was that if you took oxycontin on if you took eight hundred fourteen by proxy the only known a fourteen hydroxy at the time and subjected it to setting at the time under commercial conditions or under conditions claimed up to the product are if there is no reason to combine the references then there is no reason at all for the product to disclose what's in chapman's claim even though the claims are not restricted only to eight out of well you claim starts with only if the known process steps for identified and predictable and finite and there was nothing predict the point here because there was nothing predictable to show that eight out of the would turn into isn't a purity here that has a double hydroxy and because it converts to a fourteen in my garage with a double on then one would do these two steps however there was no reason to put these steps together or to apply them to oxy code on until the discovery underlying the plant dig the pike but aren't you still just applying well known hydrogen nation steps the actual solution itself is fairly simple menchu understand the hop however no one understood the problem nor did anyone have any incentive or reason to dig into the problem the way that chapman did it was there was a common belief that he just needed to hydrogenated away and that really wasn't really what was going on  gravity only to was elevate and lower the wire and the feet but there was no reason to apply gravity in that particular process until one knew that the problem which nobody knew of before and knew of the cause of the problem so you know if are many steps are steps however there is no reason to combine up or apply them to a particular process for people process or to a particular product until you know something about the problem or the cause of the prop naida so you have to get rid of that anyway the product can contain eight beta salt carried through it's possible these reactions don't go through ten reason similarly by dehydration and h would move if you're dehydrated you may remove it but this is what was going on and they are the atlas taking the eight beta that was carried through to the setting step and making that into a stable benign salt so there is actually no reason what you found in your that when you treated high concentrations of acid fifty fifty at high temperature you got a fourteen hour drive to go and you're treated under something that we closer to commercial and dishes which was to normal age c l you got a stable benign s not you got something else now this court should take notice of the fact that reactions are generally run under milder conditions because complicated molecules like this are degraded when they are subject to harsh conditions as in the treatment of  and commercial set so really the fact that we're dealing with here is commercial pharmaceutical production the board actually found that kasztner agrees and in that instance we found a pr companies in this industry had one of two choices they could either get rid of the fourteen actually putting on in their products or they could submit additional clinical data both produced and johnson that the the real parties in interest in this case chose to further purify their materials and within a period of less than a year arrived at essentially the same solution the differences in the way the two parties have claimed their approach on the one hand chapman has claimed essentially t was is the key here and he discovered her clients have two issues with they are on of the first is there's no indication in the specification of the ninety seven application the chaplain application or any of its priority applications properties than the eight i swear it doesn't say that the fourteen hydroxy arises by virtue of this it out by some or as opposed to being carried over through the process and importantly neither the specification or any of the expert evidence that's been submitted indicates that there is in fact a difference in that in the properties and a difference in the behavior of the two isomers when submitted to the conditions called for and either of the parties battens commercial or our it contains in this case i would submit that the board correctly identified the problem that both parties were facing as the presence of this potentially toxic fourteen drugs the coating on in commercial actually code on products so the board sets the table with the person of ordinary skill and they are faced with this problem of looking to the prior art as to what might help them to remove this impurity and there are a variety of teachings in the prior art there's a teaching that fourteen  and so they solve the problem with the known men you just incline so the speeds mash use gravity to compensate for the speed mismatch here they use the known methods of hydrogen you didn't know you had to do it until you knew there was it out of there right and so they're the ones who solved the problem with their respect out of the situation is a bit different in the idle case there was no indication in the prior are that the speed mask mismatch was the cause of the ripples in the defect is there anything that indicate that there was an alpha eight alpha in the prior art in this case not not in the record in this case and that's why it's such a problem that we're now faced with the eight the first time in the opposition briefs the chaplain submitted before the board they took the position that chapman was the first to discover that eight fourteen was this this rogue byproduct it was giving rise to the fourteen product in reply as we read there their claim and as was pointed out of a moment ago to identify the eight alpha company does the problem  no your honor i would submit that the onus was on chapman to bring forward evidence that the prior teachings with respect to the eight beta isomer were not applicable to the eight out of the that's the presumption in my question if we read their patent to disclose the eight out the problem and they have disclosed to disclose that the solution is as they did their process then they have connection with the obviousness determination below but what they do show is that the circumstances under which a fourteen will convert to fourteen and vice versa are not necessarily clearly defined in the prior are so it is not safe to  with all this priority for them would not have assumed that the eight fourteen beta was a harmless or potentially harmless byproduct the teachings in the prior art show that in fact under conditions of treatment with acid the a fourteen appeal our position is that the this this distinction between the isomers was not properly presented to the board and if we look at the progression of evidence below i think that becomes clear that it was and so you're saying th standpoint the board reached the correct terminations the difficulty is that the issue was not framed for the parties to fully explore i was just saying if he's relying on a doubt as a problem he did in fact identify that specification shows a figure of eight alpha but then he went on through the remainder of the declaration to speak of the two isomers together in the second baldwin declaration dr baldwin and anyone identified the are at all before chapter i don't have any information on that one way or the other and that is one of the difficulties serious had had it been made clear in the proceedings hello that chapman believe this is what it's invention was either in the the figures one and two are examples of this relationship there's nothing in the specification to tell the person skilled in the are who if if we accept japanese position that outfit was not known before this person is killed there i would have no idea whether chapman saying this is different from the eight beta rephrasing this is the same and the passage that i just read would suggest to the person skilled not that in fact the relationship would be the same after you make the same argument on wafer with respect to the commercial conditions placed on appeal here too and you want to cover that briefly correct certainly the commercial conditions argument appears to be an effort to distinguish  extremely extremely a set of conditions higher temperatures the argument is that that wouldn't be applicable in commercial conditions person skilled in the art really wouldn't take anything away from those references as bearing upon the problem at issue  position is that this this concept of the person of ordinary scale in the art being focused only on prior art teachings in a commercial setting was not framed before the board would you characterize this is take your early unpredictable arts where it is difficult to absolutely predict what you're going the outcomes of particular processes on particular starting materials and you're right i can only take my lead from the views of the experts in the record and i would submit that dr baldwin consistently throughout his expert testimony in the case talked about him being the expert for chapman  took the view that in fact these regimes these prophecies are predictable and now interestingly has as a backdrop to this a major argument that kasztner was was advancing below is that there was not sufficient support under section one twelve for the broad claims in the chaplain application to say conditions suitable for a particular reaction are conditions sufficient to perform a quick particular reaction was not enough to put one of skill in the art on notice as to what exactly the parameters would be to sufficiently carry out those reactions now that argument i would submit this is really not an issue before the court but if in fact we're talking about  conversion of an unknown isomer eight alpha to fourteen had actually come to know and were told not to an expert testimony but i would submit only through attorney argument that the properties of this isomer are different from those of the known isomer this one twelve issue becomes even more problematic how would one skilled they are faced with a brand new isomer that they're told has different properties know what these conditions suitable are to perform the reaction so the expert testimony hasn't developed and the record certainly from the chapman side was consistently to the effect that the eight fourteen to fourteen and then the fourteenth x a code on reactions are predictable that a person skilled they are told you should perform these two the sequence of reactions would know what parameters were appropriate at the outset castner's expert dr stork took the position that that would not necessarily be clear to a person skilled in the art at the point in fact some of the references discussed in the briefing here the  tata reference is to say you can't count on the fact that any given set of reaction parameters will actually allow these reactions to proceed now as the record developed and as more information was was found in the prior  the first two eight fourteen i had a dog no the end no focusing on eight alpha which you are now telling us is the real source of the the  seven secondly which really made this argument highlighted this argument was not raised until the reply brief and we never had an opportunity to brief that and one of the reasons that an appellate court may look at something like this is under special circumstances particularly where the one party did not have a chance to address this however if you look at professor whelan's less declaration and that's an exception to the seven paragraph thirty four if you look at professor what one's first declaration appendix three thirty one paragraph thirty three appendix three thirty one of her thirty thirty four hour his second declaration a seven seven seven to ninety market demand being the motivation i said market that market demand was a girl which and opposition is a market demand is a goal which alone is not a sufficient reason in the case are to combine references particularly when the combination did not explain it parents of the new  then therefore one did that but what the k s our quote says it was when there was a design meet or market pressure to solve a problem and there are finite finite number of identified predictable solutions a person running or skill has good reason to pursue those known options within his or her technical grasp but here there were no identified or predictable solutions since neither which i was discovers were not now i find it rather odd that mr negative at one point says a jew to say that in your specifications any point this is our invention again at the board level it was mentioned in arc of the board level but it did not become until proxy became a reference and that's when we submitted declarations to that and also asked the board to preclude proxy because we didn't have a chance to argue however this does point to the exceptions of the fact case case and some of your other case law where we did not have the chance to argue below a particular point and where we should be able to argue it now it's been fully briefed on all sides of address completely