he's pretty thank you may it may please the court the p t o here admits that not all of the elements of the claims are in the prior they have flat out admitted that there is nothing in the prior art that teache a renal effect a difference in how the body responds to oxymorphone based upon the renal condition of the client that is in the board's opinion it is however then argued by the board that somehow there is an obvious miss by inherent no one of skill in the art at the time the invention was made appreciated this difference to port language that's the statute that section one of three and yet of the board didn't should concede that the food effect doesn't vary with formulations isn't that a bit of  concession beyond your ability to overcome at this point put your honor that's not material that's what your law is not what we understand now based depend having realized there was this difference what's with cheerless what's in the prior record that can be applied against the claims and there is nothing in the prior there's no finding of fact the board is very clear that that is not contained in the prior art there is no teaching and that failure of teaching alone indicates this cannot be an obvious case in race for me from this court makes very clear you cannot base obviousness on what was not known and yet that is exactly what the board did for that reason alone this case ought to be reversed as an error of law there is no crime aphasia case moreover and we've talked about the fisc declaration already fisk makes clear that there is no motivation there is no likelihood of success for substituting oxy more phone for oxy code on in the maloney reference which again is the same element that's being applied  what the board did however was it used maloney and it used this concept of inherent obviousness and it violated the swarming case which i mentioned i apologize i'm probably going to mispronounce the name of the other case the the rich haired case or a j c k r t in which the says that you cannot use the application and the and they submissions during prosecution to create this relationship when there's nothing in the prior art how do you weigh that case law against the other case law that says you don't get a patent for discovering a new property assuming that this food effect is different you've discovered a new property that wouldn't give you a patent what it well this isn't a property in the isolation your honor those of the one on one cases those are the statutory subject matter cases the talk about whether or not you can get a patent on a property devoid of any functional relationship we're not dealing with that here we're dealing with is an identification that there is an explicit food effect and an understanding that that food effect ought to be used in a in a proper way to provide elegies you for twelve hours your argument turn on food effect and that's not in the prior art that's the obvious by inherent c application there is also the concept of energy's effective for twelve hours which is in each of the claims that's not found in maloney and that does not turn on the inherent sea on the oceans by heritage what does koopman add to this question case your honor deals with a much more specific issue because in coogan that trial bind to the cd forty eight correct and there was the issue of nail and was also  by the name of pete thirty eight and what it turned out is when you made the correlation between p thirty eight and nailed you then you all of this information from the prior art in coogan the missing points if you will the food effect as we applied in this this information is in the prior art i just did a computer search under the wrong name but wasn't that an inherent property then in cuban it wasn't just inherent it was known it was published the court said cuban specifically that that element was known in the prior art was that it was the tying it together but it was not time together any elements that were previously known but why wouldn't it be inherently understood that there's a food effect in every cage while you're at it and now you're getting into an issue that a lot of people in the in the pharmaceutical world have grappled with and sometimes there's a food effect sometimes there's not sometimes food can be detrimental sometimes food can be beneficial sometimes food can increase absorption some cut times food can decrease absorption but now we're all into topics that are outside have a piece of prior art which in anticipation but you need inherit say ok we we can use it here it's you it's rejected and you have the same piece of prior art and the patent he throws in a totally obvious insignificant little tiny addition to the claim that everyone would agree is obvious but now suddenly we can't allow the office or anyone else to use the inherently doctrine and want to me seems to create somewhat of want to make to you number one is it to supply a sion is was it done before we're not asking the statute doesn't ask in anticipation what did somebody skill in the art understand one of the three does so we have a very different statutory framework but we also ha it consistently different application of prior art between one and two and three for instance in the section one of the two application of prior art you can actually rebut that by showing it's not enabled we allow in to enablement in terms of that test of a piece of prior art but that's not necessarily the case because it could be that those of skill in the art thought it would work and therefore based upon thinking it would work they accepted that conventional wisdom and therefore you can apply the prior art under one of the three but maybe in reality if you tested it it doesn't work but inherently requires always one hundred percent of the time it's always  picture distinction between one of two and one of the three generally but i don't see how that i don't see how that distinction makes any difference with regard to the inherent c argument as opposed to just recognizing the general difference between one or two a month three par requires a hundred percent of the time this is always present so there isn't that maybe it is maybe it isn't people think it is but it really is that none of that is present we're talking about here i agree with you and it does require hundred percent of the time and under one of the three there's  why did the board produce another reference showing food effect i don't know your doesn't that give you a significant problem here your honor i don't think so i think this case falls squarely court said that it was not necessary that the binding of nail to cd forty eight be found in the prior art hooven's application itself and struck that cd forty eight binding is not an additional requirement imposed by the claim some of the protein but rather a property necessarily present now and that's exactly what we have here your honor we have the board had no obligation to predicate its obviousness finding on the prior a teaching it was inherent in the property you know under there you but inherent see is different in obviousness context because there you're asking what is the knowledge of one a skill in the art and one of skill in the art may not know the inherent characteristic it may be of the oxymorphone at the end of the claim you could read this claim and put a period after the word oxymorphone and not even have this and it wouldn't change the client it's not a step in the method doesn't mean anything under their reasoning dr kao could go back to his la going to eat give them fifty percent less of the drug than would otherwise and if that was one of the steps in the method of administering it that would be a different situation then you would agree the p t o would need a reference that's probably correct or under that would be a different situation but they can't take an obvious claim here and just tack on some inherent property to datapoints a null or inherently evil like concern but there's but there's no dispute there's no dispute by kayo that it is an inherent property they said it at the oral argument that they don't court would have said what it said if it was known so i don't think it is the other thing that's so there you see this case as coogan as is square on this case i do your honor the other thing he said that  it doesn't teach the effectiveness for twelve hours but i disagree with that as well the board's finding it that nobody's formulations provide a dissolution rate of between sixty to eighty percent of active ingredient released after twelve hours and it's reasonable to conclude that it would still be effective at twelve hours because of still being released at that time if your honour's nothing else thank you thank you  lewis maybe you'd return to that cuban case which seems to be a rather important point here i'll be happy to your honor and i'm reading from page thirteen fifty seven because the court sustains under substantial evidence review the words finding that bill and these p why would we have gone into all of that discussion if it was known before obviousness and judge more i submit to you that it's inherently by obviousness exists there will never again be a second use patent on a product that's been developed in the pharmaceutical world because if it inherently treats a property even if it's not known you would for ever be able to use the earlier development to prevent an improvement so when chief judge reader asked the question about aspirin for new use the fact that aspirin was ever used would for ever in an instance when you know you're fat that if you will depend on how you write the claims doesn't it i mean would you still i mean under her admission be able to get claims even here depending on whether we're talking in effect though you actually have them in a different pat it is your honor you wouldn't get a product claim for a second use anyway you would only get it for the limited use and that i would be no inherent see blocking that i don't think there would be a method of use lame available if you gave it to if ever there was a person who took it with a particular condition it would have treated that condition even if they didn't know which is i think there are ways that you could write plays but i think if you're dealing with situ you're dealing with co called code that with elements that often happen at the same time i think you would  i think you would be blocked and so i do i do note that i'm that i'm over my time i want to apologize to the point i misspoke when i first started my argument i referred to reno instead of said that of course is our third case so so i apologize for that but i do