good morning on this case presents a question of last what is surrendered subject matter in the context of reissuing recapturing when a claim limitation has been added or amended during the original prosecution to avoid prior art we are not aware of any cases of this court which says that simply by virtue of the claim amendment that the scope of this read the subject matter is the territory between the claim of the preexisting and the amended claim after not so much what's in the prior of all that's usually the reason it's what was in the original application which you had to give up in order to get a loan what i had what we get what you give up when you i'm an adult imitation to an original claim is the scope of the original claim it's the scope of the original claim which in this case did not have anything to do with how you select the characters didn't have cycling didn't have changing just as select characters the scope of the original claim by virtue of the amendment is what is the surrendered subject matter then you can add additional limitations but the adding of the mission limitation simply by adding them is not the surrendered subject matter that yes that's what you surrendered to eighty because that was the arrow under this scenario the judge that you just raised you know attorney no one prosecuting a patent application could ever honestly overshoot the mark i think is the richmond you've admitted that up to one hundred is not patentable by virtue of the claim and you said i cannot get a claim directed to up to a hundred that's the surrendered subject matter now we go further the next step is you say well now let's say you go back to ninety because you went too far by claiming to eighty claiming that eighty isn't the surrender the surrender was two hundred you go back to ninety the second step is you look at  thrown from one hundred right and it's not from one hundred to eighty because that was the error you went too far what so when you try to reshoot go back to the ninety's and so we're really looking at step three i got a bit confused by the arguments broadened relative to this issue claim but still narrow relatives of the original claim then you get that the areas that you get you can to avoid capture that's correct because there is  are consistent with that absolutely and absolutely consistent there is no case which says that the territory between the original claim and that claim after amendment is a surrender subject matter there is no case that says that in fact the case to say the opposite known narrowing is not in the context of the recapture law because there is no admission of the error if the argument if a couple with the actual amendment and argument had been made to the in this vessel rule that applies to all applications right and even though there's no prosecution somebody can come in with within two years there's an error or whatever and they can write and so that you're back and that's exactly right that with germany gave up on prosecution under any other circumstance right but section two fifty one allows one to reissue and broaden the claims within the two year period and then there is the judicially added issue of surrender subject matter that is not by statute that's by case law and then the question simply is what to do surrender and once you write that properly identified what's been surrendered then you can look to see whether or not in the third step of the clement or the panel analysis it faded various ways but in essence in the third step the question is have you in your issued claim modified the claim so as to recapture american container says is that in that case there was an extraneous narrowing related to diameter having nothing to do with the issue of surrendered subject matter in the court said well if you look at the claim of the hole to be of intermediate scope that's not the issue and that's irrelevant what case and it's not just cycling the original claim was yes cycling was added the claim twenty three was added with changing originally in the prosecution so it's not just cycling so let's look at changing or cycling doesn't matter which in the reissue claims we took those limitations and they were modified to say changing using non album and numeric keys the original claim was changing using up down keys or cycling forward and backwards using their motor control but now it's a modified limitation broadened to be sure relative to the issues claimed but modified to say changing using the non alphanumeric keys now let's look at the surrender subject matter that original surrendered subject matter was just changing not how just changing that's the original claim we've come back and we've modified it but it still materially narrows the reissue claim still materially narrows the surrender subject matter because they specify how the selection is no issue about arguments here conceding the full scope of surrendered being the issue claim because the argument didn't say cycling was the invention or that changing using up down keys was the invention the argument was those  examples what was the invention that was argued the invention was are you using the remote control not having an addition additional keys not having the full alphanumeric keyboard and that's precisely what these reissued claims are focused on they they are tied in well with the arguments that were argued in the original case the original prosecution these limitations continue in step three of the claimant or penn who now has to continue to narrow the correct and if you take that to its logical extreme what is the board saying that they're saying that an attorney can that once you have a claim has been amended during prosecution which most are frankly you can never ever them that amended claim even if you made a mistake even if instead of being one hundred two went down to twenty in the example of judge laurie the to its logical extreme the board's position its per se rule will internet here you but i just want to see if i understand because the problem i have is that in every case and in every brief there's a statement of these three steps and they're all of those different words is the issue and joined as you understand it between mr government and the that so that's where the issue is joined so tolerant please tell us what the case was sense of respect to that question of whether going back to the original or the past we think that most of the followers of the is the most clear case on this on point must the father the amended or the patent claim as it has been amended and whether that claim that in the patent is being made less restrictive or not it's not looking at the original claim i don't think there's any question here that in the original application cloning cannot be hers that some thirty to sixty holds the former where the limitation is rested less restricted it presents a recapture while the latter does not but what about the discussion at thirty fifty eight thirteen fifty nine  down at the bottom thirteen fifty eight where it says violation of the rule against recapturing may be avoided under this final status the creek in step one of the house is the real issue claims materially now the claims relative to the original claims such that fuller stance recapture the subject matter surrendering prosecutions when that seems to be looking back to i guess what  original claim to need maybe need to be narrowed for there to be a recapture i think whatever the test was and i'm not sure i'm in the same language as judge charlotte looking at is such that the surrendered subject matter is not entirely or substantially recapture so that the feeling they put in other words you can't go back if you gave up if you started a year and then you had to give up this much based on prior are not voluntarily you can't go back  i think what the court says is a part of our this discussion is whether the what the surrendered subject matter is and what it is not and i think the court is making very clear in most a facet of that what is surrendered is the added claim limitation so the thing that was added to the patent claim that it does that when it discusses the facts of must a facet of it doesn't want to discuss with the facts in north american container and again when it discusses pan you all on page thirteen fifty eight to thirteen fifty nine now to be sure the court when it is in part three of the opinion when the court considers whether or not the surely narrowing step is meant here it does at least consider the prior art and i think that isn't that is why we were looking at reading in our view there's absolutely no way that the claims as is drafted in the reissue are patentable over really the only distinction human points out is that readable we've used the arrow keys to if we you know the poor even if the boys test was wrong and there's some other reading i mean i know i'm not prepared to make a determination at least but that goes to the second question you and your answer is even if we were to broadly and i do want to point out the your honor that it's not entirely clear to us that this analysis with respect to the priority of the person analysis at page thirteen fifty nine of the opinion and this is and it's a paragraph that is two paragraphs above the roman numeral to begin the applicants argue that narrowing is material where the additional claim with limitations quote render an otherwise invalid claim valid close quote whether or not the narrowing is related to the strength of subject matter and so the applicants misinterpret hester in making this this argument holds that we do not suggest that the materiality of the allegedly narrowing limitations was determined by whether the limitations rendered the entirely even if other nearing limitations are added to the claim yes because this one and it entirely then you're going to obviously recapture the prior wrong correct if the added limitation is modified but not a limit the claims must be materially near road relative to the surrendered subject matter so that the surrendered subject matter is not entirely or substantially recap that he's talking about the area between the original cla on is this a conflict between most sane and north america contains i don't think there's a conflict that i think that what the way the p t o s is reconciling these cases is that substantial recapture is when you try to go back in and in a substantial way and recapture basically anything that you gave up and there there may be situations where this materially narrowing is in fact a safety valve and unfortunately this court has actually never found that problem to be met so issue statutes cannot be construed in such a way that competitors are properly relying on the prosecution history the companion for interest when they do something and then recapture comes behind them and that was exactly the situation that the supreme court was concerned about in of now if it is this is the rule paragraph there the board and i realized it had the board didn't follow that approach in this case right the board did not consider the read pri analysis of substantially narrowing looks at the scope of the prior art i think it is abundantly clear that the only distinction human argues between the reissue claims and the prior art is that more than one letter is selected using the process and limit the modified limitation says how to select those characters so comes down the front of the test that once you identify the surrendered subject matter correctly because if you miss identify the cause the the m and if the surrendered subject matter how and if i might let me go back to what clement says because clement clearly says that the surrendered subject matter so the second step is to determine whether the broader aspects of the reissue claims relate to surrendered subject matter and then impose on a here or the original prosecution claim the claim before men that's how you that's what time and said this court never said anything different ever analyze all this or recognize that and certainly nothing must  changes a lot if it did this would have been a non bank decision and then the language the court focused on about the limitation may be modified however so long as it continues to materially narrow the claim spoke relative to the subject matter not relative to the claim as amended the test focuses on surrendered subject matter and that's the key to this case finds that act correctly we submit there's been no recapture here because all we've done i don't enter the case needs to go back if if want to read with you with your view what's surrendered subject matter namely the heart pre announce you're saying it doesn't have to go back to court for the work i think it does not have to go back to the board in that case correct because once you identified the surrendered subject matter i believe the patent office would agree that in fact the claims are narrower today relative to the original claims precisely at the point of surrendered subject matter