a very methodical and rigorous approach to exploring these these chemicals and first they they figured out what they were and then they began to experiment with them in terms of how they could be used as phages or it clearly chromosomes that have been removed from the cell but when you're talking about a living cell and you're talking about taking the chromosome and cleaving it that's a very risky thing to do talk about the other two first at least in my mind maybe to simplify and narrow the case to the five for from the six of five you agree that if there if the technically if napco if that claim is moot what is the right disposition do we they take the board's decision with respect to claim fourteen that we just dismissed the appeal with respect to that or or don't you think i think the theoretically it's possible but i think it is such that rare possibility that that's just an unfair reading of the claim i think if you were going to read claims in the context of the specification in the context of the invention when they're talking about putting a plasma in the in the cell and you're talking about putting the root one in front of a nuclear site into the chromosome or into this into the into the hose and then having from  a reasonable reading of a claim then i don't make vida guerra nash make something on reason well i think that you have to you have to read the claim in the context of the specification in the context in order of five so from the next one to fifty two to fifty two just has something like the first step of this multistep process that you were describing it as as the not even if the board was wrong about the five for five why was the board i'm not right about that two five two which has so much less in it well there has to be a reason and the first question that has to be asked i think in the obviousness palaces is why would anybody be motivated to do that maybe it's possible i mean you can do a lot with with  genetic engineering these days but why would you do it it has no it has and if there's no real purpose to it there's no real function to it there's there's no reason to do it other than if you're going to cleave it with if the expectation was that this would be toxic or if there is no reason to really think that you can benefit from putting the site into the chromosome then why would you do it in the first place so that's the first question why would you do it that the two fifty two is kind of step one in a multistep process with a tremendous payoff at the end of the process if it if it works and you're saying it's really really no reason to take step one unless you where you thought you had a likelihood of success comes after septillion three that's correct the other point i would make is that we think that the site had to be more than just a sequence it has to be a site that actually could be it could actually function as a group one in trying to go to the nuclear site and i think that there is concern they can predictability as to whether it would function i don't think there's any question that you could put it in there but what it function as relevant to that issue as whether or not it would actually function and i think that also is relevant to the motivation what happens if we agree with the board there we reject your true from the functional side issue what's what's that do to the rest of why i think i still think that it seems you have to if you're going to be combining elements of the prior art as they're trying to do here is they're saying basically you could take  i think that turns them you know reimburse john deere on its head when you look at a reference to talks about long felt needed and then turns around in the patent office and that nobody's been able to achieve it they have been trying for a very long time so the question is why why what is there in in old and birkenau patterson or even in the n t i need to reference that would the first mistake they made was in rejecting the evidence of the licensing evidence these patents have been licensed broadly in the industry and the board rejected that evidence in part because it said that we didn't indicate that the licensees had obtained the license to obtain what was claimed in athens as opposed to what was disclosed in the  past and everyone know well i mean the johnson and johnson case provides that if you if something is disclosed and not claimed it's not covered who might make you the person who's taking the licensing might read something in the disclosure in the patent it sounds very interesting to them that really has nothing to do what you claimed and say well we'd like to have a license you're assuming that people behave perfectly john deere objective evidence when you cannot be tested rationality by asking the person who took license want to tag and you're trying to get because of that claim subject matter which is what i want commercial relationship probably is very hard to grow as they also says well the fact that confidentiality was claimed for these licenses seems to have led to some very curious any reference what these references were praising was the idea of being able to make genetic modifications targeted modifications to the chromosomes of a cell and t quite desirable to be able to get to work what what you've claimed at least in the five forty five yesterday if that's the case even if there were some challenges and there was why why it is what in the in the law about the s in the sadness as you were describing earlier on you proceed methodically step by step and then you try this it works it doesn't work but the payoff is so tremendous if it works that it may not technically fall into a couple of sentences in k s r about obviousness to try because that that goes beyond the second step which is you have to have more than just motivation you have to have a reasonable expectation of success so even if there had been even if you said because of the low felony that there was this motivation to kill to try you would have to have a reasonable expect of success and we don't think there was a reasonable expectation of success here because of the concerns about toxicity again what you're doing is you're cleaving a chromosome and approach to try and go about you know intentionally cutting the cross off and so i think that there was evidence of toxicity when you know the only time that that want it will integrate just randomly it just it breaks all over and then you have to you have to find a way to in no identifiable ones where it ended up in the right place and that's sort of the brute force method the old technique really started saying that two minutes ago something about if you don't do something to something chemical and then he broke off the phrase what is it that  a to and it doesn't die basically that's that's why this invention works and it doesn't die because this is this in a new place recognizes very long sequence of  fact finding number seven the next page the board seems to take that next step to understanding that to mean what is said and it is something which is the problem that i think it's three for i does not say and then the board relied in its ultimate analysis on the inference you drew from that quoted sentence if you look to the very next page you'll see well yes it's a question but i know the u s the chios are just here as you know we're arguing that there are these other two findings of the board that don't make that that are very clear that we're talking about an isolated from well and isolated intact chromosomes and certainly that examiners findings on this point are not in error and the board the board did not say all the examiner erred when the successfully shown prove that they in reality the experiment do john did and reported in the abstract was not that i'm not sure that that second point is necessary for to form a reasonable expectation of success and then we're doing here arguing that reason modification of success if that second sight was in a plasmid in an isolated the nucleus it's telling us a and when you find something that works well sure well that if it wasn't on all of this would be a novelty rejection and we are twenty years out the patents have expired we are  is really what you need in order to proceed for survival i guess i don't know what citation your honor is referring to you please i i don't think that they said ly putting it together well setting aside the retrospective aspect right now just focusing on ph that argument in the brief is most fairly not with the boards rejection of the five for five you have a problem either justifying reversal or vacate or are you going to explain why that conclusion should not equally the because the claim is much simpler that all these arguments about viability and a reasonable expectation of success they fall by the wayside and the secondary consideration evidence about nobody reasonable would do step one of us they have a reasonable expectation of success of the second and third steps also there's just no reason no reasonable reason to do that what's what's wrong with that and if that's true and if there truly isn't a reasonable expectation of success on the five four five why doesn't that in fact the inference that you would do the two fifty two steps one is not chromosomes for research purposes you would there are plenty of reasons you would want to put this recognition site into a common solvent for research purposes because it would stuck and unlike the two fifty two the board's decision on the six o five like the five forty five does rely on the front end to john id i mean this that's an assertion i'm looking at it so it's not really question that those capable not just of promoting copying themselves that you could use them to make the cut but then provide a template with something else that's what they show in court and they'll peterson insert a resistance  sites we can insert the into the genomes of a variety of organisms use these for genome engineering so the suggestion was clearly there he followed the roadmap that stood out in the peterson and even says in his paper  prevent the toxicity how did they solve the problem they didn't there's nothing in the claim to solve the problem in fact if you use i t v one one of these places dr carla talks it's not being used much most of them are still horribly toxic you can't use them there's one that's been commercially developed i cri one has been modified and here to reduce the toxicity don't you presented work work done and they had a toxicity issue and they lowered the expression levels of the of the protein to get it down there was a low reach the invention and it somehow you know people would have expected this to work is is belied maybe best buy me the the a one of those seven five seven of the paper he comments after reviewing lucchino much of the literature that there has been essentially no progress in finding ways of significantly improving global targeting if that's exactly what these inventions do they improve officials face i'm letting you precisely cut and then and have a modest income a nation where you want to as opposed to having them all of us become a nation throughout the the genome and have to search for it said that that article is limited to mammalian he was talking about mammalian so test but you know any to recognize that they would be a toxicity problem he had to block the extra sites and the other papers that we've cited show that there was toxicity concern