appeal looking at a case like hester the cooking soley with steam limitation was always in the claim from the very beginning and the applicant to overcome a prior rejection said the prior art uses steam and something else for cooking in for it i'm just so they with standing there for giving my path and eventually on the strength of that argument got a patent and then reissue basically did away with the restriction on solely with steam and this court said no based on the way you argued your case during the original prosecution you basically surrendered the right to not have softly with steam limitation so you know why wouldn't that just apply directly to the facts of this case you argued i have a measurement limitation here and there is no reference to your the teacher is the measurement limitation so give me  patent examiner withdrew the rejection so why wouldn't the hester articulation of that you know you basically surrender now through your argument  focusing on your measurement limitations the right to withdraw the measurement limitation you know reassure clay i actually think that hester helps us in this case rather than hurts us hester is a very clear case three or four times or even once maybe that's not good enough there has to be a different dividing line than that one absolutely your honor and this case presents the court with a great examples and to g some guidance in this very complicated area of law of what is not clear and unmistakable surrender clearly history is an extreme example definitely there must be a mistake the surrender maybe one maybe saying one time is enough but the point is that it has to be clear in the record to an objective reader of the prosecution history that what the patent applicant was doing was deliberately giving up subject matter why isn't it clear when the pa applicant says i'm not like the prior art because i have this feature because because that is not a clear and unmistakable surrender that might take a question but examiner but in doing so barker didn't say my attention that the pixel response imitation that is something very material critical to my invention it just said i'm sorry examiner you are on the web where it's hester these other cases i understand your factual distinction where they used the word critical of one point but where is the court say that you have to use language like that there can be i think under this court's precedent milk right line test for what is and there's not estimation would have been enough for retoucher finding in order for there to be a clear and unmistakable surrender here parker would have had to have said the pitch response imitation is a very material feature to my invention and without that i don't have that ability i think you can see the response to judge clement this question doesn't have to be very material for the invention is just any feature any statement that says this limitation is required for my invention whether it be the most important or a lesser but it has to be some kind of a statement that says a concession to the public on the going on in esther was the opinion describing how the applicant there declared that this particular limitation was critical and was  very material to the invention and so i guess i'm wondering if there is something to be said for when you try to analyze what is the scope of the surrender you couldn't on one level be surrendering to whatever is in the prior art reference being asserted against and maybe in the context of this case that would mean the applicant surrendered the right to claim in the future anything to do with voxels then there's another kind of surrender which would be the ability to withdraw the claim element that you focused on in your argument and why wouldn't it be the case that only in those instances through argument when you are clinging to a particular limitation is being material to your to your invention or critical to your invention or that particular element gives superior characteristics or is the chief feature of your invention in those circumstances that's when we can say that you have now surrendered the right to withdraw that limitation that you've been notifying the public  being so critical superior material to your invention as opposed to simply distinguishing away disclosure of our  rely on the station assert whether what i'm trying to get to is in our reissue recaptured case law sometimes the scope of the recapture is focused on what is alleged to be in the prior art and then we say that ok whatever has been alleged to be in a prior art you've given up and so you can't have that in other instances and really in our case law we've said the scope of the surrender is broader than just the alleged referent it's the actual ability to withdraw a claim element that you focused on to overcome that reference disclosure that's a much broader form of surrender and that's the form that the district court here relied on and i'm trying to figure out if it's appropriate in this fact pattern to do that when i didn't quite see the applicant  characterize the nature of its his invention is hindering the measurement meditation the way i saw it in other cases like has stirred greenland m b o exciter a well on a bunch of references to teach the ten no woman's the applicant comes back and says oh your rejection is flawed it's defective because none of those references actually teach element number four and then the exam or goes back and books and says oh you're right ok here's your patent you're saying no at that point in time applicant on reissue cannot withdraw distinction and you can go back to the green line in the history of cases the court didn't say that and hester of that is he was informing the examiner about his mistake in understanding whether cooking with him for if it is the same thing as cooking with steam they said that's react so its the same thing in this case marcus said the only thing they said the only reason exclusively and deliberately that the only reason our claims are allowed in the prior art is because we have recited the measurement limitations on the prior art each of these references that t i'm saying as well watch watch watch wrong with their faith if they say we're not talk trying to tell you that we're surrendering any subject matter we're just trying to explain to you what the priority list it is evident that their claims have the pixel response limitation i mean that's clear you know i have to read what i'm wondering is a position possible a paper up a communication to an examiner when you're basically saying i'm trying to educate you it should not be possible to paper it up if what the arguments they did not meet because we see some of these after the fact arguments come up in their briefing such as move as it is at a different feel or stretched into a different problem or different solution those are not analogous arguments that are not reflected in the prosecution history pieces of prior art on the ground that you didn't need to use to distinguish the prior art of still prosecution history stop a crime that's correct your honor but i think it's important to note to the court that asking this court to apply the wrong surrender standard is arguing here as it did at the district court that all you need to do this make a statement to related to patentability and you've surrendered subject matter that is infallibly not the law of this new you're arguing that the prosecution history of stoppel standard of the recapture standard different i'm arguing that the that the surrender standard for reissue it's argument only that's the sole basis of any alleged surrender that that's standard is more exacting then prosecution history stopped yes your honor because they did the standard for surrender only by argument is not experiments on the record that no reasonable reader of the record conclude anything but that they had surrendered so that the fits under a clear and unmistakable rule right applicant the benefit of the doubt if there's any ambiguity about whether or not whether the patent applicant said during prosecution is a surrender or not then because this court requires a clear and unmistakable surrender there has been th