new issues presented on this appeal require the court to consider do novo question of whether claims to one invention patently distinct from claims to another and in this particular instance to determine whether one set of claims is non obvious in view of the other now the issue here of course arises in the context of a patent a ference purpose of which is to determine which if either party is entitled to a patent on the benches in question but here if the decision of the board of the district court stands and the single interference count that has been declared here which is stryker's if you combine the two patently distinct inventions the consequence will be not only that will be lost to strike a forever doesn't figure show both show both the claims in one device i'm sorry are the figure seven show ball quite one device absolutely your honor and that of course in our view as of the carbone invention date is car bombs invention to put them together obviousness in this instance would beat him in at the senior partner should be determined as but according to conventional principles of obviousness what would one of ordinary skill in the art add of the invention date of bitter man who claims this invention as it's known to be as of november two thousand i don't dr both dr  honor the characterization of dr reid as having it made it on cross examination and that is deposition that claim one of the intersecting aborts is obvious if you are claiming a team we contend is not a fair reading of his testimony at most speaking of the obvious not to use testimony but we don't have the witnesses here the judge or the your honor we are dealing there with at most opinion testimony of experts if we look at the objective evidence in the record i asked what obvious after november two thousand and then later go to supported admissions of the experts and we contend that to the extent the judge made a finding of fact about what is obviously what is not that's obvious this is a question of law and underlying mableton underlying facts based on underlying facts here what are the sack it's a fact the most pertinent progun fact of what was obvious to those killed in the army november two thousand as to whether one skilled in the art in november two thousand faced with nothing bu intersecting planes would have considered it obvious to modify that structure to create the second of the at least one bore and we no one disputes the fact that the language is susceptible to either one b or a second one the question for obviousness here is would it be obvious to orient the second war faced with just you know the second planes at an angle but didn't then dr friese say it would have been obvious for anyone to just snip off the corner and and change the the seat the angle of the seat and arrive that both intersecting planes and intersecting axes that your honor would speak to the obviousness of claim eighteen overclaim what and dr three didn't quite say it would be obvious to do that he said that you might do that he also suggested if again if you look at how peter meant that if you could attribute period from the inside and then you wouldn't simply cut off your honor i think it's important understand that we're dealing not with pieces of wood we're not hanging drywall here we're talking about very very complex devices prosthetic devices that are going to be implanted in the cervical region of the spine the suggestion and this is the lynchpin of the entire obviousness argument going from claim eighteen to claim one is that it would be conventional to drill a second bore normal to the plane of the second plane but here there is no evidence that one skilled in the aren't remember two thousand would have done the them in approach perpendicular to the plane of the end of the item i would suggest your honor respectfully that dr periphery to the extent he gave testimony on cross examination that is has been characterized as an admission in the abstract after pretty was talking about sure you have a plan to service the normal way to do it might be to drill normal to that surface but he was talking in the abstract again we're not hanging drywall he made it very clear in his testimony in the context and only got the three of the two experts was qualified to testify about pedophile screws in these types of devices he said no it would not be obvious even if we look at the cross examination itself if read in context we go back to the morning of august twenty fifth which is a couple of pages for the testimony that is quoted where dr three purportedly admitted that it would be obvious to drill the second bore and an angle  at least of ordinary if not extraordinary still new faced with the identical problem did not find that solution now that although this rises in the conflict of pavel distinction of one over the other it's the identical principle to that which this court applied it's considered a finding of fact which i don't think it is that the conventional way to drill a bore is normal to the plane of a surface in the context of a penta screw which again we're talking about the size of a hair pin and we're talking about carefully crafting the head of that screw the richest maybe the size of a tic tac then we would contend that is clearly erroneous and there is cross examination of dr ants in the support that even in one of the preferred vitamins of carbuncle where the contention is that carbone drills a second bore normal to the plane that's not how the device is created it's one of doc of the car own preferred embodiments you could have intersecting planes yet your intersecting borders the second war is not is not normal to the second plane it is at an angle which suggests that there is a distinction drawn between the plane and the board this isn't a simple matter of let's take a billet of metal and just drill where we want to be evidence we have here and frankly your honor i don't think there's a finding of fact that the judge made the judge basically reach a conclusion of law that this was obvious based on what it perceives to be what she perceived to be admissions by doctor establishing non obviousness ironically of a pedophile screw invention because the defendant in that case had failed to come up with the same solution now the posture of the case may be different but the principle is identical the single most probative evidence as of november two thousand and two what would be obvious to one skilled in the art is the failure of the biederman inventors to do this and again the linchpin of the argument the only basis at the end of the day upon which the district that in the context of these devices it is independent where you drill the bore from how you cut the plight one does not relate to the other is a complex device is to go through a tremendous amount of engineering  invention by virtue of the way it is accomplished is the only device in this record that doesn't sacrifice the integrity of the coupling element which could be devastating during surgery or that screw head comes out of breaks or anything of that sort you get a lower profile you get increased and you lay ssion where there is absolutely no contemplation anywhere in the bittermann application of the possibility even of the increased angle a sion you want to save your rebuttal times yes i do your honor ok thank you hearing a trial bench trial concluded that stryker had not met its burden it wasn't addressed on oral argument but i did notice in the briefs a whole lot of time being spent in strykers brief on this written description issue  written description was not before the court in this trial the written description issue was a contingent issue and has been from the get go fluting even in front of the board so the written description issue was an issue that would be region if and only if it was a determination that in fact count one the interference count the clear did include two patently distinct inventions i do want to respond briefly on this notion that mr biederman that loops biederman tried respects one doctor for reading considering whether or not in opining that there were in fact two patently distinct inventions in count one considered one item of prior art and only one out of one out of a prior art as opposed is a question of fact and that issue was never reached by the district court as agreed by stryker took the position that that's an issue the district court did not have to reach with if it concluded that in fact count one did not include patently distinct inventions but moving to the obviousness issue so out of the gate dr for reconsider only the single embodiment or the single item a prior art and point number two in opining that the intersecting wars and enter sect inc planes were patently distinct doctor free diddy exactly exactly what mr bush did in front of the board that was their expert at that point and what he did was he he simply focused on the fact that count one county teen or claim wanting to claim eighteen so the intersecti planes were different well that's an anticipation age and anticipation isn't in question here we're dealing with obviousness the second thing that dr for reported on the bit you've got anticipation differences that are not resolved over a long period of time does that tend towards a finding of non obviousness well no because i think from an anticipation standpoint as you pointed out she said traitor we have figure seven carbone that in fact includes both and although this wasn't tried it wasn't part of the trial record we do have figure three embitterment which which we maintain doesn't fact include both as well now from a so in the anticipation issued judge reader was was strictly we strictly focused on the language of play me team and the language of claim one so if you read the language of claim eighteen expressly speaking you don't see a reference to acces or bores that intersect so that so that's the point the other point dr free made was the fact that these things have advantages if you have intersected bores you have a certain set of advantages that you might not get with intersecting planes and vice versa well that doesn't go to the issue of obviousness and so the same evidence rig apps that the board took striker to task for are evidence are evident in this record it was simply no explanation as to why these context generic statements that the most common way to of for a board and would be a plane perpendicular to the axis what's what your reactions i have two reactions to that your honor first of all if we look at the trial record and we saw we see what dr friedman first up the issue of trout water were these medical devices i mean it's not as if we were trying a case in the abstract so everybody was on the same page as to what was an issue and everybody was on the same page as to what a person of ordinary skill and jaros and so the question put to dr free at trial page one hundred three joint appendix twenty seven thirteen was as follows as of november two thousand people ordinary skilled artists and in the relevant ar here would have understood that the standard way to end a bore is in a plane perpendicular to the axis of the bore correct answer i believe they would have viewed that as the most common way question the most common way answer right question an obvious way to end the bore correct answer an obvious way so look we're talking about a person of ordinary feeling the arts here the question was put and here we are talking about a person line we begin with line thirteen with reference to figures twenty eight a and twenty eight b beginning with showing a metal blank used to make a couple an element and then if we so there's an initial discussion and if you drop down about the first war and the second board then there's an additional discussion at line forty actually forty two the first bore is preferably formed by drilling from the upper end toward the lower end of the  it lays it out and this is completely consistent with the way dr anywhere is there anything that says that the the normal natural preferable way to do it would be normal to the plane oh i misunderstood your question there is no meat that was admitted at trial but i thought the question was is there any suggestion that this way of dealing of drilling a bore does apply to these medical devices that's what i thought the question was in the answer is well yes but i won't try to be more specific because that the district court's opinion says the doctor for a agree that the ordinary skilled artist little would have understood that the most common way or afford it would be in a plane perpendicular to the axis of the board that's correct and if i understood mr mensa correctly  argument was that's a nice general statement that might apply to anything whether you're repairing up a wall in your house or anything else but what does that have to do with the obvious seven and i think that both experts agree that figure seven demonstrates going about drilling your convention aboard conventionally so that you have the belong to the last of the war being normal took to the plane and if you look at column thirteen in karbala it explains you drill a bore and it is with ultimate ultimately with reference to figure seven so my point being is that this way of drilling bores that this is something that you just drill bores when you come when you when it comes to medical devices it is i think contradicted by the car going to pan itself which explains how to go about dealing with these boards so your argument is that this whatever statement free may were made in the context of these particular devices and therefore has some very course your honor of course that's what the trial was about now we go into the factual findings and i don't know i mean the court is obviously very familiar with the record but judge you were right there gloria the court did in fact undertake an analysis both ways just detached whether or not there was indistinctness either in either direction  and after undertaking that analysis the court concluded that stryker had failed to meet its burden of proof and then still because i think the district court when actually further and found that that these things when fact were not out because she didn't have to go that far but the court did given given the overwhelming evidence as your honour's pointed out from both experts so i think your honor i left the panel has additional questions i'm i would leave it at that eighteen to come up with claim one we need a motivation to make the change everyone agrees to claim eighteen says nothing about having intersecting boards using the carbone disclosure against carbone conclusions and isn't that what is the subject of this entire trial again your honor we think more provocative than what carbone says almost a year after the invention date as of which we should be measuring obvious should not be used again let's look at what biederman did biederman did not drill conventionally figure to of what's said to be conventionally carbone figure two does not drill conventionally it has not intersecting playing with intersecting bores so absent the motivation that comes from the recognition in carbone that you get these advantages it's just not there as far as the striker meeting its burden of proof if there were evidence your own or other prior art that suggested or indicated the motivation to make these changes certainly we would have had it from biederman we were proving a negative and if in effect we could put in hundreds of patents the didn't show the invention we put in evidence hard evidence showing non obviousness as far as written description goes written description percent in the context of written description wasn't adjudicated but it was found  fact by the district court that peterman figure three does not show intersecting boars that was the only figure that was ever argued by biederman as even purportedly making that disclosure in the briefs they make reference to the declaration of their expert dr ensign which was not in evidence and he never testified about it as far as we're concerned if there is a finding on this record that i clear it said peterman doesn't have intersecting board didn't disclose it didn't think of it until four years after his priority date when he copied the carbone claims under those circumstances fall contrary to what's been asserted now that there is no such disclosure again i come back to the consequence of not splitting this count into two demonstrably patently distinct inventions is that can wind up with a patent which we believe will never be enforceable because it lacks written description but more importantly stryker will lose claims to which it is absolutely entitled to say that carbone included an embodiment where he drilled what's said to be conventionally he certainly doesn't describe it as such in the context that again designing these very complex surgical vices to be implanted there are independent considerations and again we've shown that they exist independent of each other you can have a preferred embodiment intersecting force intersecting planes with a bore isn't normal to the second plane we have to figure t you can have intersecting borders without intersecting planes altogether again your honor we contend that if viewed in its entirety there's no admission of obviousness here by dr perry in any portion of the testimony and it's not that not and it's in the record i would respectfully ask the court to read it all in context and conclude that there is no admission of non obvious of obviousness here and then in fact record as a whole demonstrate the non obviousness of the intersecting force over intersecting pla