the open pathways limitations your honor all of the independent claims have those characteristics in common and they are the focus of this appeal today on pages forty dollars forty one cents of the blue grave and no argues that the board failed to engage in claims of construction before determining whether the characteristics of the open passageway an open area are found in the prior and then you provide what you say are proper construction true term were in the record and over asked for those claim constructions before board your honor a nova did not ask for those constructions below however became clear from the board opinion that a construction would be helpful to the party interpret the claims when it was clear from the board decision below that the board failed to engage with the intrinsic record the claim language itself and its structure the written description in the prosecution history to understand what those terms meant in light of the specification under the broadest reasonable interpretation standard the court is not supposed to or the board is not supposed to look at those claims in isolation it's supposed to evaluate them in light of the intrinsic record so that intrinsic record an particular the information about the calculation of the open area relating to the outer portion of the flexible mt when it's in position that is something that provided specific information about what the applicant when they described the term open area therefore that's why we are presenting these claim construction to this court the board is welcome if it feels a claim construction is appropriate to request that the parties are welcome to request it it just became clear upon review of the board's decision it failed to appreciate what those two terms and you haven't but you are great you didn't raise it below i do your honor it was not clear at the time that the construction would have been helpful to the tr rehearing we didn't your honor given the nature of the board's decision and the deficiencies we felt it was better to come to this court to have the court review the evidence in the record and and determined that substantial evidence did not support such an below claim construction and i deliberately and i use words that would be one way to make sure you preserve it but i'm not seeing a tremendous difference between what the board's claim understanding the purpose of that passage way in light of the specification so when you look at how the court applied its implicit construction it was clear that it was looking at events which are designed to let air move out of the inner ear area and to the outside area to preclude occlusion and pressure buildup behind the ear it was equating that to the a nova device which has this open passageway that's designed to allow natural air and natural sounds pass the case into the ear so that it could mix with the augmented sound and then hit the into your drum that's a significant difference what about brown was talking about this or you know acoustical energy and acoustical energy isn't that the same thing as sound acoustical energy becomes sound if it's in the right location but when it talks about acoustical inner g it's pushing it's talking about releasing through the valves that acoustic energy buildup that's behind the ear or in that open space between the front of that device that's an in in the ear device with an obstruction in front of the case and then it has a classic that goes around that connects it to the outside of the ear wall and again that's a compartmentalize space right and there's also pressure that builds up tical energy that builds up behind the ear so that is why browne talks about allowing for release of acoustical energy buildup to the outer area of the ear tarnished and currently that that acoustical energy is it's  build up would occur when you have a sealed device like brown one instance is if you're getting on a plane and you have a sudden pressure change right that will change the pressure in your can now you may need to allow that to escape likewise whenever you have a s device like brown and you are speaking there are sound waves that are moving through the bone to the ear and they sit there and can interfere with the microphone effort to take the outside sound and move it directly to the there are a number of ways in which this on the wanted acoustical energy can be generated and get trapped within the device pieces or behind the device and this is why all of the prior art in the ear or completely in the canal devices have a vent when they to allow for that passage of the unwanted acoustical energy so it doesn't interfere with the microphone and you don't have this uncomfortable pressure build up in the  your honour's with respect to the claim construction even if we put that aside for a nd it's really to help detroit the party looking at the language of the patent claims and applying it to the prior art it is not a significant distinction in any manner from the specifications teachings it just makes clear that when we're talking about the a nova device the important difference between the innova device and the prior art that was in the ear or completely in the can now is that he does exactly what they don't teach they say seal the device do not allow this seclusion this is a problem with the seal device so we're going to allow small vents for air to come out what the board does it equated that with the movement of natural sound through the open passageway in the you know the device wearing your claim do you see that open sound to be coming through the passageway and the open  because i don't see you in the claim one at least where the claim is talking about a particular sound or that it has to be sound from outside the  acoustic passageway and then in a flexible insert defining an open area that's mounted within the eater's can now to create a sound pass extending through the at least one over the passageway instead open area so the ear for example it does not specifically claim but when you look at the entirety of the specification in makes clear what that sound path is designed for and remember we're talking about the broadest reasonable interpretation of the cla in light of the specification when you look at the abstract the summary of the invention the detailed description of the invention all in all of these locations as described in the opening brief and reflected in the summary in the opening brief the a nova device is designed for the purpose of allowing that natural sound into and past the device and mixed with the sound coming from the receiver so that makes it clear that this is what the open passageway is designed for and to read it any other way would be improper particularly in light of the prior art where the prior art talks about the disadvantageous nature of natural sound coming into the ear the  device but about this limitation the five to seventy percent limitation at one point in the board's opinion it says it doesn't say a word it's five to seventy percent of so you know they say so really doesn't was raised on appeal and it was raised below when we're talking about that five to seventy percent as provided in the appendix page four hundred and eighty six dollars there was a description during prosecution of what that five to seventy percent  open area is meant to encompass and it was compared to the shinny device the sinead device has a it's a closed in the canal device and it has one nine percent at the most generous calculation so if you want to put it differently during prosecution as a matter of prosecution history of stoppel the applicant actually described what it means by that open area at the outer portion of the insert  calculations within the record to support that where is that referred to in your in your briefing before the court in the reply brief i know that we discussed in detail that open area and the calculations and again both at page well yes your honor on page four thousand six hundred and forty seven of the opening brief there was a description of the open area calculation and it talks about the calculations i just walk through with your honor in terms of the five to seventy percent so this is where we argue that when you look at these prior devices in the events even in the most generous calculation of the prior devices they do not overlap art would decide that you take a closed in the canal device that sealed and borrow pieces from a behind the ear device that may or may not have a receiver within the year to come up with an open device specific arguments were raised with a chance for the board to address them to waive some of the arguments raised about the merits of brown the other prior art references obviously implicate those terms and so the board looked at them with their plane in the blue brief i mean i'm sorry the red brief that that the board addressed the arguments that were before it and it can't have been expected to address arguments now being raised before this court for the st time that's the only place where you address and make any waiver human that's correct because ultimately this court is whether it's under plain ordinary meaning more not he's going to do some form of review of the claim construction question and so ultimately has to reach that the question is you know how much of these new constructions should or should be given credit or or looked at is part of that consideration of what plain ordinary meaning of these terms is ultimately i don't think it matters a whole lot because as has already been raised the new constructions don't really add anything i don't think that an over has raised a persuasive argument before this court that these new construction adds something that would result in a reversal in any case when i ask you something this is a different issue one of the things that troubles me about this case is how the government seems to have changed its position a lot so you've got a some other references that were cited the admitted prior and then you get to the board and the board says mostly it's just we're going to reject this interview of brown and says that the five to seventy percent limitation doesn't have any meaning and then says assuming it does teach is that you would want to optimize this parameter for the open areas and then says and also there's all this other stuff here that teachers other examples of having open areas and then you go doing th the red brief and now we're talking and focusing them mostly on the meter per herd is being the primary reference why is it that there's all these variation for something they'd allegedly is obvious why is it that there are so many different permutations here in the record on what the actual rejection is and makes it really hard for me to review this yes there's that your honor i don't think that there have been a lot of different permutations i think that the emphasis on different pieces of prior art has changed in light of the arguments at each stage of the prosecution but the board did reject the claims over the same combinations  argued by the examiner and i noted what that is or what is the reason for modifying brown which has open areas in view of these prior references including bowman eighty six boman seventy six and friends what is the motivation for modifying and totally in that your device to have components of and device that's only partly in the ear correct are so i mean it was mostly when brown doesn't even look necessarily like it needed to be modified so that's device disclosed that is smaller than the ear canal and so it has to be mounted in help in the in some way and they they do that in slightly different ways with these flexible maps and each case the board said  looking at brown there is a venting system because you have to release this pressure due to this occlusion effect that discussed also brown talks about the problem with feedback which it says happens even in behind the ear devices which is that you have some of the amplified sound from the receiver closest to the tympanic membrane coming back around the microphone probably heard that it public events or something like that where somebody is a little too close or far from the microphone to get the high pitch whistling s you can get that effect that's the feedback and so the board said there's this known problem and that's part of the reason that they rely on so many of the references in particular the baumann zero point six reference for a more detailed discussion  which is another occlusion problem and so the board says you have a completely in canal device and you know about these sort of competing affects you have a clue zhen from blocking it off too much and you also have the potential for feedback and you have to balance out those two concerns and brown actually recognizes those concerns and itself has a solution to them that that is correct but the board also found that a person of ordinary art looking at brown and these other prior art references wouldn't know for you know very full and well about the collusion and feedback and look to optimize the design broadly brown need to be further optimize well it has a limited solution and what the board is finding is that there's a motivation to you think i'm going to be outside the year ringback devices has a better solution than brown spending system now that's what you're saying the board found no so go i we think there's a moving target no your honor so let me explain that you have once you know you're motivated that you want to optimize the design that's in brown or also  sour similar types of starting points that you would then be motivated to go look at other disclosures including behind your devices because they are also mounting a piece of the device floating in the ear smaller than the ear canal using different designs for these you know rubbery sort of soft pliable mounts that hold that piece in place and since the completely in canal device has everything not just that component but it's still in a similar situation you're still designing for that situation where you have a device mauler than the ear canal that needs to be held in place you would look at the kind of mounts that they were using those behind your devices and so they're offering all the bowman references as yet more alternatives for how person of skill in the art would look at these different designs that have increased open space and then they would optimize the open it's the disclosure of both the occlusion and the feedback to facts and the note that in the primary rep in all it's there the role all being relied on because they've all disclose troubling because it's five references with wildly differently designed hearing aids and it just i don't even understand really what it's picking from some of the references that it says are missing in the primary reference i don't understand why it's motivated to go to some of those references and i feel like there's a lot of handwaving what i'm worried about five reference rejection is the hindsight bias concerning just picking and choosing elements from lots of different arrangement prior american saying you don't work together here it's even worse than x i'm actually interested in chosen from some of these references i'm not sure what some of these references even add to the primary reference but that hasn't been made clear to me so i am a little bit veiled in my understanding of the board's analysis right and i am trying to convey what i think the board was saying in i think one of the best places the board explains open passageway and a flexible insert creating a sound path through the open passageway an open area formed by the flexible insert brown with the known usually just to be clear is brown then the no hearing aid  that we're talking about yes on hearing aid with an open passageway in a flexible insert that brown that's correct ok with the known feature of flexible inserts of varying dimensions sizes or specifications and confusing i think it's pride there it's proper the primary references are brown and sour and that the remaining references are being relied on for two purposes one to show knowledge of those of skill in  followed correct but in this respect it's sort of like relying on these pieces of prior art to show the state of the are multiple references demonstrating knowledge about these problems in design and then further  claim morning cept for space around the hearing however sarah brown true space around the hearing aid and so they can be admitted prior and is what's relied on for most of the limitations of claim all right but those are sort of the standard  you know you could argue about whether all of the illustration show it as completely in the canal or not but i think it it does specifically discussed them being a part of the state of the art can i get  go back to the open passageway concept please i'm trying to figure out what the construction of open passageway should be and i understand you correct if i like look at think you're six which portion  six where's the open passageway so in figure six it would be sort of the open space that you can see around the case d between the case and the your can now so i guess when it describes figure six and it talks about it as the president mentioned it says it's readily apparent that case one is smaller in cross section than the where's your canal along its entire like is that true about brown so the answer is no right to see it on both so the board did address the that the notion that because they referred to brown is sealed on both counts board the board did not refer to the brown has sealed and both ends they refer to it as sealed at the location of the retaining elevator but but that that wasn't truly sealed because if there is a vent and saw it with a vent in place there's obviously no seal up and then obviously also not a device that is smaller and cross section in the where where's your canal along its entire length i don't see that brown and that's what i think is the absolute clear definition of open passageway respectfully roger st that's not in claim one or any of the other claims but isn't than the definition i'm pointing to which is referring to the president mentioned i think that claim one in the other claims are written in terms that are broader than once disclosed in the specification and no such requirement that the entire circumference does not touch the canal wall is included in claim one it's a present invention which is what that says in that sentence how have we as a court construed that and in terms of looking at definitions to give claim terms sometimes the court has found those statements to be living limiting if they are seen anywhere we haven't do you know of any case where we have had a sentence that defines something in terms of the present invention and then found it wasn't limiting i couldn't give you one at the top of my head your honor  just to briefly finish addressing your point i do believe it's fair to say that they wrote claim one broader than that to allow for example what if there was a pad an open passageway only along the top of the case claim one seems to allow for that they haven't written claim one in a manner to require space all around but even if they they did i think that perhaps but but i guess that's the question what does it mean when it says open passage way point that i don't think they claim that the way but even if it's interpreted that way brown the board addressed the argument about there being a seal of the outer portion of the receiver and says there is no description in brown and that's accurate there's no description that that creates a seal it's it's only based on looking at a two dimensional drawing not a three dimensional one and it's counter to the expressed disclosure of brown about venting which i can just help the course with a brief reference t and then skipping one sentence this air gap which is described in that prior sentence farther down the structure combined with the sound apertures forty four dollars provides a route of escape to the external environment but the low frequency acoustical energy that bouncing around sound that's not the stuff that's coming clean from alcide through the passageway right that's that's what this vent is there for but it's not about it's a vent so there's nothing to prevent sounds also coming in that way which is you know and furthermore there's the disclosure in the dish no references about crazy the size of the space our explicitly says at least one vent and it also has slots in the outer portion that open up the space even more we noticed that in the brief when i banged the door if i were to construe those vents as i'm not creating an open passageway the entire length of the canal if i think open passage way requires a passageway the entire length of the canal how do i get to obviousness with you can you can see that i've been passageway and south for example because there are slots in the r measure members in addition to the fence so and remember the open passageway doesn't hate but time out if i construe the claim this way don't you want me to remain this and have the board do all that because the board never said there are slots in sour that create is open passageway because the board in fairness clearly didn't construct a claim the way i'm suggesting to you i might so wouldn't it be best if i at that point baking remanded and since there are five references the board can kind of go through what which ones may or may not support the open passage way that's certainly an passageway and that is explicitly addressed that point in the board to pinion that that the argument was made that brown has ceiling at the outer portion in the board said there is no disclosure teaching about that as being serious or occurring in brown sincerely found that argument unsupported when the vents are closed is there an open passageway well just to remind your honor the vents are about the open area so that you have the open passageway which is the space around the case and the open area is the space in the retaining element and together those make the sound paths so if you had no vents you would have no open area but you still have an open passageway  closed and sealed design choice often the zation is not doing the opposite thing with your design choice and so i think that argument falls flat secondly with respect to this ng because of those differences you can't say optimization is the motivation to come by correct your honor bit correct optimization doesn't lead us to the opposite choice that is explicitly described in the reference as a problematic decision in terms of the design secondly your honor there were many changing references as judge stoll noted which ones the primary which ones not the primary in fact frats was st argued by the examiner on appeal so this is why we are suggesting though it's not required that court engage in claim construction it has the power to do so but given the board's confusion about the references and how it takes certain characteristics of some references and combines them with others it's clear to us now that that is helpful we don't need that claim construction we think it's plain from the language of the claim in the specification of prosecution history but it helps inform why these close design if you don't need that construction it seems to me that the construction  proffering is critical to your potentially getting their vacation remand or a reversal because the board clearly didn't construe for example open passage the way the way you court to do here but it's right your honor when you look at the way the board below applied these claims terms they took closed areas within a closed device and called it an open passageway that is error so clearly the board did not understand what the claim the specification meant when it talked about an open passageway for sound coming in from the outside through the device and then mix with the sound coming from the receiver finally your honour's sour was briefly mentioned by the government again like brown sour is a device with sealing elements it's a completely in the canal device it specifically talks about the sealing nature of the elements and how important it is to seal the device and again this is a situation where we have every single reference that we look at that's an in the ear or in the canal device they all teach ceiling thing  claim construction for open package i see it in your blue brief it page forty but i don't see anything in this construction that leaves we think that it's along the entire year where you just tell me what i'm entire passageway will i'm sorry the entire passageway throughout the device is because there's two open pieces here there's the one that passes past the case and there's another that goes through that flexible mounting device when it's actually put in the ear that's called the open area so the open passageway is focused on the case area and the open area is focused on the area right yes your honor and it extends sixty one that extends all the way back in the open area is that bubbly looking stuff that number two points to generally i know that's not what number two is yes that's right your honor the open areas the outer area that contacts with the ear canal the outer area of that flexible members little holes america actually the little holes and figure six are focused on preparations with and that device when we talk about that open not clear that that's the open area your honor that's actually just a depiction of a device that may have preparations there's a number of different device for the flexible mounting member that are described and it again if we go back to seventy for a  that's where there is a description of the propeller design or seventy the offset propeller design what we're talking about is at that outer area near the ear canal where that flexible mounting member contacts the ear canal that edge of the diameter as described by the patentee during prosecution that's the open area that we're talking about the five to seven percent it's not an area close to the receiver on the inner side it's not little there's different different that you have to do here for what the open area how the open areas created because these little holes or it could be more larger portions it actually is not described as open holes per se it's really described as areas near the outer diameter so my only point is your honor it's not event right it's not a series of tiny events it's rather in area that provides for movement of the outside sound all the way through and it's five to seventy percent which is