their invention is informed corners of the docket you know that's exactly right your honor and so let's look within the four corners of this specification there is no allegation anywhere no suggestion no hint that the light guide is a genus of the fiberoptic species what other late gods are there besides fiberoptic there are any number there are there are solid glass like guides there are l e d light guides or any number of other another yes your honor some are separate devices sometimes you have a physician's assistant holding it sometimes it's fixed within the device sometimes it's removable with an device because you want different kinds of one very bright one broad i mean think of a flashlight where you are very broad but not as strong in others so you have removable there's all different species of like eyes but yes john i mean i don't think you want to doctor performing a procedure on the body without some external form of light but here  to hear the question is and remember the the language we're talking about is i was about to say this isn't a game of gotcha your honor where you know like posing where we all know that you know that that prescription information is on a also say it's in the first channel and that's different than the prior art isn't the first channel the channel it is a it's called the viewing channel in the patent examiner noted every description of the viewing channel and every description and lines i'm aware of are in figure three and if you look at figure three the light is coming in that's a camera so the light is that's a lens and thirteen is described as the lens so that's saying the light is coming in from the outside it's another way of saying that's that's taking pictures so that's not describing light going out that's describing like coming in and that's well described in the pattern there's  well in fact your honor their art and it in for example our expert dr mr waldron talked about this today twenty six fifty nine let's suppose you want to do two different things one requiring a wide source of light another very powerful narrow source of light you could actually put the light source and connect it to the working device so rather than having the end the scope being the source of light you could have in the one case the looper sector have the light source and then so you want to scrape it first and then you want to go in more finely and  put scissors or whatever i'm just picking things out of out of the prior art you can have the white horse attached to the working device and that's in fact what the prior art does that was a priority overcame grossi for example had a removable li coffee in it and they had experts who came in and said i know from looking at the outside that there must be coffee inside now we would say that's not sufficient but clearly if i now have a figure the exact same embodiment and i now can look in the cup and see that experts say then you've got to take that into account that that overwhelms the effect of obviousness find so here we have figure one a and figure three for that matter that actually show us what's have to accept that because what they say is that the entire the argument is we look at figure two and the outside the figure two looks like the kind of endoscopes we know have permanently effects like us now there are multiple problems with that analysis analytical problems not evidence problems number one as a district court found in the related litigation and is plain from the patent there's no claim that this is an improvement on the part of your article relies upon the prior art in fact it explicitly says this is a new and  so that's a problem the second problem and the more fundamental problem is that we see inside the scope so if it was just figure two if that's the only figure in the patent we'd have a harder hill to climb we think we'd still climb it but it would be harder but once you once you throw figure one a and figure three in the mix and we no longer have to guess what's inside the cup but they've now shown us what's inside the cup we now know what's water not coffee and here we now know there is no white guide in the working r i think this is analogous to your honor smith the nephew of the rape case that there are facts but if their facts are proving the wrong thing what their evidence proves if you accept it is that it would have been obvious to add a light  guy some channel somewhere that's what their evidence says i look at the outside of this and based on my knowledge of the art i believe i can see it in them i would expect it to be in there but that's not what the law it that's what well you want to maybe the closer analogy analogy is the turbo care case where and let me just make sure i get the language right this court found that even though the quote only viable location for a mounting spring was where the claim said they were still obligated to show within the four corners of the specification that there was a mountain spring where they said the mountain stream should be on the client here there is literally nothing at the at the board's argument they acknowledged admitted there is no depiction of the white god so what is it within the four corners what language within the four corners what picture within the four corners says that this inventor had possession he told the world to get invented a novel under scope and now he's saying but i'm just kidding when it comes ranks for lighting at the end of the rings thirteen does that in any way suggest a location where it would have to be since it has to provide light at the end of lines thirteen which is in chants i first of all i think that that sentence profoundly supports our position because if there was a light guide there as opposed to be really a connection for a lot like god if i buy a new d v d player that says h d m i connector that means that there's a plug there not that the cable the actual h d m i cables in the also something identified as the connection so i don't think the use of the word connection necessarily tells me whether it's permanent or not i agree i think it supports us but it does i think the point is it doesn't clearly evidence possession so the burden is on them to show within the four to some statements made by district court judge in mass justice in a related case i understand that's currently stayed correct ok what what we should we give those statements it seems like they're in a political order review and the only one the only place the all the only relevance we state is when they're trying to avail themselves of of the fact that it looks like the prior are and the district court said  and for that matter the examiner agree the district court said that you read the specification and they're not suggest to you that this is an improvement on prior art but rather that it's a new and disco that and particularly in light of the biomed in our gang cases therefore you shouldn't be you shouldn't be relying on what the experts say about it i'm not saying it i didn't think you were saying it is binding but i don't see a place for it exactly well if of rule of law and let you know if you agree with us that the fact that it's particularly inappropriate to say we can we're going to gap fill with prior art when the specification is saying this isn't any old thank you your honor may please the court this is a field turns on the question of fact whether substantial evidence supports the board's conclusion that a person of ordinary skill for playing their practical knowledge would have understood with reasonable clarity from the priority document the p c t that the inventor had possession of the claimed invention in other words of using a known end disco with a fixed light guide to practice the claimed medical treatment method counsel suggested the invention was an endoscope we respectfully now how did they get there the record showed that there were two types of i would like to ask your question as one of the things that i was very confused about was there's testimony and a finding by the  and his declaration explains a person of skill in the art looking at figures two and three of the priority document p c t would understand that what was shown here was the bonnet or kubota type of and a scope in other words it was the that's appendix fifteen thirty nine to forty two but looking at figure three what we see are a couple of things that dr isaacson emphasizes element eight which is the light guide connection and element seven which is the viewing two you can see in figure two and even more clearly in figure three which is to cut out the cross section they are permanently attached to the end disco now why does that matter that matters because it was undisputed that the optical components of an end to scope which include the observation and the illumination parts have to be aligned so they're always made in such a way that they are fixed together but that can be done in one of two ways they can be affixed to the end to scope itself for the bonnet kubota type show here or they can be affixed to this thing called the telescope which is concerted from the outside which auctor isaacson explained here is because you can see elements seven and eight figure three are actually attached to the under scope that teaches a person four yes i believe that's right your honor ok so so what dr isaacson and is explaining is what would a person of skill in the art coming to this p c t figure understand from it and he testified at great length and in detail showing these figures that looking at figure actually tackle that question head on although even if they had it would have been a conflict of evidence to be resolved by the court but they actually didn't really rebut that what they did was they basically sidestepped it in argued that well it would be  tically possible to take figure two and somehow design a different type of end disco in which the lead guy wasn't fixed but that theoretical construct about what could happen are not the test but then on the next page twenty two ninety of the appendix in the paragraph eleven we actually get his explanation and this is all it is he says even if one of skill in the art suspected that the lens or a white guy was permanently affixed or not from the drawings it would not necessarily have to be so and it's this necessarily cast that's erroneous and that that that's what the board found and they were right under vast calf's and under pose and that's simply not the task this court has has taught in fact this case is really very much on all fours with fast path where precisely the kind of error that it's asking asked the board to make and is now asking this court to make was corrected by this court in vast kathlyn the district court had made it in that case the district court in vast catherine suggested that there was this necessarily test and this court said no what you look to is what a person of skill in the art would understand not some theoretical construct about how the the device could be designed differently so to answer your honor's question i pointed to where it is in dr diminishes testimony they do have one other expert and that is mr walgren appendix twenty six forty nine  declaration we have the exact same problem he says in purportedly disputing our experts all he really says is i do not agree that this is necessarily number i'm sorry paragraph eleven your honor i'm twenty six forty he says i do not agree that this is necessarily so and then he goes on to suggest that it would have been obvious but not necessarily the case but this is not an obviousness situation what dr isaacson testify to very clearly and there's certainly at least substantial evidence of this is that a person of skill in the art would know that this it is the bonnet or kubota type of like i particularly here where as the board found this is not an unpredictable art they found expressly that so we have and by the way i should also note that the board's decision was actually fully consistent with many things that had come before the original examiner in fact i had originally found that the p c t in particular figure two supported the that there was written description support for the fix like guide the judge and jury in the massachusetts case came to a similar conclusion now at the c r u when the logic so  logic filed to enter parties reexamined quest the first one was rejected the second one which they filed on the eve of trial in july of two thousand and twelve the c r u granted that request but then after considering the expert declarations including dr isaacson and mr a u examiner withdrew all the rejections and specifically found that the p c t supported claims to methods involving a permanently affixed like i had because artisans would have understood that that was the case from figure two of the p c t now the c r u examiner later changed her mind but that was in response to her logics legally erroneous contention that the p c t had to disclose a light guide that was necessarily permanently affixed again it was this incorrect legal test and so when the case went to the board they conducted novo review and they found from dr isaacson's as well as the other declarations that there was substantial support and again appendix fifteen thirty four and thirty five is perhaps the clearest place to see that  so that's the issue here and it's one that this court has referred to repeatedly as a fact question in fact in union oil this court called it an intensely factual question the board here really did exactly what this court taught in posen and in vast  e which is to take the priority document and to look at it in light of the cars finding expert testimony about how it would be understood by a person of skill in the art in fact in vast cathy there was no writing at all priority document was  design patent and the district court had erroneous they required the patentee to show that all possible alternatives to the claim structure were necessarily excluded very much like what the logics experts are trying to do here and this court reversed and said no that's not the test likewise in posen there was no express written disclosure in posen of the therapeutic package but this court affirmed a holding that the practicality of the situation made it clear that a person of skill in the art would understand such packaging to be is the species and they did make an argument at one point in their brief suggesting that somehow that the that the fiberoptics bundle species wouldn't be sufficient to support a claim to a genus of like i again this is a classic fact issue which the board address had more than substantial evidence to do so from dr isaacson and mr chen extent aeration is in particular and in fact this court held in bill stad that it's a general rule that the disclosure of a species provides sufficient written description to support for a later filed claim to a genus and the point was affirmed by this court more recently in hynix semiconductor versus rambus which is on point here in hynix the court held that that hynix had failed to argue that the disclosure of the species which in that case was a multiplexed plus was not representative of the genus and here likewise a logic fails to offer any evidence to suggest that a fiber optic bundle isn't representative of the light guy genus so they fail to rebut the board's factual finding that the species supports the genus that's particularly true here where it's a predictable feel that appendix twenty five the board found the field of optical guides is not an unpredictable field now to gether that it's always done that way and there and particularly the fact that the invention here isn't about an optical guy this isn't a light invention or flashlight type invention or a laser invention it's an invention about a medical procedure relevant how can it not be wrong so what i believe the logic was arguing i think your honor is referring to the argument that they made in which they point to the fact that one of our experts said a person of skill we are not have experience with his stereoscopes they use the word hysteresis coke but what that means is and then disco that's used for these intrauterine procedures what our expert had said is people were very familiar with and discos but they were not familiar with of course since this was a novel invention was the use of an end to scope of that type for procedures in the uterus and that's the distinguishing factor the distinguishing factor was not what type of light guide was used or anything like that or the end of scope design those were known in the art what was novel here was the  raised before the board i would just note for the record that's not correct appendix thirty fifty seven and thirty eighty two are places where that was discussed by the board so the substantial evidence test here is met the board made careful factual findings based on the detailed record and the declarations of highly qualified experts they followed vast caffein posen and stracke in doing so those are the key cases here and in the twenty five page unanimous opinion of the board they really walk through the dispositive issues and the evidence very clearly and with care and for that reason the decision should be a please the court the board committed clear legal error here i'm quoting now from the los angeles biomedical research case at ten fifty eight l a b cannot rely on stand alone references that it failed to incorporate in the in order to make out its priority client that is exactly what happened here the board and smith and nephew relied on stand alone references on it and to bodo not cited anywhere in the specification of the prosecution history to a device is consequently not very suitable for use in the treatment of such a cavity the object of the president vention is to provide a device which can perform such a treatment so they criticize the prior art say they're providing a device not withstanding councils claim that it's about a method they're providing a device and now they're saying what we're going to borrow from the prior art features a divot device despite the fact that a they're not disclosed and be critici here the thing that the board never never discuss is one day and three don't show the lights out if nothing else your honour's at least send this back to the board to say wrestle of the part of the catheter where you would have to find a white guy if there is a like i do if it was possessed by the inventor and they had knowledge it's not there so what you're saying is there is substantial evidence your honor says isn't this is  evidence case well if if you skip past the legal layer that we assign that to the board which i think is playing but if you say we're going to we're going to forgive them for that we're going to give them a pass on that at least make them wrestle with the only depiction of where we would expect the white guard to be and there isn't a white guy they can't just ignore it you can't say it i respectfully submit that something does not pass substantial evidence muster if the signal most signal most