metal or it could be made of a polymer and that polymer is selected so that it can be imaged are capable of being imaged but that's the extent of the forrester disclosure the forest disclosure does not go into that that that that the the way to make that polymer image of all is to incorporate a radial picnic cereal into it it leaves that aspect of that the in the full path that marker is a polymer composition that has three properties it is swallowed whole it is radio pay and it is  motivation you don't have any real teaching that says that within the context of a breast biopsy you need a swell of material obviously when you're taking a when you're taking a biopsy from the of the of the outer skin and the like having we all know how we bleed when we're cut he will state this is very critical and in the objective of the buy is let's do this let's take this biopsy without using a suture and in order to do that we're going to put this well of material in there but now how do we get how do we get to the point where we say ok now we're doing a breast biopsy now we're in the classic situation we're doing a needle biopsy of a breast and we've got the same problems and we're going to solve those same problems the same way that lead is missing from the record that's missing from the prior art and that is where the devil core invention comes in another word desert and the other thing to keep in mind is that the and then the invention here is this idea that you've got the idea to do it it's not how you how the how to the material serial to do it with where are in the you are in the you are in the public domain so to speak in other words swallow upon say they're all the same feel that we're talking about a breast biopsy here which is which is taken under you know very very unique carefully controlled from our from a number of different aspects  that i guess i have to come back again to the point that again we're talking about a breast biopsy which you know conventionally is is it's a very minimally invasive needle examples of the principle examples that work with forth for the marker are metals and those metal clearly are metal little metal elements and those melons clearly don't have any hemostat properties but according to forrester they're perfectly fine very it's a problem a different name of a very different nature and and again going back to forrester he's using he's using these metal elements and has no legal status problem you know in those situations he also proposes to use a polymer hence we need to make this type of modification and that is the word flowing out this is yes a lot but yeah and did you catch anyway my reference to forrester and the absence of any indication that that  takes biopsy and so well in in anderson you know yes you do and you know one of the one of the things i find intuitively difficult to understand is this how when we're dealing with and we have to take tissues that we don't know whether they are there cancerous or not you would you would you know go and use an anti cancer agent like interleukin two which is highly toxic but apart from that and probably even more in they use the example of brain surgery but it could be surgery on any organ of the body you're going to remove the tumor it's you you go in you you've got your tissue is this the tissues in the is in the s eye he wants he needs to verify that he's got the rights issue before he goes in and takes the entire tissue out so he takes a small what they call core localization biopsy he grabs a little tissue run the down to the lab the they put it under the scope they verify that it's the that he's got the right to shoot and he comes back in and they would completely remove the tumor at that point in time he in he the surgeries being completed the tumor is totally eradicated the biopsy site doesn't even exist because i mean to the extent with it was in that tumor initially and he's he's a you know that little site where he verified that he had the right stuff it's completely gone and now he in chemotherapeutic agents into that now that set of circumstances is so totally in my mind just so totally far removed from the from marking a biopsy into a biopsy site and and to and to market with a bio degradable of radio pay palmer well i think you you also have to remember that these patents are going back that are the fold to you know to to jump to conclusions in terms of how simple something may appear today versus you know at the as of the date the facts are filed but but again i do think it  i think that you know to hold out that a reference that have you know has nothing to do with marking a biopsy and really has nothing to do with marking anything and to say that a person of ordinary skill in the art would would would have been with with you know with all these things available in front of him with him or her would have picked up on that reference and set up there here's the problem and here's a problem in marking breast importance in a is that any critic alanine there's there's nothing in the primary references that get that show anything that a critic county to controlling human status within the confines of a and indeed i have i say you we can't ignore the fact that forrester is just putting a little piece of the metal in there and not having any problem so so i i i think it's a it's a by an anderson within the context of marking a biopsy marking a breast biopsy and these kinds are specifically directed to marking breast biopsies and specifically to taking a biopsy a breast biopsy sample and and and and they have such that that brings into them that the all of the dimensions and considerations that go with that type of us a surgical rejection rejection that was premised entirely upon the andersen reference in one in which the the board concluded that andersen was brought in up there but the claim that atkins claimed could be construed as being brought up to read on  andersen that statement that might that fact that finding never appeared during the course of the prosecution of the of the application furthermore early on in the prosecution of  responded to that rejection and the examiner agreed that the that applicant had overcome that rejection and withdrew it so we've got the board adopting a we've got the board rendering a decision in which the board andersen when in fact that very issue had been had been addressed earlier in the prosecution of the case and had specifically abandoned so clearly for it to come up in the board decision here is a new it is a new issue secondly the it is the there the rejection that was actually in front of it in front of the board work to one of the three rejection one was a one of three rejection of the majority of it abandoned the to read these two rejections that abandon both one and the the whole one hundred three analysis kind of went to the side and the board justified everything that it did on the premise that and in fact they concluded that while we're at war affirming the rejections because anderson candy anderson the claim one can be construed as reading out anderson so in essence you know if they went on to say they threw in the volume they did throw in the buy in there but the analysis was a whether one or two analysis based on anderson so so i so so i think you know we never had a chance you know we had no chance whatsoever furthermore in the examiner the answer she specifically indicated that she was only relying upon anderson to teach the radio paid material so here we go from a situation where in the in the final rejection in the examiner the answer and the anderson has been relied upon foley as teaching a radio paid material to a decision by the board in which anderson now resign or the anderson is now hell to teach every number of the other claims and then there was a second rejection of claims eight and twelve over lee in view of the by an anderson those claims were they they board's opinion and yet the board decided that that african had not had not separately argued the clane and therefore the board on its own only permit the board to group claims and to select a representative claim as it ended just civically that for each round of rejection applying flying two or more claims the claim to be argued separately or a group that for each ground rejection the next sentence in forty one point three seven c one seven says when multiple claims subject to the same ground of rejection argued at the group by the appellant the board made select a single in in both rejection and they and applied differently in both rejection and and the board i ses to is fine pay on it's own initiative and without any authority of this rule combined playmate comply in the combined consideration of playmate with claim one and rejected everything and that that that appears to be clearly a violation and as such we shouldn't you know we should have that we should have any should have been considered by the board separately if the board had considered those limitations separately claymates pacifically calls for a procedure that is a  optional and we jumped all over that and the examiner with regard to the by the the examiner had taken the position that the dim by that the claim could be construed as reading on a biopsy of the skin on the breast and we pointed out a a biopsy of the skin on the breast is a skin biopsy it's not a breast biopsy we jumped on that issue so so so with that with the playing deal with a particular limitation where at least in your written presentation you did come project well if they i think that if we did well i think that if they had if the board had considered we also didn't concede that point eight and claim one should be grouped together and that element that that claim made should not be considered could be considered on its own merits and claim a clearly calls for a perfect a nice procedure so you know so so we are so we're really we're really thrown a curve here by the board we went from these one of the three rejections to this one zero two analysis and the one o two analysis is only feasible if you ignore claim eight which the board conveniently did by grouping it with claim one of these types of of maneuvers i think need to be discouraged that you know we can only address you look at anderson which mentions the biodegradable composition anderson says that the composition can include cmos static agents nearby teaches a team of static agents and it teaches that the benefit of combined that with force to once those references are combined then the claims would be rendered articles based upon those three  by opposing counsel as argued that the buy is not analogous art and neither is anderson however they are both in the same field of invention both of those references deal with of static agents and that is exactly what the tool five patent was getting and anderson teaches that what you want to do is control bleeding after you cut it into  an individual because there could be hemorrhaging in the bio also teaches that you want to control anything after a biopsy one of the ordinary skill in the art was a doctor would also know these things based upon his practice in the field so both of those references are analogous because they are in the same feel of invention and not only for that reason but also because they also dealt with them the problem that the inventor was dealing with  removing tissue that is cancerous and that's also what the buys dealing with removing tissue that's cancers so because the buy in anderson deal with the same problem that the two zero five pat getting at then they are also analogous for that reason as well so there are two separate reasons why the references for the score are analogous are and when you look at analysis art r is also very broad in its discussion as to what can be analogous art and here clearly those two references anderson and by are now because for the reasons i just mentioned a moment ago  radio pack markers with respect to the of the location of conducting a bias in the brass anderson is the reference that teaches it in the fourteen reference in the fourteen appeal because with respect to claim one the examiner relied upon the by anderson and lee well anderson clearly teaches that it's biodegradable composition and can be implanted into any section of the body including the bre what the rejection was and its decision on rehearing it specifically noted that the examiner lied on three different references so it might not have identified the names of the three different references but it clearly six where the examiner said that anderson teaches a method of removing malignant tissue prior to implanting that's one finding that it made and it also indicated that the material may be no i'm not saying that at all what i'm merely pointing out is that the examiner made a number of different findings what devore course pointing to is merely one of the findings here and in saying that they didn't have an adequate cha om nearby and handiest why isn't that a new ground for rejecting it in this case your honor what the board was doing was merely for lying to the arguments that were made in the brief to it and in their brief to the board most of their arguments were with respect to andersen their focus was on addressing andersen and what they said and the board was quite good in outlining each of the different points that the  several court raised a four they pointed out each of the different arguments that records raised in their briefs of the board one of them dealt with andersen is in a different field of invention andersen is not suitable for being a biopsy morgan andersen is not enabled so they made a strategic decision to focus their brief just on andersen and it was the board sponsibility to respond to those arguments and that's just what they did they jus responded to each one of the arguments raise and because they found that andersen the teachings in andersen addressed each of the arguments that's why their decision was limited to andersen itself but they also made findings as this court is already noted with respect to the buyers well and in their decision on requests for rehearing they pointed out that examiner addressed three different with respect to whether or not the claims were separately argued your honor it's the board correctly found that claims eight and twelve were not separately argued when you look at what they actually argued in their appeal to the to the board they argued claim one and they did so properly with respect to claim eight what they did was they came up with two different paragraphs and in the first paragraph that first paragraph lifted out different elements for their argument under that under the heading of claim eight and claim twelve but nowhere in that first paragraph did they identify the protgs limitation we believe that there's no motivation to combine different references however i have no point at all of that they argue in their first paragraph or their second paragraph the passable limitation with respect to claiming any they argue and all of the arguments with respect to claim one so the board probably found that because they didn't create any arguments with respect to the separate patentability of cla that they had not separately argued claim a with respect to claim while all the board needed to do in actuality is simply point out what they could have done rather to simply say for the same reasons that we created a separate heading for some of the claims however they did not specifically argue the patentability of those particular claims and this report found that because they did not separately argue the patentability with respect to those particular claims that the board properly decided in that case just hypothetically if an examiner was to read references and has  rejection of one of three rejection based on combinations of the relevant and case us up to the board and the board we have valley and it started and it uses just two of those three references not the third is in that case isn't that hypothetically hypothetical typically viewed as a new ground for rejection i think that it is it would be panned because there could be a number of situations like the one we have here where the board merely addresses arguments that were made in the brics and in doing so if they determine that they only need to address two of the three references and that would be satisfactory has pointed to our rule but we believe that he has not actually accurately discussed our rule because the rule although he pointed to basically have of the rule of the most important part for our purposes here is the part that was not discussed and that begins with the sentence which states notwithstanding any other provision of this paragraph the failure of  appellant to separately argued claims which palin has group to go saw constituting waiver of any argument that the board must consider the past ability of any ground claim separately and any claim argued separately should be placed  so for that reason they have not satisfied what they required to do as far as the rule is concerned and arguing claims eight and twelve in our rules are stablished to ensure that there's an orderly process before the agency violated that religion it just creates confusion as to the briefing process that they failed to argue the perky ten years limitation in their brief to the board they had a number of opportunities to do so the final rejection from the examiner appointed to toilet hearing was that we will address claims eight in twelve and i pointed out in a footnote but they never came back to discuss it so although they might have had an intent to do so they failed to do so but even if had done so it still would have been late at that time because they're supposed to raise all of the arguments in their briefs to the board and they failed to do so with respect to that particular limitation thank you i think this this court's precedent in re mcdaniel is clearly clearly pertinent to the issues that we have here today and mcdaniel makes it very clear that you know that regardless of regardless of of whether booth per between us was argued separately or not the fact remains that the that the the final rejection included every two there where there were two one of three rejection section six the the other point i would like to make is that we've done we've had a lot of discussion today with regard to the forester over the five reference as that with the lead reference in the in the in the fourteen fourteen appeal the lead reference only shows using a little air bubble to mark the biopsy site so while forester may teach well for teaches metallic elements and and the possibility of using polymers in the fourteen fourteen case the lead reference is the only reference that relates to it to biopsy markers and that marker is nothing more than a little bubble of air and two and again to make this transition to make this leap from replacing a bubble of air to a polymer composition whether it's described b nearby or our anderson seems to be a real stretch secondly anderson i think it is a it is it's a i think it's a it's an insult to the language to to say that anderson teaches a biopsy i mean anderson does not teach a dozen anderson does not teaching a method for marking biopsies anderson mentions that he uses a tumour core local biopsy something that is conventionally used by surgeons all the time to make sure they've got the right to sue but the anderson patent is not directed to marking biopsies anderson is is is a