good morning may have pleased the court doug national behalf of the appellant the district court in this case invalidated the two patents in the suit the oh it six in the one three three patents by applying the wrong test to determine their priority the two patents ensuite claim priority to the filing date of their grandparent application which issued as the five six two patents but even at liberty to  where is the support i think your biggest hurdle here in the parent for the claims that you now claim in this child and this is a convoluted prosecution mess and you follow this pattern you did never expected to be a child of a parent you know and i can tell what happened during the prosecution so where is the support for the characterization is it as a mess is probably accurate your honor but to answer your question didn't prosecute it i did not one lines twenty to twenty five explicitly teaches that at the time the pair was file the use of a twelve gauge shotgun shell to housing non lethal projectiles which which is what the invention is all about the project that the use of a twelve gauge shotgun shell was well known at that time staying in column one there is a line fifty four in talking about the object of the invention the inventors disclose and teach that to achieve the object you load the non lethal projectile into a generic weapon shell that disclosure doesn't limit the type of weapon show that it needs to be used it doesn't limit by size or by type and i concede that the specific examples in the parent are limited to thirty seven millimeter shells and forty millimeter shells of the claims are directed to those types of shells in connection with a non lethal projectile but the the only evidence before the district court and summary judgment of how one of ordinary  understand the disclosure of the parent is that one of the orders going the art would understand the disclosure to be broader than just thirty seven millimeter and forty millimeter shells the the record contains an unrequited affidavit from mr le projectile and so when you get down to the object of invention and it teaches the generic weapon shell it's there is no criticism above the twelve gauge what the invention is directed at and the reason why this notion over what shell is used is actually less important is that the invention is directed towards the projectile and what it's housed in is frankly incidental to the actual invention and where the inventor is said that one of more of that at the time it was well known to use a twelve gauge shotgun shell and then a few lines down the patton says that you make use of my mention by putting it into a quote weapon sh that turned west and shell he recognized that he called it in his affidavit the genius turned and he said that he recognized it as a genius term that would include a variety of different size shells and among the shells he said that he would understand would have been included were the types of shells that were described in the five six two pattern which is the greater navigation it isn't enough for him to simply say that's what he would have understood or does is something more required sar precedent seems to suggest that the missing descriptive matter must necessarily be present that it's not a question of whether want to skilled to skilled in the art might be able to construct the pattern these device rather it's a question of whether the application necessarily discloses that particular device it's quoting from martin b mayer yes this court you know there are a number of cases talk about inherently being present but the perspective of the question that's asked is it is it disclosed is is asked from the point of view of the knowledge base  you've got to have support whether you have it whether you title the priority is a separate question but so the first question is is what do you do is there support in the application itself so my question is in the face of the description as we see it would a claim to a twelve gauge show have been considered new matter in that application no i would believe it would have been supported by the disclosure of the generic weapon shell and the reference in column one of the very in any way criticizing the use of a twelve gauge shotgun shell which again is incidental to the actual invention are you suggesting that because the word weapon show all generally is used in column one that a claim  these type of projectiles it's a relatively small genus is what i believe the import of mr rhodes testimony was in his affidavit and whether any other shell would be supported i don't know projectile dependent upon the grandparent or the parent and so i don't i'm not going to look upon a parent or grandparent disclosure mr roan in his in his in his affidavit was focused in on the of i take that as a frame of reference he is saying look i'm askin the r here's what i know and he was saying he's trying to not print presented conclusory affidavit here's why i know i know i know when i read weapon shell that includes twelve gauge application at page three five three and column for starting on the wrong line twenty teachers however now just to back up very quickly the the parent examples give in the pair were were rubber pellets but the parent says however it is to be understood that particularly ballast pellets of materials other than rubber can be used in provide similar projectile weight in volume to achieve lowly fell the consequences and so when the only evidence and summary judgment that was before the court was mr rhodes testimony and mr own says i read that i understood exactly what that meant that was told us it actually has to have been disclosed if there is a line is to be drawn where it's strong i'm not sure but i can tell you that the answer your question would depend on how broad of the genus we're talking about are we talking about is it just you know nelson screws or is it nails and screws and tape in the hypothetical you gave it could be a very broad genus it would depend on what one of more than a skull that are would understand the term fastener to me in this case where you're talking about not just you know different types of weapon shells but weapon shells for a specific purpose a non lethal projectile it's a very narrow genus it may very well be limited to just the three that we're talking about in this case twelve gauge thirty seven millimeter forty millimeter but the inference should have been drawn in the plaintiff's favor and the movie reached that conclusion that is he reached the conclusion that this supports lead shot on a four for what reason in other words why did in his affidavit he says that first of all would have been known at the time but lead shot was known at the time to be used in non lethal protect else he says that that the lead shot would have serve the purpose he said that the lead shot had already been used by the inventors for this purpose and he said it was well known at the time that lead shot could be used to ballast for creating lowly fell the bean bag type projectiles now it seems i mean those reasons might apply to any number of different things are you are you saying that if those reasons applied to other things like stainless steel pellets or polypropylene pellets that those two arc he recognised that included lead shot whether it be that other stuff because he thought that he knew all of lead shot thought well ok i know i'm aware of lead shot and lead shot would do the same thing would meet the characteristics but that that's his sort of assessment of what substitutes he might think would be appropriate or reasonable substitute seems to me that's a different question from does this disclosure show substitute but whether there was possession of that specific thing at the time in it's right to challenge that your honor but it's a question of fact and the rule the forum to challenge that and the it completely ignored it's not cited anywhere in the decision and it was in the record it was it was in connection with opposing summary judgment there was nothing that reported it at least a trial is necessary to that very question your honor just ask them and i certainly agree with you that it's a question of fact and i guess i guess we're the issue that i'm wrestling with here is whether there is enough here in this in this disclosure to create a genuine issue of fact that there might be support that there the argument that it was possessed at the time is sustainable because if you don't get over that threshold then even though it's a question of fact it's not a genuine issue as to in the patent description that it's not been corrected then make a difference i'm not completely for the we time of the parent at this point on talking about the five sixty two ok the as not been corrected well i think that really disclose a twelve gauge shotgun i think if you look at the figures of the gram per your honor if there's a sufficient disclosure in the grandparent to convey that what the inventor was  will restore two minutes of your rebuttal under the written description requirement we look at the four corners of the patent in this case the four corners of the seven four two patent nowhere in the seven four two patent is lead shot mentioned in a column great description because we've got to interpret these words i'm worried that your interpretation i mean they get nothing but rubber that it isn't enough for them to say rubber and other similar types of things with the same weight and volume and that's i'm worried that you're basically saying that you can never use language like that and you're going to limit people to only the exact type of ballots they disclose and even if one of skill in the art would know exactly what they're referring to when they say other types a similar way value that that language will never be adequate well if one would know exactly what they're referring to that means it's like inherent or necessarily disclosed that doesn't necessarily disclose what shot it might not exactly why that means what they're allowed to claim they could have put that exact wording in a claim but why isn't that necessarily a disclosure of lunch well i would say there are two reasons first off because that whole description doesn't say you can use anything else it says you can use anything which has the same weight and volume is more specific and rubber right and there's no way that lead shot can have the same look weight in volume which is density as rubber we don't even need to ask an expert on that but you didn't make that argument oh no we didn't make well yes we did make that argument below you you made the argument and the judge decided this case on the basis that lead shot can't be what this is disclosing because it doesn't have the same weight in volume i didn't think that you know the judge didn't decide it based on that we did make that argument the argument that the judge decided on was kind of the converse of this panel i didn't see any evidence in the record regarding what the weight and volume of lead shot be you didn't put on an expert no we did not know we did nothing that we didn't want to give and we didn't want to create a factual issue your honor because we thought it was very clear that the way they disclosed it it doesn't necessarily disclose that shockley you tell me what does that necessarily disclose what it discloses necessarily exactly what it says other materials can be used of similar weight and volume and you're telling me there's no evidence in the record that lead shot doesn't have a similar weight volume and they've got an expert a shot does not have the same weight probably other then if you look beyond exactly that and you go back to the five six to patent what do you see if you compare the five six to patent and you go beyond the four corners you look at a grandparent pad and the parent pad and you see what they did and you see the that they took out all reference to lead shot which implies that this does not mean lead shot they give an example of their first invention and i think it's pretty clear from the  for the prosecution history what happened they came up with the invention which is the lead hill lead shot field twelve gauge projectile they thought they'd adequately covered it they had another invention later which is a larger weapon shell the  you know the thirty seven millimeter in the forty to forty millimeter filled with rubber pellets and that was their second invention so they by removing all records of lead shot i think that implies pretty clearly that they didn't intend for this to cover a lead shot now they could have made a claim to materials other than perhaps perhaps a rubber pellets that have the same weight and density but they didn't do that the question is can they claim  shot now whether they're entitled to under things i understand you're suggesting they might have been entitle me to things other than rubber that similar weight volume right i don't understand there to be any evidence in the record that lead shot is not such an animal there is not specific evidence from an expert know what is there documentary evidence to to introduce sort of a no we did not history book or something that you know we did not which are just that evidence because we thought it was clear from the record that they weren't disclosing anything but what was in here which was something that functions like rubber and they did not try to make a claim in this two to lead shot nor do they show something that functions like robber in the context of being non lethal consequence wh lead shot function like rubber in the context of being non lethal when the bag is properly folded and everything else is done in accordance with their inventions closure well i think because i mean i've used isn't that isn't lead shot patent we have to go well beyond to try to infer whether you could use lead shot and if you couldn't use lead shot now we're not talking about a projectile like they had in the five six two which is a much smaller projectile you know one which has to have a smaller weight now that we've expanded to a thirty seven millimeter a forty forty millimeter which the a call grenade launchers for example if you put that lead shot in there you're pretty good to have much more than non lethal consequence because we're adding a whole lot of pack  so probably use for crowd control yes they are i would say no because it's not necessarily disclosed i would say it's probably obvious that you could use that well that is not necessarily disclosed and the court has other times said another way of determining that the test of whether something is necessarily disclosed is whether it is immediately discernible in other words can you look at that and it is just a mediately discernible that in reading for example you could use something else other than rubber pellets with that if it be immediately discernible that that's like shot we consider that no nor did their expert say that i'm from my problem it began  fits but that yours i would agree nothing in this entry language gives them nothing if i accept your argument they have to close rubber and nothing else but they clearly disclose something else the question is what is that something well they could have claimed it that way is what i'm saying it's not a question of what coverage they get it's a question of what they can claim what they can actually put in a claim and have it not be new matter they could have a question what does that disclose that yes and what i read this disclosure to include robert and something else and i'm not understanding from you what that something else that is what i'm saying your honor is it doesn't necessarily disclose lead shot it could be a lead shot there is something else right we don't know what that something else is yes and what i'm saying what i'm going to actual words they used was something that has the same weight and density as robert particulate ledge or particulate matter weight and they could have they could have put that directly on a plane and that clearly would not have been new matter and it clearly would have been necessarily disclosed ok they couldn't put that language the language from the seven four two patent and it says actually pellets and that would have been fine lot think their argument if they did they just call that lead shot where you can't do that that's the question the question is whether it's necessarily disclose whether it's in the media only discernable the question is not whether it's  that's essentially what they're arguing and that's what their expert says is lead shot is equivalent to that lead shot is obvious in view of that but it isn't inherent in that it isn't necessarily disclosed there could be many many other things other than  and we're talking about the disclosure here based on the whole disclosure what they can claim and there's nothing in there that says that the well if you're going to use something heavier of a heavier density then we can you know have a much projectile and in fact when you're reading the whole thing it talks about the size of the projectile being important in the shape of it and how you stuff it in inside of the of the cartridge so the key i think is that if they're talking about the projectile we're talking about a project all of the size that they give or at least of approval and size and if you're going to use lead project lead shot you're not going to have anything remotely close in size so i don't think that would fit for an ordinary person of the art with in the context of what a projectile is the other thing i would like to talk about briefly is the weapon shall now they'd essentially argue that we can disregard what the pattern says about what a weapon shell is and just rely on their expert but the court determined as a question of law as a question of law what weapon shell was and in fact basically like claim construction the court looked at the seven fo it says actually you know and i'll quote to you both these weapons and associated shells are intended to be referred to by the designation weapon shells and it going again nowhere does it say and they could have put it in there pretty grandparent patent they submitted a patent only on a twelve gauge shotgun shell and they made it very clear with their only referring to that and that's exactly what they claimed here they take out all reference if you look at the abstract they took out reference to twelve gauge shotgun shells if you look at the title and the title of the parent it says it's just thirty seven and forty millimeter if you look through out the drawings they took out all reference to shock and shells and put in there i don't want to look at patterns and ted but i think we can look at what they stated in the in the chain of state of things and see what was intended to be disclosed essentially not what the no i don't want you to look and i don't want to look intent a broad purpose but i think what we can do is say that when weapon shell was used here if we look at the other application it's clear they took out all reference to it and that is a means of definition not a means of saying this is what i intended my apathy or my invention to be thank you thank you very much section on weapon show i actually read that section entirely the opposite i view that more as a more definitional tours thirty seven millimeter weapon shell and forty eight millimeter weapon shell and it's simply saying that those are among the types of weapon shells that there are but you also claim those who claim those are specific to the coin but that they are and they are as as judge moore pointed out are listed in column three for illustration purposes they roll but you also