this court and its predecessors have applied the rigorous legal standard friend to support by inherent so that look rigorous legal standard requires proof that the missing claim element missing from the reference was necessarily present in the prior reference possibly present and even probably present are legally insufficient as a matter of law the board decision in this case misapplied this legal and controlling standard instead the board will and i quote it is only necessary to quote take reasonable steps to find a similar material to that a variable at the time of the reference not reasonably reasonable not necessarily successful similar not substantially identical in a  necessarily disclosed in the reference what do you think is is required there is no such thing is complete certainty in this world so how what level of certainty do you think is required something close to it and where you have options where there are defined options that were called available and where the report the reference fails to identify which of those options are the one that was in fact reported in the reference then there's no one here answer and it's a tough standard but it's a rather rare events because what we're talking about is a reference that has a missing piece already it's got a missing claim element so we're going to build that into in this case we've got t problems the first one is that we're not dealing with the conventional details of a chemical compound as for example was the case of spot at which they rely on my spot of which that lie on and which was determined because there were disclosed in writing monitors identical to those in the past when i'm dealing with that we're dealing with ultra high molecular weight polyethylene which we know from lou the reference itself is dramatically different depending on what happened to it and here we've got five different options of what that ultra high might have been it might have been ultra high without modification it might have been ultra high with p t f e fillers it might have been ultra high with carbon fillers was the ultra high material at the time that lou obtain the material from a company called dixon and dixon had gone out of business that was another company by another name that could people was at work for was involved with and they could give him self admitted literally no personal knowledge of what was manufactured at the time of loop so lose references missing a reference type a reference create a reference number but i know there were at least five alternatives ultrahigh available at dixon which were these five that i've already listed and we don't know which of those filing reported by lou and certainly  relied on could people was rather fragile recollection didn't know either so we've got that major problem and those five alternatives alone in view of the case  it's a matter of law and this court has gone for time and time again reverse this kind of reliance of inherent in brain there was a material that was available at the time but because it wasn't shown to be necessarily present in the reference the c p a reversed or determination in finnegan this court reversed the i t c inherently determination where the claimed element was only one of two possibilities let alone five residents or nine reversal of the i t c in rate frieda not for publication but cited this court reversed again the p t a the inherent c determination where the claimed element was one of two portable or not not sufficient as a matter of law and then and roberts and the court did the same thing reversed inherently of the p t a being stated something i think is pertinent the board's analysis this is a quote but it applies to this case the board's analysis rests on the very kind of probability or possibility that this court has pointed out was insufficient to establish and parents and so on that basis alone i would suggest that inherently fails as a matter of law and if the decision should be reversed we've got other problems as well with the report and i should know that lew himself recognized it's very difficult this is in writing in the reference very difficult to predict the effects of the radiation on a problem or because it may vary with material that's an appendix one twenty five and also he reported having two different materials we don't  wasn't the numbers he reported no numbers and he said these two different materials that he had were different in structure and different in behavior and he couldn't explain the difference he had no explanation so you were switched from small to commercial radiation unit doubling radiation time varying the radiation temperature by sixty degrees very very in the dosage rate varying the total dosage and adding heat absorbing glass containers those sixty v a sions also doom the inherently finding of this board and as the case of glaxo v ought to be subjected to the absolute identical tests they don't use they're not relying on the disclosure of the referenced self they're relying on extrinsic evidence bob what might that reference apply to if it had been built later in the past and it was vapid dictated in response here on the contrary there are no democrat a democrat chemical structures to lose description and the records completely silent because of the type of ultra high that was used with this there was some discussion i guess before the board about the problems that you have alluded to with respect to the radiation differences in the devices used and so forth like that all seem to get resolved and i think lew says something to this effect that with the proposition that what really matters when you talk about the radiation is they told us what doesn't matter how you g there what matters it's where you get done i mean that's if that's true that's or takes care of a number of your deviations it seems to me doesn't it certainly doesn't take care of the glass containers it doesn't to cure the radical difference in sixty degree temperature variation have major implications that's that's in  says at eight one twenty five very difficult to perfect to predict the effects of the radiation of a polymer and also at ninety three appendix ninety three the reports small chemical changes from moderate radiation could cause large changes in physical therapy to physicians that's saying had a different problem now three actually can produce unpredictable results fine but that doesn't say that different ways of getting to that total amount of radiation have different effects right but i think that the here for example the glass container heating in the temperature variations are both factors that great unknown results in the in the changes morning your honors may please the court but let me start by taking on the issue of inherent see which is what my colleague addressed first there was an extensive factual record be unlikely to see  actually developed because we were running in parallel with the district court litigation which is why there are expert reports referenced depositions of both experts and not experts there is an extensive factual record the the examiner and the p t have considered that factual record and made factual findings that this court looks at for substantial evidence so what we're looking for is is there substantial evidence to support the board's factual determination that the inherent seat in little was shot at the end of the day we frequently see in the cases the p tab looks only at the reference itself and says i see that you're using the same process i assume you will reach the same results and puts the burden back onto the  making really go to did you get the right recipe and there are multiple reasons why in the record the board correctly determined as a factual matter that the type of high resin how medicare has a special definition of only four hundred thousand so its definition of ultra high molecular weight polyethylene is much broader than what these references are talking about they're talking about of a narrow subset of that so we don't have the situation that we have in all the in rape cases where you have a narrow claim limitation and this court has found in some instances that a broad disclosure that may or may not include that place was to utilize the general rule and do testing of the stryker reference when how medical tested the striker reference to say to the patent office this is not anticipat they didn't use the resin disclosed instruction and so for all these reasons when you got to the the examiner in the board having repeatedly factually considered these highly fact intensive arguments and rejected them concluded at the boards at the final hearing where the board asked a very specific question of the patent holder is there anything in the record here is there anything in the record that suggests that the type of resin makes a difference and how america admitted this is it a two four nine six which is the transcript of that hearing that it doesn't matter lines ten through eleven they don't have anything in the record that demonstrates that the type of resin you start with makes any difference with respect to the claimed properties here and that your honour's is the reason the principal reason why this court ought to affirm the highly fact intensive decision of the p that lou necessarily and always disclose is a material that has all of the characteristics all of the claimed characteristics of claims one through six now we are also cross appealing their determination the board's determination they claim seven through twelve were not invalid as the examiner file and this court may wonder because we're holding a summary judgment of not infringement of claim seven through twelve does this really matter the answer that question is yes it very much manders because that decision is based on the district court's holding that the claim term is limited the claim german a temperature greater than twenty five degrees c means between twenty five and below the melting temperature and in that argument how medical argued exactly the opposite of what they're now saying they're not saying that is the right limitation and they're using that to dismiss louvel which is an hour at one hundred fifty degrees but below they said their term of not limit and if that term isn't limited if an eel that a temperature greater than twenty five lou doesn't anticipate because it's too high a temperature and then they would come back to this court and say that zimmer was product is made at one hundred fifty degrees the same as lou doesn't french that's the argument they made below both as a matter of claim interpretation that the claim has no upper temperature limit and if the claim does have an upper temperature limit of one hundred forty degrees or less that a product made at one hundred fifty degrees c just like claims one through six other than this process limitation and the board i'm sorry the border found all the right facts wrong and then they stopped they ran into this four hour thing and they just stopped and they didn't complete the k s r analysis the board correctly found that the product the characteristics of the product described a claim seven through twelve exist in the prior that's lose they found them if you  one hour for one hundred fifty degrees you'll get a product with all the claimed characteristics the board also found that the lot and reference discloses expressly to a person of were very skill in the art that you should feet below them item that you're arabia so the board got those fact questions correct but then they stopped they didn't ask the to pass our questions which if one is there any motivation when i've got this loop product an hour for one hundred fifty and what a person of ordinary skill in the arm who knows that they can get all the blame properties one hour for one hundred fifty degrees expect that at one hundred thirty degrees you could also get those claiming properties of course they were why well because of all the prior art many of the prior art references do get that result and the prior art tells you expressed a lot and says expressly how long you must keep and its heat until all substantially all of the free radicals are gone just like the dole reference just like the de boer reference which go a little bit further they say get rid of all the free radicals and it's a matter of chemistry that's what this is all about once the free radicals are gone your claimed properties are are there any free radicals know their god the references tell you that they're gone will this oxidize when we age it no because all the free radicals are gone what happened to those free radicals so the person of ordinary skill in the art could almost we know they're not on top of the known k s r that they have ordinary creativity they could almost be an atomic time and say one hour hundred fifty degrees and my incented to go below them outgassed laughton tells me exactly to do that do i expect that i will be successful in doing that yes of course i do and again for the very same reason that how medical are offered to the patent office to get these patents in the first place the general rule where how medical sad every ten degrees you go down you can expect to double the heating time and vice versa so a person of ordinary  reason that how medical was able to get each of the predecessor patterns because the patent office said wait a second it looks to us that stryper anticipates strikers got the same process conditions or an equivalent process condition to fifty degrees at one hundred forty four c america said no no you've got to apply the general rule when you apply the general rule you see the stryker is just the other side of the process conditions the total time temperature reading combination that we've i want to see what you think he's saying with the other products that he refers to he talks about ahead our view your honor is that the only two possible products that he talks about in any real it's forty thirty and forty three and that we got one of each of those and we tested them but at the end of the debt we should be faulted for having done substantially more than we needed to do because the record that the examiner and the board considered reflects strongly that there it doesn't make a difference what kind of ultra high molecular weight polyethylene used and that is in fact the test for inherence and that it shouldn't at page appendix page six forty one to six forty two that there was ultra high that he testified about blended with carbon fillers and then he testified about a blended with carbon fillers is it where is that that's at six forty one to six forty two  at the same set of pages he then testified about blended with other things i can get the lines i have and then he testified that blended with p t f d at six forty one and two and finally people are it's forty one and thirty one take my word for it and we have no documentation to support whether it was right the first time right the second time or wrong both times but we do know that it went on to testify that that all these different alternatives and there was one more by the way your honor that one was resins from other suppliers that they then resold and that's at i believe page appendix page six sixty so that's the fifth alternative so we've got  new age we've got two different types of lands that we've got blended with other materials and then we've got resin from other suppliers which they then made up and resold to customers and not this record is completely silent on which of those were involved completely silent so fuel kept it off by saying he had no personal knowledge of these things in any event so it's a pretty slippery record on which to base a necessarily present standard but a couple  material that ultra high when we're talking about the properties and if the court wishes that's it a one twenty five page one twenty five so in terms of the cross appeal this was a brand new argument in terms of claim construction and we ought now ignore the term annealed zimmer's first to start from making that argument because a lot they  made at the district court they said in the old counts and they want to summary judgment of not infringement they've waived the argument it's nowhere made in their reexamination petition they say well please look at footnote ten one of our supplemental papers where we say if the court if the board were to find a neil didn't mean anything then here is the result but they never cited a case or pulled the board in the re example titian that the board had to ignore the term neeld and presented in the end in their petition for examination and regarding the term and needled which is in claim some of the twelve they have invented a new argument and it's not it's not explained no references that lead nowhere if we start with lu lu tells us that you probably should not be the radiator or heat because you get severe degradation of properties he says that the abstracted page fifty eight and at the end of his article on page i think it's one ninety to heat but long was only six minutes and it was high density not ultra high and who says those are two completely different materials and they behave completely differently and we have some heating above them melt some heating below the melt some w that there was no reasonable expectation of success that was established as a matter of fact when you start out thinking well everyone wants to pursue holding freedom but nobody ever got there and certainly not aloof who said that version of that argument but we did say that claims one through twelve were anticipated by the inherent disclosures of live so we made that argument that was out there in front of the board right away because we had a mark in the hearing and because we had a marksman ruling that said claim seven through twelve are limited to one hundred forty degrees or less that ended up not going anywhere although we did it oral argument raise the rate or argument we said at a two five to six that there isn't in re thorpe argument here and in our briefs we were it was indicated that we didn't say anything in our briefs about this about the waiver issue we did  situation this court said i've got two sets of claims one of which is is invalid we found it invalid the other of which wasn't found invalid but all it adds is a process limitation we can't do  your colleagues how medical made a request for reconsideration one through six that's correct your honor but in all of that it's the most important thing here to your office is that the prior are the board to reconsider its determination that there was no obviousness of claims seven through twelve the board's decision on claim seven through twelve i don't think there's any question about waiver we haven't waived our ability to come into this court and argue obviousness of claims seven through twelve that was fully briefed to the board that was argued before the board and the board went the other way the fact that we didn't seek reconsideration of that determination doesn't prevent us from coming into this core and asking that this court reverse the board's determination of no obviousness of claims seven through twelve so the waiver just goes to the issue of the process only to the amgen in  your own and as if i can if i can conclude as to that all of the prior art references we know we can make this and a higher temperature the only question is can we make it at a lower temperature and we see the prior again and again and again saying you can and telling you in terms of the length of time you need to get it we know you have to heat it for a longer time lower temperature longer time of they know one thing they know that each of the references that was cited to the board provides an end point heated until all of the free radicals are gone and once all those free radicals are gone you will have all the claim properties because they relate to getting rid of free radicals i think the court for your time and attention is more thank you thank you thank you