequently i think it's it is an issue that doesn't come up as cleanly as it conover and all of those i mean they're all examples of where there's one missing element and the examiner seems a plot that element from the prior art makes the combination and says well the inventions obvious and case there was evidence meaning an explanation of why it wasn't obvious because there's a recognition of the source of the problem and one final thing i will say is that in this case this case is a little different th spin novel and i will process because in both of those cases the problem was already recognized in the prior art so in one sense this invention is even less obvious then what we consider prior cases because this is the way we framed it in the brief as a source of the problem or identify the cause of the problem but here we go one step further away from obviousness because we now are inventors did identify the problem up until now there has been no problem that's ever been indicated or satiated with the prior devices and all the examiner did was select an element the missing element and honestly the samedi use our explanation of why you would leave out a scene and out as one final closing statement yachters i'd submit that in some sense i think that the examiner and the board itself got a little