in subsequent applications and claiming priority to it the claim term at issue or the question at issue is whether there's written description support for each of the claims at issue and if there by the invention other and then an islet that thread and your honor i believe the board in reviewing this case made two errors are you saying it such a claim limitation doesn't encompass written description support only for one of the embodiments that's pretty flexible loop and that's correct your honor and bill stats so how could a claim that encompasses something broader than that species they written have written description support  in an application that discloses only a species i look at this way your honor in fact i kind of look at smyth as very instructive on this point if there is an application for example that discloses a lead weight as a and so i think that's the challenge here is that every time there is in fact a c i p there's something all of else always add and there's nothing wrong in the law that permits somebody to go back to explain to claim the original disclose as a sperm right and then the continuation application discloses well you can use a spoon or a fork right you wouldn't be able to get priority for such a claim spoon or fork all the way back to the original application that only disclosed the spoon is that right well it depends on how you plan it and i think that's one of the benefits of being but that is in fact the whole purpose behind it is that we should be allowed to go back and claim the brother subject matter that was disclosed and i think we can all think of examples where that is in fact a case where we can think of something that was a broad  and here the broad idea was that i meant that threads and then something that has that idea here in this case it happens to be a rigid i can we move on to your constitutional challenge your i would like to get with that can i just focus on one point that i think was not disclosed by the board and it was just be very quickly point out that we made an argument and amgen about common function and structure and that was never considered and the flexible eyelift disclosing the species or supporting the teams was never considered as part of your description support with respect to the constitutional argument your honor i would submit line of the inferior options the judge judges from inferior officers of the constitution to principle officers and that there is no in fact review except on the instance that there is a request for  point out that with respect to if they read her this matter i don't know if they're your honour's referring to her hearing this matter generally but i believe the supreme court has mentioned that it would have to be a different kind of judges that would read here this matter if we were successful on appeal are you familiar with purposes of perhaps making presidentially if they're in on a firm answer or a verse all or something else and so therefore at least right now there is something the director at that point become just another mere panel member that's bound by the law your honor i believe it just becomes another member of the panel and from that perspective i think that you can be honest it can be said that the can there's a statute speak to the authority of the director to review a panel decision on the basis of policy the agency's policy objectives  as opposed to just the law i'm not aware of anything that requires the the judge or the the director to be able to make a decision in that regard  recollection is that the a p a in some regards constrains the director because there must be some sense of independence and that there must be some sense of a fair hearing and that he can't be politically determined which claims and escape as a case in point properly construed as this court found that the controller couldn't compass devices that were not capable of sixty years of freedom however the problem for the patent owner in that case the point that even while a seven or seven application and the other three applications file every ten year period note that alternative embodiments beyond the three was a victory described in the court right indeed you're right they didn't refer to it as a forfeiture there did they i think they actually may have your honor but either you know we're using the word less interchangeably here because i you know it isn't as if our threats came in and said we think these judges are very very did it was also an appointments cost challenge but in that case didn't they rely on the remedy the fact that congress one of the reasons they chose not to exercise their discretion was because congress had already remedy the situation the secretary had already started implementing that remedy so it drastically limited the impact that's one of the reasons that there were others your own it doesn't that make it a case that is really significantly different from this one because if there really is in fact a constitutional problem here it is ongoing in every case being decided it will be infected by it so wouldn't that unlike d c where it had been resolved wouldn't that make a pretty big difference in terms of the exceptional importance of whether or not we should be ms waived that that's one of the considerations in d c but  is that in d c a remedy had already been provided by congress and been implemented by the secretary i don't see any significant difference what am i missing is there a difference between for a tag and d v c well and in d c of course this court interpret tag and said that the at the appropriate house is in a situation where a remedy has already been provided in or even implemented with x or choose not to exercise our discretion again that that's one of the factors in d c but it's not the only one and if the concern is that this court is not going to get a i'm sorry can we move along it's a i'm interested in hearing an answer to judge wright is purley or question about whether the board in this case are really any other case would it have the authority to review this appointments clause challenge and then potentially decide for itself what we have to we conclude that we have all been unconstitutionally appointed and so therefore unconstitutional stature and in fact unconstitutional decision at that point go ahead right well not quite your honor suppose the top line answer is yes the board does have the authority to address constitutional issues and if you look at the supreme court's decision  are even if the agency explained even if the agency can't actually do anything about it the agency can offer shed light on threshold issues about how the statute works and here there's a debate in the briefs about such things as which removal statute applies to these judges which is a key factor no i understand that the board you know with all of its experience and insights on how the board operates and what it does and doesn't do they be the board could offer something on that but with the board even have the authority if it were to conclude that the statute that they were unconstitutionally appointed they wouldn't have the authority to issue such a decision well i think it i think it would your honor under the end would come of the institution stage which of course is done on the directors authority alone institution had occurred there's still a mechanism for the director to address the issue and kaala the inner parties review so i don't think that there's any practical problem with litigants raising this issue before the board and giving the board a chance and as d v c said i have to do is give them a chance at the even if the board's not going to actually weigh in on the issue do you need to get the agency a chance to explain that's the statutory scheme that could obviate some of the constitutional right you getting that chance right now i mean one of the significant powers that you argued on the merits the director has that should be important in this consideration is the ability to intervene and to put forth his views so are you having the opportunity nailed to put let's let's address some of the merits questions so one thing that hasn't been discussed this morning is the director's authority binding policy directives that by everybody all the other judges all the employees at the p t o and that can come at any time you can come recall that the we're trying to figure out whether or not these judges are quote at some level supervised and directed by a senate confirmed presidential appointed her and here there are two different i don't think there's any dispute here that the director has the regulatory authority here he can set out you know both under two b and under three hundred and sixteen the director is the one who gets to construe actually to promulgate regulation he doesn't have to will making authority in the guidance document that a p j's are bound by these examination guidelines i have and have to go back and check but i assure you that the director and the agency expects all of the employees including the a few days to follow in this example the want to and guidance the director said that the directors in charge of this office he had uncontested authority the issue that type of guidance he does but it's what i don't know for sure is to what degree did members of the or believe that they are bound by such examination guidelines as examination guidelines are clearly set out for examiners just as the manual pattern examined procedure is set up for examiners but i don't think th why i think it's uncontested i think that that guidance actually doesn't apply to everyone but even if it did and i don't think anyone is here saying that the director couldn't make it so the director could issue the same sort of policy guidance and label it attention a p j is this means zero and at that point the a p jurors are required to follow this binding policy guidance so in terms of that are in the substance box of the decision director doesn't have to wait until the panel spits out a decision embracing a view of the law he doesn't like he can actually get out ahead of it in a lot of ways this is more significant i mean i think i understand that if the director somehow helps engineer a presidential board decision then the board d is bound by such a presidential decision but i'm trying to figure out about everything else that's not a presidential as suppose if there was a board presidential decision that's that all members of the maybe they're erring you know board members who have said things like well those guidance documents are just guidelines they're not really things that they're bound and so i just try understand what is the relationship or that these various guidance documents and that i any guidance that the director explains should bind a p j a commander standing is that he's already done that with things like the one on one guidance a p j is are required to apply and if an a p j in fact said something like guidance might and here's what i think the law means that would indeed be an errant board member and at that point the two different forms of removal designate panel members ok so let me ask you that the statute actually unquestionably gives him unfettered authority to designate who sits on what panel what it doesn't give him is the authority to dita de designate and so i'm a little confused because removal is something that is discussed in many many many statutes removal from judicial administration removal from your job altogether with or without cause where does the statute give the director the ability to do you designate p members as opposed to designate i removal authority follows appointment authority your honor and many statutes are silent on the question of dating back to the supreme court i think it was one thousand nine hundred and twenty three miers decision when congress is silent about of concern that that sort of panel stacking that messing around like that would would create a due process problem you don't have a concern about that you know if somebody thought that their due process rights have been violated by a particular use of the director's authority they could certainly bring that challenge but recall what we're sort of getting attacked from both sides here we have our throats here saying you don't have a not control the director doesn't have trying to tell me that the director has the control to d designate any time he doesn't like in your brief even said  case made case he could pull an a p j off of and i p r that he's midway through deciding if the director so chooses and i'm saying i don't see where that is in the statute in your response to me was we should just assume it's there because they have the power to appoint and since it silently therefore have the power to remove it i'm saying well what if that power to remove made case that you're suggesting would amount to a due process violation should i still assume the director has that authority if it would create due not to reason it and we have folks here today saying this director does not have enough control over the office and what we're saying is you should read section six in the way that removal and appoint in power traditionally has already been with constitutional concern to mean that the director has control over who hears particular cases so i think that you even said in your brief that it could go so far as the director deciding to never appoint a particular a p j to any case is that right that's right your honor really so why would he be hired i mean whether be a concern there about fraud waste and abuse since the obligations and job descriptions of any p j are laid out clearly in the statutes in the regs if you take all of them away and we're continuing to pay them what it would be there according to you because the director has decided that they're not going to appoint them i'm not going to point you to any cases therefore your service is inefficient i think that's a possibility your honor i think our challenge here is i just read just a tiny bit service have invented within it a notion of misconduct we're getting a little far beyond the braves and i don't know not because you told me that this is the removal of authority so i've got to figure out if it's a i adopt the statutory section that you is more of an unfettered removal removal without cause well of course this court's decision messiahs talks about a much higher yes but very few had were view ability which we don't have here so i don't even try to go there yet we're going to stick with this st so i understand that i agree with you messias has any probably even more difficult removal process inherent in it but it totally has removed direct review ability so it has won you you to focus on that notion because you know you can't point to a science and say there was less there because it's all a bell and saying it couple of things your honor let's return to the back and i think we all agree the regulatory authority is within the director not that the relevant arm of control when you say we itself so there's no sort of exclusive criterion we sort of look at the landscape at the hold seat do these folks report directly or they control only by the president where they make controlled by somebody else so we've got the regulatory bucket we've got the remove ability back and we have two different so even if the question is are they controlled by the president or are they controlled by someone else i don't think in admin during any other case when they were deciding with their principal officers the supreme court said well let's see what at what exercises the president has i'm not sure that's right your honor that  question edmund was you know to decide whether you're inferior we decide whether or not you or your you have a severe ear and if that's a pure ears only the president your principal office are but if that's if your ear is another presidential appointed senate confirm to answer the question the but the relevant form yes is your answer yes it implicates misconduct or no it does not yes it can implicate misconduct and one form of misconduct would be insubordination so returning to the example we discussed earlier if an a p j remove them from judicial service oh i understand your point the other problem you have is again all all likewise look at this as the mosaic that you want me to is in edmond there was a review of realty as well so we are so far over but i really want to hear your thoughts on review standard of review on the back end here we think the review ability comes both at the front and the back and this is the x e n t ability to issue binding policy guidance and then if you think that a palace have anything to do with reviewing a decision individual case because it of the decision is about whether or not the substance of the decision was right to the decision maker get this right or did they get it wrong ok and so when they get it wrong when it has followed the directors policy does the director have the ability to say up that i'm not getting it is the director has the ability to kind of be in the rehearing panel to vote on rehearing no he doesn't he has the ability to ask to have a panel decide whether to rehear a case he has the ability i think there's a little bit a nuance there your honor i agree that he does not have the authority to grant for a hearing but he does have the authority to ask three people to think about rehear including himself to decide whether or not rehearing that recall that in the in the interim between the issuance of what he thinks is a bad panel decision and the convening of a here it's a standing presidential opinion panel the director if he thought that they original panel had missed the boat on the law he could issue a binding policy direction and then would guide the both the rehearing and the substance of that decision on rehearing so even though it didn't review mechanism i cri it's not quite the same as an and as an admin we think it's a still real and practical way for the director to their you know interesting argument that it's unfortunate you didn't make it in your brief this argument about how he could in the meantime issue i'm sure you thought that up in your moving which is great but this argument that he could make this in term policy direction like between when the decision issues and when the rehearing panel's thinking about if you could here's my policy directive now you have to follow that rehearing panel and then they don't so then what happens is he only one member of the rehearing panel so yes the other two judges say not do it well those judges would be just as errant as the original judges that we were that we were discussing earlier and i don't that we should not really because what if they just don't get rehearing and he never knows why right they don't have to opinion it's been whether or not granting rehearing so they don't have to subject themselves to the misconduct of insubordination by openly indicating they're not following his powers other than the one that you just articulated and each i want to make sure i understand your argument all together and i want to make sure that we have in terms of the mosaic of all the control mechanisms we've got the authority to issue binding regulations we've got the ability to remove them from jewish service we also have the secretary ability to remove them from government service entirely we've got the ability for him to designate any any decision as presidential or to d designate and it's understand what you think up until what which but which bucket do you think that falls into just so i know where to put it i think that falls into the substantive review back at your honor that is a need in fact if you can designate an opinion as presidential means you can review individual opinions i don't think that there is a neat breakdown between the type of review you're talking about and the ability to dictate th stop what do i sever will we do have we do have various options as fallback arguments in terms of what the court gets after st the court had read it section three cannot provide any high level protections for  appointment mechanism is set out by specifically in the statute so that would be a pj's so here's my problem with that what i'm struggling with is in all of the severability cases i've read it's literally a matter of excising language it's not a matter of rewriting your own language and i'm a little worried that what you're asking me to do is an exercise in writing the statute as opposed to just cutting out a tiny tiny little unconstitutional part to make the rest constitutional so do you have a scratch option your honor but before we  does not mean that it's not a possible reading of if not shoot to obviate constitutional concern we certainly think it would be a theory or reading not a rewriting of section three to say that the cross reference to title five governing federal do a little concerned that if i do what you're asking i've no affected the title five rights of exactly the same bucket of people i'm just not sure your honor the reason i'm resisting your officers and scratch out is that we have not surveyed to see if there's anybody else who's not specifically provided for by statute who might qualify as an inferior op there are other y p consider officer with me but you do recognize that if i make the change the constructive change that you're suggesting i have also affected t to have judges and to commission is right because they are all appointed by statute so yes well the commissioners i believe have its removal provision specifically written into the statute so i don't think we need to be concerned ok with that but the ag you know i do think it's a fair rate but maybe not the most natural way which is why we have not adopted that reading  you told me to sever something in section three and then tell me what is over in your brief you suggested that severing could solve the problem but you never gave me the express way i was going to say i think our only expressed severance argument was about the at it w infection facts with at least three members if this court thought that that requirement that three members three a p j's which can include of course the director deputy director have to vote on a final written decision on rehearing or otherwise would be so then you're going to have all decisions not just you're going to have every appeal every derivation proceeding every postscript review and every interparty proceeding decide it could be decided by a single panel member of the board any random one an those proceedings would go from having three adjudicators to having one now you know how many board decisions we get with dissents and you know useful that is to the proper vetting of these process sees your taking i p r us out of district courts and having board judges you're them who are article three appointed people and you know you want to say only one judge can get rid of all those patent rights couple of things one of the director of course would still be able to appoint three judge him if you wanted if you want a yes just as he appoint larger panels than three you don't think that weight you think congress so i'm supposed to divine congress's intent in all of this and preserve it to the greatest extent possible when thinking through severability you think congress would care more about possible officers that you can't name because you're not sure you haven't made a list and that i can't think up their title five rights being impacted versus you think congress intended for all of these different proceedings to be able to be held with a single judge your honor it depends on what the court thinks the constitutional defect and some sort of shadowboxing here because if the court thinks the problem is that there's not enough removal power in the remedy would be to to do something like the problem isn't any of those the problem is collectively it is a mosaic every case messias edmond's all of them it's balancing the three right so if i take some out of this bucket there's got to be more over here to make up for it so the problem can be solved i think by helping to fill any of the pockets if there is a defect canted i mean can't there be a total absence of review ability in as there was and in some cases and still have it be constitutional because the other two buckets are totally full or can't it be you know that there's an absence of remove ability but the other two buckets are totally full i mean can't it doesn't matter does it which bucket has a deficit because there's no doubt that this is authority and there's also no doubt that this is pretty low in the review ability scale so it kind of doesn't matter which one gets filled more maybe to push it over the edge for constitutional purposes since it is a balancing act you want to do you agree with what i'm saying i do agree with that sort of  ting and imposing a crunch but i i just want to note that i disagree with one of the premises about the unfettered removal authority and that is because there is no fat or on the directors ability to assign it were reassigned pal members and that is precisely the type of removal from traditional service that the supreme court deemed to be a very powerful post that i don't agree with your interpretation since all of the other cases talk about for cause or not for cause and and even cite some of those cases and so suppose i don't totally agree with your notion that it's just removal from a given case or something like that but from judicial service you so you do think the better course of action is to change all three member panels to allowing the director to make them one member panels across all of these different types of proceeding i don't actually think that we have set out a preferred saving mechanism we have i do significant violence to the entire scheme not just i p r's because this is the statutory section applies to all the different proceedings correct your honor but i don't think that we have identified a preferred route across our preferred route is that you follow the constitutionality of the guess for me i understand that if this case is similar to intercollegiate right and intercollegiate sever the constraints on removal power and then likewise in free the current constrained by will power at least ages but the other theory you have which is to remove the three member requirement for any or decision it's not clear to me yet how that  increases the ford's supervisory power as a principal officer overset of inferior officers i think it's because at that point the director couldn't reserve to himself and he guesses and on either rehearing or at an initial matters now with the director not that there was a problem he alone could fix at that that the problem that arthur x has that exists in the scheme is that the director alone can't do it because you want to three so if you got rid of the three requirement we think not that the director would have to in any i guess it depends on what the director's wearing at that point in time and director is the director for director purposes but when the director stands in the shoes of being a board member and he's a board member that he's a p j at that point i don't think and that he's is satisfying the statutory requirement of of granting a rehearing even if he could by himself serve as the quote unquote for honor i think at that point if we got rid of that's remember requirement it would be very much the same as any other agency where there is a single head so you know mr up social security certainly isn't in there making individual social security defense and that by statute he said and so therefore the political accountability which is what the appointment of congress concerned about resides with the commissioners social security similarly here if there were i think we again we think that there it is very clear who's accountable for the decision it is the director and the secretary of commerce but if there were a problem that this court found in a political accountability the social security context the alternative isn't district court litigation i mean your problem is to some extent you've got you have argued you the government so strongly about what the p t o is and how quibble at these are to district court proceedings you know i p r's you argue that so the super asleep throughout the process leading up to states and sas i mean you're you're briefs are replete with the analogies and the strength of of that and how you know board is so significant in that this is very similar to all the protections and all of the events that would occur in  district court proceeding but now you're saying we should and the congress might have intended or would be content with the idea of the director doing all of it all by himself or single handedly or designated a single handed minion to do it i mean it just that does not it's very hard for me to imagine that that is consistent with the scheme that congress intended in light of all the p t o s arguments especially over the years i think the importance of the inner parties review proceeding actually come together a year on or rather than protections but wait let me just point out if the things unconstitutional they don't actually have those protections anyway because they were not rightfully pointed so whatever protections title five affords them if these are unconstitutional points they actually have no title five protections i think that's right your honor the reason general and embrace the saving construction that we ourselves have not proposed if this current would like we could certainly follow up with the twenty j letter regarding this court's proposal but no i am uncomfortable and i'm unwilling to