appeals for the federal circuit is now open and in session god save the united states and this honorable court good morning all before we begin our proceedings with our case i just wanna just exercise a little personal privilege this is the last time i will be working with jennifer bayh lists who is our courtroom deputy today as she is leaving for greener pastures  later on this month and i just wanted to tell her how much we've appreciated all of her efforts on behalf of the court and all of her good work these many years so thank you and we wish you the best of luck and success j is necessarily will happen and it is inherent now that the parties specifically address inherent at the board level i don't believe i believe the answer is no but if we are we are we saying that the label doesn't matter and whether you call it a parent's the or disclosure or whatever it's the same test are you arguing for a different test are you saying th that that is correct the formation of two dollars g b is is going to happen it's well and it's going to happen for sure it seems as though it's likely to happen but not for sure that it's going to happen isn't that a fair summary of the expert testimony for both sides here well what dr thrasher said that it is highly likely to happen that is correct but it's it's you know in terms of the gives free energy it's highly disfavored that it's going to go the other way and in fact he shows that even at the higher temperatures of examples thirty five and six it's going to go to through two  under the sun it will it will likely happen as you say mike i mean there are specific requirement in the claim for a specific catalyst there are and these were no move to twelve very three excess whereas in examples one and two without the catalyst you see the formation of two hundred and forty three d p you also see a little bit of formation of excess but with with the added catalyst you can see that the  discloses one of the catalysts that's included in the claim and the answer to that is yes it does there isn't an issue about that correct i'm sorry could you repeat the question we have two separate issues here it seems to me one is whether the reaction using the catalyst produces two hundred and forty three d b we've been discussing that as a separate question as to whether you specifications discloses one of the catalysts disclosed are claimed in the client and the answer to the latter question is that your specification specifically describe using one of the transition metal catalyst disclosed in the client right that is correct that is correct but the focus on one example shouldn't preclude suggesting that your specification has to disclose all of the catalysts of the coin or is it sufficient for written description to disclose one of the gather like i don't know if i'm asking the same thing judge dyke is asking in a different way but let me try it only with the list of catalysis use an example and your expert testified of the three claims catalyst in the count now the higher the boom case it's very clear that when you're talking about written description for an interference count what you need is all of the limitations just heard my opposing counsel argue for a new standard for a written description that they were looking d for whether the description is discernible from the text that is not in the briefing and so that argument has been waived but the law is clear at this point written where there is an inert packing material there's pre contact with corey but there is no catalyst to use them to get to the examples examples wanted to know catalyst used but two for three to be produced but what happened when the where they repeatedly say we are not arguing inherently but this is important because below before the board they did not argue express disclosure either and i would like to refer the panel to appendix page twelve of the final round decision where the board said what does the record disclose as to what the determinant for are as to whether one route rather than the other and the following does it depend on temperature for example if your honor the which root is actually followed is unknown in this case and that is why the inherent decay fails we don't know now there are a lot of things that can affect which route will be found the conditions the type of the temperature those to those do the roots exist and are possible and as we know from the agilent case that we started in our brief you cannot establish inherent see through probabilities and possibilities and so now in there pointing to dr thrashers testimony about these gi turn to the prior art to try to fill the gap and express disclosure because it doesn't have inherently and it doesn't have the text and because the text is absent to have to turn to something else but you can't fill gaps in your written description with pri inherent inherent speed with written description and there's a good reason why you can do that and that's because if you allowed applicants to claim subject matter that is merely obvious by citing prior art you would never it would swallow the rule for insurance and you would never have a that point and we know that when you look at off point our that is also insufficient to fill gaps in the description and we started that f w p i p case and the board of trustees of leland stanford university case both of which say if you're talking about a describe preparing to for three d being from one dollar to forty three dollars in the presence of all three claim catalysts and we know that written description requires that you provide support for the full scope of the claims so one of the three mostly under budget throughout the proceeding when you have unpredictability the synthes case that we said in our brief area case that we cited are great all of them say you need more disclosure and what do we have here we have dozens of you require extensive testing to figure out which catalyst works on which reaction so you have two potential reaction routes and i think that this gets back to your question when you're two potential reaction words and you have a bunch of cat and you think there's some catalytic reaction going on the question is going to raise which route is being catalyzed and we don't know that because their specifications doesn't tell us and that's why the board was correct or not finding heresy as well and fission to the laundry list not supporting the description of the other two elements of the claim but i want to talk really briefly about the gives free energy equations that we heard so much about this morning those are not so emphatically clear to show what absolutely must occur in the presence of a catalyst whatsoever and as dr sanford explained to become inaccurate we're talking high temperatures we're talking free radical prophecies where suddenly they break down and kinetic measurements would be better than thermodynamics and so the board had all this in front of it and they decided on a matter of fact against a route in this circumstance not address inherent she specifically we talked about the express again we were relying on express disclosure and we find that it is there and you know specifications doesn't provide an expressed displeasure there is a basis for findings in here and they cite opposition paper to opposition to paper seventy one do we have that in the record  now i think you're telling me that the board is just wrong page twelve in its opinion when it was describing your position the board says rao opposes motion to arguments whether you call it an apparency or express disclosure your theory is under expressed disclosure that someone skilled in the art would have known that it was necessarily happening which seems correct to be very similar to the specification doesn't say that expressively so you're suggesting that the non the less can be an express disclosure because someone skilled in the art well understand that was necessarily happening the contrary to that that will form of then his own opinion that it could for this year and the message are experts testify that column seven and eight of the specifications show and express