is a case where inner party resented she had been ordered the examiner had issued an office action rejecting all the original claims fire pass came back after the office action proposing dozens of new claims all that want to make sure i understand your argument your argument isn't i don't think tell me that any time really is instituted when a free for all right that's not your argument your argument isn't just because congress you know didn't speak to the particular issue of what happens when the scope of a reexamination is expanded in some way whether it's because of a patent an argument or an amended claim or a new claim the regulation is it so if the examiner said your two pieces of two prior art didn't raise a substantially your question patentability to the original claim with the new claims are only narrower how do you get to a substantially question of patentability just because your prior art which didn't raise a substantial question about the ability of the broader playing now goes to some of the narrower limitations it is i obviousness rejection so if you compare for example but it's a broad claim isn't rendered obvious by your two references a narrower claim can't possibly be rendered obvious by your two reference maybe maybe i can maybe i can explain using the example actually that happened in this case which is claim one is anticipated by the six five to that prior reference it's not if it's been held that way by the board it's not been appealed claim ninety one which is the independent plaintiff that issue here on this cross appeal is effectively the same as claim one with some additional i'll see trivial hardware limitations that have been at thing such as a filter so one of the what a computer control means or something  routine general computer computer mean so trivial or not the point being that airbus plane ninety one or might on the six five two pattern which meets for all the limitations of calling ninety one that are the same as original claim  it's these are these are limitations that were not that were not most of which were not in any original claim they were never subject to it or an original examination so you have to have it yes you have a narrower claim but for showing that those additional limitation has set but the all of the let the limitations that are duplicative of claim one are met there met by the sink about we're talking about the new limitations you're bringing in new art to address only the new limitations because it's necessary to revive that that i meant it's not because that necessarily raises the standard question that billy which of course it does of course it does these are limitations that were never subject of any original examination we don't think that that has  survived the reexamination or that's not how the statutory scheme is set up so if we were to agree with you and say that the examiner on the board a part wrong test that there isn't you know the substantial question of really what should we do send it back you can deal with it at that i guess one of the questions are how many how many cases this fact means reexamined is that now so this is only going to be something that's going to affect older cases still in that inner party examiner also aster amended claims were introduced refused to address the rejection correct now little that is still pending on appeal board i guess i'm just i'm just wondering but apart from the two cases that you have and i  same examiner both of them apart from that one examiner in the two cases you have i just want to know are there is there reason for me to be worried that this is a big deal  are a lot of cases in the pipeline that this is that you're aware of there are going to be and i'm not aware it's a big deal to us right now and and i'm not getting it so now let me push fine because there's a difference between whether you deserve to win to be clear i don't  need to press for as broad a rule as you're asking for in order for you to prevail so let me just throw out an alternative idea to you and see if you're like you know what we could probably buy into that it isn't the fact that an question to the court to the examiner was this claim these three references and he says no less until but all they did was added another new limitation to the claim you know what the examiner to consider examiner have a right to is used to consider projection you seem to have proposed a rule that is i wasn't sure if it was any time cross resentment initiated or anytime there's any amendment neither of them are really palatable for me fact what do you think about that will understand the instinct that there is there are some unfairness to that the idea that a requester could bring back in the same exact references you know for an hour when it doesn't make sense in that but the test is one point nine four eight and under the scenario that you gave your honor the examiner could say no you didn't meet the standards of one point nine four you got them about i'm sorry i had one point you're already using the new the new or  he first office action and gratuitously said by the way all the reasons for denying the f ing you with respect to these apple twenty six the aircraft prior art they were all wrong that's what happened in our case and so there might be a situation like that that could arise where there might be reasons to bring back in the prior art and that's why in an adversarial system one point nine four eight makes perfect sense where it has to be responsive in order to bring back that prior conspiracy buffs of the kind of goes  broader claim and you've argued to new references examiner says no less than two and a limitation for whatever reason to that claim and you only argue those same two references i mean if you'll like he should be able to be able to say look less and q you can't force me into considering all of the ones i said there's no i thank you for simply by virtue of the patentee introducing because because even though they added a limitation it wouldn't necessarily the same two references if they didn't help you with the whole thing wouldn't necessarily help you with the whole thing plus a new limitation a dream your own or agree with the outcome of what you're saying just for just for a different reason that's all just that it's  whatever in the references but you're saying there would in a different case where it really seems like a frivolous attempt to just redo what you lost already he could use that mechanism to avoid doing it but it wouldn't determination by the examiner that there is no s and q for a given rejection into a question well if you are i mean under our view of it it would be an examiners determination that that that that cause rejection was not responsive under he applied the wrong standard that s n q isn't the test with respect to the amendment whatever limitations or on his considering prior art and we could just send it back and say ply the wrong test apply the correct test the heart of the question and particular my friend on the other side to answer which i actually think makes the resolution of the core legal question here is here you asked whether reexamination whether it's a free for all once you get into re standard for those claims in reexamination the entire body of the opinion would have been unnecessary the whole fight there was whether there was a new question assessing q isn't a standard you don't even have to talk about as it was of the opinion was directed to the  this was overruled by congress but in terms of the amendment language which you're relying on the court said we reject the commissioner's argument the amendments create a substantial new question that that's a that's a different question here there the p t o is arguing that somehow the jurisdiction over the ribs and to be saved by looking at the amendments and said that they raised a substantial question that's not what's involved you do not disagree with you your honor on the same page my point is only that it's at least indicative of and supportive of the broader proposition we're making and i do want to finish going back to the question that you asked judge moore the the answer that air bus cave is that congress didn't speak to the particular issue and that what we're talking about here is what you do with thirty seven c f r section one point nine four eight we are in agreement that one point nine four a is to prove asian that tells you  what the requester is allowed to do and say once you're in the world of amended claims but the critical facts here and this is where i think that that this case starts to look pretty easy is that the m p e p section twenty six interpretation of its own regulation and what twenty six sixty six point zero five is easy and clear so you tell me precisely what it says that makes it clear so section twenty six sixty six point five deals with amended claims and it interprets section one point nine four eight and it says any such new proposed it's precise put station is in the brief i know that we cite and rely on twenty six sixty six point zero five so what i'm looking at is the two thousand and eight revision to the m p he which is the one that would have it in place with the time and the page number i have here is twenty even if he were correct and i don't know whether he will or what he's saying that the chevron deference applicable to this provision are just our difference i think it would be our deference technically because it's the agency interpreting its own regulation but another and if that is true if there is a gap in the statute that nearly needs to be filled some interpretation that needs to be added then we really are in the world of our deference and it's a pretty easy case  under the initial examination standards right and if that were all then that leaves a gap in the statute in the question is just which is or was the gap i mean it sounds as though the news as in q with respect to the initial  has already told us you don't draw a line between everything up to the moment of reexamination and everything that comes after what we know from not just belkin but section twenty six fifty eight of the m p e p and to the extent you think it at least indicative portola and also twenty six sixty six point zero five and every other authority in every other circumstance we've been able to identify is that even after reexamination has started will you still use does do the amendments under the initial examinations right correct so that sounds as though that's what you're supposed to do why you national examinations and as to the amendment i think i understand the question now and perhaps i didn't before i don't know that applying the initial examination standards means that at and q is off the table if that were true then when an examiner you would have to conclude that in just this one situation proposed amended claims you don't supply a thing to you you don't supply a so called two step process that we know different situation than the initial institution in the treatment of prior art with respect to the original client so let me try answering it this way so imagine that the claims here are issued so they issue is part of a new patent and at that seeks to have the claim is reexamined at that point it seems absolutely incontestable that you would apply the s n to standard right you would be you would have issued claims you'd be seeking reexamination and you would apply the two step process so again the baseline is that you always apply s and q you would have to think there with what the statute says ron well it's it is when you put them together i you apply it for rejections identifies who is on to buy the salmon or after interparty the reexamination has done this truly would be the only situation in which you don't supply the two step process and there is nothing about the statutory structure leave aside discordance precedents in belk and in each of these other scenarios to suggest that this situation merits different treatment perhaps another way of getting at this question is to go to the a later question that you also asked judge moore and that was what do you do when you are getting these claims a mandate what happens when you have potentially you know claims and that is a new element on the claims and the answer is exactly the same here at least with regards to the reasons for applying guessing as it is in every single other one of these scenarios this is a process by which as the court recognized in falcon and has in subsequent authorities reaffirms you have a two step process for a reason you haven't because it was meant to be and i'm must say i find this very the when you have new claims with new limitations that haven't been examined why is it make any sense to apply the substantial new question to two new limitations new papers is it could never make sense and that's not right for the following reason and that's the reason that judge moore suggested that was one of her earlier questions it is entirely possible that you would have no substantial experience like this illustrates why to the extent the elements are elements that have previously been examined and to the extent those elements have been examined in the course of the proceedings am only the new claim limitations that were never part of the initial examination but again all i'm trying to show is that as a sense you can make sense and the reason it can was going to make sense in this fact pattern and here is your problem correct me if i had any of the spectra original independent claim one examiner decided there was an s and two based on the six five two in response to the six five two pack and the applicant amend the claims to add new structural limitations a filter reduce humidity and computer control so we have the six five to patent new patent has rendered substantially a question or an independent claim once now we're looking at an amended version of claim one and the question is does the requester have a right to say these amendments don't get you out of the problem that we proved existed with the old claim because these new amendments a i misstate any fact did you misstate any fact i don't think i you know i want to make sure that i'm not misunderstanding which art was applied to which plane for example or something like you did not misstate any fact but it is legally irrelevant and for the following reasons first of all of course just as a threshold matter if we don't write the s and q standard added are new to claim ninety one here but they are claiming elements that were previously examined then they are old in the sense of the s and q standard so while precisely because argue on the underlying merits is that these are arguments that have been made in the course of the prosecution but and the prior examinations but more to the point so long as that is a possibility so long as it makes sense to continue having that filter of the s and q standard to weed out that possibility and to ensure that there are not duplicated proceedings and i think one would have to concede that it is at least a possibility then you know just seeing that in the initial examination here that this or was considered to relation to filter computer limitations there are a number of different limitations here in claims ninety one through ninety four not all and they left you in the initial examination here are you suggesting that this prior art was used to address filter and concluded limitations similar to those that have been added now my argument that is for the examiner and then ultimately what when where in this record does that show that the initial examination considered this or with respect to these new claimants well that's the simplest answer your honor is that it's not on this record because it's not before this court because it wasn't argued to this court my own but the only thing i only are making representations about what happened in the initial examination that you can support so let me take a step back from the record and answer the question in the following way the question was posed in terms of the record of this case isn't this a case in which you have exactly the problem we should be worried about and my answer to that question is no you're absolutely right judge di that i say that is a representation and it's not on the face of this record but my fully point and the only thing that i think has been argued and that we need to establish is does the essence use standard apply and my point is it makes perfect sense for the essence use standard to apply i would prefer frankly to abstract it from the facts of this case because i think it's simpler and more straightforward for the reason i was suggesting to judge more you can have a situation in which you are talking about old elements and old art and if that is so if that is a possibility then it makes sense to use the s n q filter for the same reason that falcon and the board itself in a very venison and every other bit irrelevant authority we've been able to identify suggest that it makes sense to apply that same the same is your is your honor frankly in all candor one of my first questions of looking at this case is why doesn't this come up more and we just haven't been able to find many examples the ones that i'm aware of are avery dennison where of course the board addressed exactly that question presented here and decided in our favor and as my friend on the other side says there are a couple of other pending matters involving the same parties and where there was a similar threshold determination of  let me first address your question judge take about whether any of these claims claim limitations or pro were previously examined the answer the answer is no and we did point that out in our brief that these limitations were not the subject of any originally challenge claiming most of them were not the subject of any original claim they were never things like a filter were never the subject of any prior examination and i think for that reason it actually is is a perfect example of why it doesn't make sense to apply the essence you test in these in these circumstances and certainly not to cut off a requesters appeal right when ever an examiner mentions the word  point zero five talks about that that section talks about thirty seven c f r one point nine four eight which is the regulation allowing responsive arguments the belkin case we don't and only hell because  which the prior are renders the claims on patentable so i think it's it's a big leap to one you know say that that this is something that that agency had done through the m p e p when it's otherwise clear in the regulation that the essence you test isn't there just not mentioned so there really we don't think there is any authority that talks about it and i guess one other when i should make is that that's not really what issue here because this is not a matter of interpretation one point nine four eight there was no reference by the examiner to you know you failed to meet the standards of one point nine four eight because of this you know implicit  and this is an issue of appeal belief and the facts of this case demonstrate exactly why a third party requester have to have the right to appeal you have a fact you have a fact pattern here where these are entirely new limitations and we put prior art to address these limitations never before examined and the examiner for whatever reason presumably because we had cited this our the original request just reflexively said no i think you and under the board's reasoning that c off our right to appeal and that's not what section three fifteen is about in fact section three fifteen was amended by congress to create symmetry between the right to appeal of a request board's rule does effectively create a situation where there isn't symmetry anymore if our proposed rejection had been adopted of course the fire passed the patent and could have appealed but in the board's reasoning it was not adopted for