this you know on a good morning may please the court in finding claims one seven and ten anticipated the border for at least two reasons and should be reversed first there's no substantial evidence a record supporting that the references means the configured to or configured for elements of claims one seven and ten and second those elements and part of structural limitation to the claims that the cited references expressly and future but not necessarily on the same we don't think that that is the proper reading of the claim in view of the claims language itself and also when read in light of the specification if you look at figure thirty two clearly the pen there is extending through the anatomy and the end clause imparts this requirement that it be in all four locations at the same time you just trying to get the suture from here to here through a couple of things why does the the actual harpoon have to be you know for places well you're one of the  we believe that the claim requires that it do that in the specification over not trying to connect that to some sense of of the purpose of the of this invention as described and if the purpose is just to get the provided and it's specified down to three decimal places and it makes sense that they would have a very short anchored on spot because it's designed to be embedded in the bone and if it were to penetrate all the way through if it were long enough or that it would extending through bone to be embedded in it and there's no suggestion in there that it's going to penetrate through or do anything else because that would impede its ability to grasp because it's got those anchor if the anchor has all the physical attributes that are required in your claims well we think that it doesn't have all the physical elements to do you beyond math let you know ok or just for purposes of our argument here let's assume that it does have all the physical attributes then wouldn't that be enough this is a structured device claim after all and we think that the  what what its length could be and it's clear and very clear that the link this to be a very short anchor for embedding in the bone and and having a future extend from it and so we think that basically you have the limitation as to length and understanding the use of spock helps us understand the limits of what's disclosed as far as the length of that anchor so if you compare that to the path that is  provided by the poor portions of the anatomy of the claim the the short length of banker is clearly not long enough to reach there now the p g a argues that we cannot distinguish on the basis of length and we think that's incorrect for same time lou what do you do with the suggestion that there's nothing in your application or the claims about the size of the creature into which this is going to be good well we think that this argument  about the the office is looking for some definite interest or so forth is an indefinite missed argument which hasn't been raised and is not raised in relation to this claim and that was this girl in the article didn't didn't the board or the p t o or somebody talk about inference in mice and it was raised by the p t o and we think that one skilled in the art would understand the link the requirement imparted by this reading in light of the in animals and we think that that argument is just and that one skilled in the art would understand the link in part of my understanding the patient they're going to be working on and no case of the human patient could make that argument to the board i believe that all the way through this case we've been arguing that it's not long enough it just on appeal here not just for a smaller human like an inventor leave even something like a mouse or a smaller creature if it's not this issue i think was raised first in the briefing at this court and i don't think it was phrased previously i think the assumption was  all times that this was being applied to a human and so we i'm not aware of that particular issue of rising a lot of i may be wrong about that it may be that violation of chocolate which perhaps it's the modification of a reference i'd like to turn out to claim seven and claim seven is directed to a guy for inserting and advancing  soft tissue and cartilage and therefore there's no express indication that they can be used in a ball and soft tissue is you know tools for soft tissue could be more flexible lighter or weaker  says penetrating the engage that it itself has to be digging through the the bone and if your claim this is really excludes environments where something else perhaps creates the hole in the be that citation talks about using a drill and if it wants to penetrate the bone and there would be no reason to talk about a drill if the needle to be able to get through the chordal layer of the bone which is very strong and there's no indication i have to have really strong forearms to make it happens i'm not trying to be funny i'm just trying to find out it's a very good question and our position on that  to portion really works is that you know if a tool is designed for working with the bone working with tissue it's not going to have the strength then it's going to deforming or break rather than going through the hoop and i'm getting into my  and the specification teaches that as simply a metal sharp point the projection itself is disclosed as being between one and five millimeters so what they disclose is something that is potentially one millimeter across with a sharp metal actually works because i think it's easy to kind of get the impression it's what what's happening here is the guy has some sort of means of going through the bone to to permit the suture to go through and that's not what happens at all under the specification th and i've read about a third of the way down a suture pin one forty is advanced by the drill so the guy is simply kind of engaged in place by this chip which is held the bone so that the surgeon can then use a drill to push the suture through and that's how the prior art works as well honors so we would say that neither may nor hayhurst deviates at all from the claimed structure and in fact could easily perform the recited function stepping back to the rejection of claims one in ten in view on spock the argument that opposing counsel's made here this morning is that the on spock reference is too short and i think the re i'm sorry this was the device itself is too short and what the examiner said in the exam or said this from the very beginning of examination in this case is that the relative dimension is simply claimed here the size of the mammal adult child infant it's simply not claims that a claim something relative to a size that's not claim simply makes the invention very very broad and that's not an unreasonable conclusion to dr of the size of mice it doesn't your honor but every dimensional range that the specification gives is quite large it talks about a diameter of a shaft between point one and five centimeters it talks about a guard thickness between point one and two millimeters it talks about a glen only signs are of between point one and ten millimeters it talks about in growth layers on a shelf from between point one to ten millimeters and prefer really from point one to two millimeters and the point i'm trying to make your honor is that every time should i did try to put some numbers on to a dimension the ranges were extraordinarily large they were sometimes one hundred fifty times greater from the smaller to the larger size so for the examiner to step back and say if you if you're trying to claim the length of something you've got to do more than simply give us four components would we w sorry within which of these devices disposed you gotta tell us at least are you working on an adult human or actually give us a dimension he has done nothing and is this particular argument you're making now independent of whether the device has to be in the hall four places at once or you are i'd say the argument i'm making right now actually gives that to them and that in other words i'm saying even if the claims and really there's not much in the specification that tells us how long a device would have to be to accomplish that to do any of the numerical ranges that you were reciting a few minutes ago from the specification of the of the chart and i'm sort of going beyond the record at this point there's something really throughout sort of come across there is a chart in the specification that talks about various dimensions of shoulder diameters and i assume it's in an adult now and it never let me just  around the same time as i think earlier you were describing how the specification made in the application and in front of us recites a number of numerical ranges quite large yes ranges yes to any of those court was that when ranges are provided for different parts of the invention for things not even related to this feature for example the implant that goes over the top of the humorous or another device that goes through the humors when dimensions are given they're given with extraordinarily broad range is suggesting a large degree of variability in the size of the bones that the surgeon is working on and so from that what i was trying to make the point that the examiner was on solid ground to say look th variation here because even when the specification gives dimensions and they don't give dimensions for this for this part of their disclosure but when they do give dimensions there are extraordinarily large variability i wasn't meaning to suggest that this particular dimension is given because it works the only other thing all rays must the court has questions is that there is this argument that the answer back to each is an anchor if you just something that cannot be pulled out and so because of that it does not teach something that doesn't go right so admittedly there's a bone somewhere that it's not going to penetrate through to the other side because of course then it would be an anchor but that's got functionality in on xbox world does not tell us whether or not that that device other five thousand or otherwise we're right it doesn't it doesn't tell us otherwise why it doesn't meet the claimed invention here of a risk because what it means is when the examiner finds a piece of prior art if the examiner has a basis to believe will function in the same way as that claim it pushes the burden back on the applicant to tell us why in fact that can't here the claims as your honor just observed are extraordinarily broad and there is this one functional limitation and that's the only limitation that even arguably could separate these claims from the prior applied and the examiner had a reasonable basis for concluding that yeah the prior art to do everything that you're claiming because it structurally looks identical to the device as you've claimed it now what should it has done in his briefing as he's come through and he said there is a litany of physical features that he has identified from his specification that he says can distinguish his inventive device what he describes from the prior ar and your honor we would submit that those litany of differences might be fertile ground for him to come up with a claim amendments to propose in order to come over the prior art but it doesn't get him around the prior are when none of them are quite so you've thought about this case for a while what are some versions of amendments that would make the claim all this and patentable in a way that it's not now you know well i'm not going to suggest amendments for  what i'd say this is one issue that we have in this case and the court raised earlier with judge toronto's question is whether or not this device this harpoon really does stick out from the front in the back of the shoulder the claim actually said that claim actually began not in its first iteration but its second iteration actually said it's long enough it penetrates out the front and it and it comes back out the back side and it's this long and it can stick out each side and the examiner said you didn't tell me the size of your patient and instead of coming back at that in some meaningful way he said let me change that quickly and so then the claim talk about something they can enter and exit and that's when we got into the debate about ants back and whether or not it's an anchor or not but now he's got a little bit of a problem because the specification is quite lean when it comes to the actual details of the structure but that's something he could pursue that's a direction he could go i'm not saying it will be successful but your honor i want to address the back to the first argument of counsel about the drill at the in the specification the council made the argument that the claim seven guide doesn't really penetrate that much instead of drill is used but that's not that's not the case that the drill is used after and this is what stated immediately prior to the discussion of the drill  which is the hardest part of the bone and then then after that the drill may be used because of course the pin has to come out the other side on the top and go through the rotator cuff and  surface of the of the bone so the discussion of a drill here does not really make this guy just simply to be configured for penetrating engagement there that limitation doesn't make it just for that you know touching the had to put it you need to have penetrated great minutes penetrating not scratching her coming up to the surface and it's going through that portal layer which is the hardest layer of the phone so on that on that point you know again we're we're distinguishing over the prior art where the hey first reference and the made reference are her soft tissue and will not have the robustness that's necessary i mean the tools used for penetrating bone are not the same tools that a surgeon is going to use to manipulate soft tissue that is not the same tool as if there's a different factors at play as to the construction of those tools do you have  we are i don't know if we go so far to say that but we're dealing with the references that were cited and the office hasn't cited in your references that are for penetrating and we're not dealing with a one of three rejection where the ox saying well you could take this and put a humoral twenty cortex yes that is the sentence ok so we're dealing with the references that need to disclose these features either explicitly or inherently and it's our position they can't get to inherently disclosing because they're not tools designed for penetrating hard surfaces to go back to the driver reference and the reason to believe we just don't think that the references clearly designed to be embedded in a bone not to extend to the ball and can't reach the four portions of the anatomy that are in the clear and there was a lot of discussion about how the claims are broad and that we could have imagined them in some other way but the point we're dealing with especially with bach is that we clearly defined the areas of the shoulder that it's and again you know i want to mention that the hate her started is is again it's not designed for penetrating gauging the phone it's a tip for use with cartilage and i think there's appreciable differences between schools for soft tissue and