as a starting point the p t o has regulations which i discovered late last night on my computer that says you may never issue a patent after expiration of the men to claims period doesn't matter if they're narrowing doesn't after brought in has none of we have prior precedent that says you can't if you do get narrower you can't change claim sco the p t o is regulations which were subsequent to our precedent say you can't amend period doesn't they don't actually incorporate the change in claim criteria and so are those claims now you tell me what you think happened in light of the fact that the pakistanis fired in those amendments are pending before us and were not actually entered in the one issued on a certificate of right i believe then what i also found out in the p t o is regs for these things have been changing you know like practically daily it seems is that when you have an amended claim post expiration they can issue suggests that they're allowed to go back to get into it but i mean i think we certainly don't have to get in i think is i think this back to the border but but you know if unless they have some compelling reason why these regs are not a pleasurable somehow you know i don't i don't know how we you're sitting there what's the right real what's the right number don't worry about your time over the seven c f r one point three zero chair and that is that the one i don't have it i think it is that the one that says what happens that amended claims can't issue after expiration or is that the one that all subsequent re exam will be on the basis of the they were they went from being the penick lames to independent if that is correct so what does that mean well that's a good point we believe the best make that could be an amendment but it's not of if if your honour's correct that the language of the claim cannot be amended in those claims and they'd be disallowed by the teacher because they are convinced that turning it in dependence and independent clones we would not interpreted that statute that way we believe that these were an amended climbs because they were is not because you did has not argued that the expiration of the patent makes the issuance of those claims which were amended only by incorporating making independent dependent claims are would want to contest that right yes that's true i mean you know we would we have we feel confident that the board made errors and we want this court to reverse those errors so that they that you could give them direction about how they should to properly men declines and talk about why we think those were misconstrued both in claim construction and in an application to the prior art i think it's interesting that the board made a construction that the across the middle line do you mean that the saw comes in say from the outside and it moves and when it gets to the midpoint it crosses the midpoint and leaves what would amount to us lit a slit that you couldn't i mean of this claim language by reference to the this and that's of indefiniteness issue that we raise below the board in the exam or before the did not accept but because these claims were an amended they didn't get to the indefiniteness issues so we kind of we don't have a ok so what support do you have in this fact for your interpretation the climbing marriage you say we never have to get there i'm simply countering what the board found in if statements and the it's a logic question logical argument if you will that the board's findings in terms of what this claim covered would require a perception to go across the midline and then if it went a little bit past the midline they least go a little bit past the midline because you just can't line up these devices at a single point and indeed even the panel realizes this problem when it came up with its free hand approach if put into the red roof and in the free hit argument that they've made for the first time on appeal they said well there's actually three cuts you the problems you cut from the left and the right and you get close to the middle and then you take the cutting got off and you just free and the rest of the at the tail of the of the th philips which is done by definition more narrow that it doesn't require that correct so i'm trying to find someplace in that intrinsic record that you can point me to that that says that i think if you don't necessarily have to go into the intrinsic record you can just go into the claims themselves and then claim thirty five says if you're cutting the creating at least one resected surface so the surface is not a complete resection describing at least one perspective surface so the claim language itself does not claim a complete the section and intersect the surface is simply some part of the navy that has been resected we've had the vote removed from so we don't need spec support when you just do plain meaning of plain language so that was the problem that we kept addressing with both the examiner of the board that the claim language itself putting aside the spec claim language itself that all these open ended terms or less than all type of terms and particularly on the respective surface language and thirty five it was simply at least one so when the board came in later it changed that claim language from at least one respected surface to a complete resection and that's error that's that that's just reading the claims wrong so i think that regardless of what the spec might say which candidly has nothing to do with the saws and resection the entirety specification is about a milling approach to create a perv a linear implant structure there's just not spec support for these claims but that's an issue that we didn't have to go out i mean there's a lot in the specs up in the about that the placement of the guide and how the guide works in relation to the cut isn't is there not there's not there's a figure eighty but that's that's not true i mean that this is a long specification but that this is a claim that has a number of very specific limitations that it which is understandable since it started as a deep kind of claim so not every single figure correct but i mean sure the answer to your question whether maybe lots of other inventions in this have lots of other disclosures lots of other environments when you try to find support for the claims that issue the ones that are worth it's only figure eight and when you look at figure eighteen it doesn't tell you whether it's on a medial or a lateral or an anterior side those words don't appear in the specification are you  figure and when you look at the figure it shows a bone head it shows something an l shaped structure it shows that l shaped structure is longer on the front than on the side but there's no side and the other is this business about what a total or partial resection yes and yes suppose for a minute we just what we hold as a given that at least claim thirty five here in the wherry and cause requires that cutting to be done just from the medial side what constitutes a resection that goes into the lateral side that isn't going all the way across because remember you you're not going to get the cut to a century if you go in for portion to be a resection you can have to at least remove bone about it correct and that we can't do from the side that's correct so so why doesn't this necessarily or reasonably necessarily imply that cutting a lateral side where a resection is occurring on that on that lateral side as well as the medial side include has to go all the way across because there it's exactly your honour's point it says using the trivial cut got further includes cutting a lateral sac so your honour's notching into a bone not is what that that would be covered by that language it's not a resection claimed in that structure and if you look at the claim the claim says a portion is only interior side the cutting guide is on the end here your side so if you're using the cutting guide which is on the interior side to cut into the lateral side you can cut from the interior side so the claim has no requirement for the wear in clause that you're cutting from medial to lateral side it says you are using the cutting guy which has an anterior port and admittedly some portion of the medial side but that actually begs the question about what is the claim also include when you in the wearing clause use the language generally media leaks that does not preclude partially generally as opposed to only that claim a louse a lateral portion to be present and therefore when you cut into the lateral side you can cut from any of those three claimed guy positions amendment other than the cancellation of claims will be incorporated into the patent by a certificate issued after the expiration of the patent certificate has been issued yet that's a future event it's now right any certificate will be after the expiration so  rewrite that depended claim independent that's not the amended claims we're talking about the amended claims even those claims that got amended if you take those amendments out because they were allowed based on the claims the only allowance was to the amended version or did not consider much less decide anything with regard to the claims before the amendments which still stand rejected by the examiner  decide whether your original claims as not amended are allowable so you're going to ask me in the first instance to decide whether i should overturn the examiners rejection which is the only thing that's ever happened of those original claims absent and so we assume we assume so because this is an important thing to understand we assumed when we made those moments in twenty eleven we never have an opportunity argues the original  p provisions allow the examiner when you're faced with a situation of an independent rejected in a firm the dependent overturned and reversed for the examiner to rewrite the point and that's not an amended claim in the the where in clause says you have to cut a lateral side that language doesn't say you have to make a reception on the lateral side but if you were to rewrite the claim the immediately preceding step is implanting the implants by position the if for moral implant on the at least one the champ or surfaces and then there's a post here an interior surface when we said in the claim at least one respected surface what we were providing for was that the guide could do more than just a flat surface you could create these two angled surfaces on the end of the bone and then have to up and down the surfaces on the end of the bone that the implant sits not so we did not want to say our bags only creating the single flat surface on the very distal end of the bone you could have a guy that in figure four as an example where you also created the angle surfaces enter prated the up and down services that will be at least one resected surface in that case that would be fun for sectors surfaces the claim was written to allow so they're taking the at least one receptor the surface language and reading it out of context to support that argument that somehow this is other half of the knee that's why we call this a single half guide half with kind of that's the best way to kind of see what's going on here that the reason why this is important  and my clients invented this in the middle ninety's long before this ever became what is currently today the procedure that you would get if you went into the hospital you're going to get a minimally invasive total knee replacement using immediately accessed for the most part and that's worth your view is called an amended claims like claim thirty five is limited to a single cut which goes all the need to complete reception by using a different we think the claims that issues sufficient and yes this is continuing from where you just left off convey that in each instance the resection is completed by using a and certainly if you go to the other claims in this case admittedly the amended claims you know there are there is an ability to what you're doing it's cutting across from one side to the other so that you can do this you ask us to affirm the parts decision then we're affirming that interpretation of the claims if you read it in its entirety that entire paragraph about the complete perception it's  completing the reception i'm not doing the perfect reception by cutting from one side to the other side if there was a note that wasn't there that would not be out of of something else in there and they will go in and they'll probably finish it up for you so we would not be accepting a construction that we feel is limited in a way that requires an absolute complete resected surface and then you're going to smooth out the edges with a free hand and so we want to make sure that that's very clear that when the board was talking about completely you know what lester is correct that first came up and what a reviewer but i want to make sure that that i understand your argument though which is the conversation we're having with judge her on toe so we all agree that this construction limits you to a medial cut that traverses the entire bone there will be no cutting from the other three to finish the job of traversing that entire bone you're saying there may be some knobs or little sticking up points but that the whole thing is already respected such as the bone can be removed yes there might be some additional removal but the ones that the board approved cannot now be entered suppose i also thought that under some of the the stuff that we were talking about the  versions of those claims which the salmon to reject it which led to your changes might now be considered by the board so the original unchanged versions of thirty one thirty three etc do we need a do you care about that to be do we need to take some action or will that automatically happen because now that december twenty fourth has come and gone under the board's m p and regulation it is now of the un to change the versions of those claims that are back for the construction that we said was the right construction all along because we've only ever said these claims cover that and the reason is the ark was overcome that you would consider remarking construction is it's that in large the scope of the plans so that amendment that was done didn't enlarge the scope of the court so the non amended claims are changed in their scope and i think that's the purpose of that statutory number to j toronto your question about partial reception and the answer was i but we have this fixation surface that we need to put things on if you read the claim language it's actually you're not putting a fixation surface it's got to be adjacent to at least one resected surface of the tibia so the same terse surface that you only have one of is where this device is being fit on the cut surface in the wearing clause is not is a separate cut and is not part specific pet and god placed on one side of the bone to be used to cut in to the other side that's the position they've maintained in the briefing now we're getting that's a complete resection that's not the argument they made in this appeal they've changed their position at this he the the board's construction we talked a little bit about that it's very clear i think when you read that page twenty six of the record the board said this is a complete for sex crime and that's what we have to in that claim there's none of this prime number stuff it's a claim that says put on the side stick the blade through it and respect the box so if you get to the point where this complete perception is your construction you toast you cannot get around the scene in a sinister final point there are just toronto's question of what do you do with this appeal to you you should give guidance to the patent office i think that there has been no appeal from the denial of the original claims as on amending the original claims were in the process they chose not to appeal them we can't send them back for a redo this case has been going on for six years it has to end sometime and i think it would be a travesty to send them back and let us start over again for cancer our decision to make well i understand that you have but you have to have appellate jurisdiction and you can state on the record that there was no appeal taken from the amended client from the an amended claims claim thirty one as an amended and i don't think the board should allow an additional process we may have to deal with that below but certainly they've made an argument about something they didn't appeal about they made that in the read brief which was wrong i mean i think you can comment on what they said in the read brief that they face they made the position of oh well since if it's after december twenty fourth we'll just go back to the original claims and let's talk about the original