that is capable of allowing liquid to enter the container when the flow control channel is disposed there in that appendix seventeen this timing based restriction cannot be correct is inconsistent with the language of the claims which does not require a device  capable of supporting any particular order of operations it finds no support in the description of the invention in either the specification or of the past prosecution history and it has nothing to do with the one and only advantage of the claim container well so we don't think that that's required by the claim at all judge reign at the board thought it was required by the when added to the container clause that appears in the claim but we think that that clause and more correctly as read as just clarifying that you don't actually have to have the sample fluid to have the claimed device and number two that this isn't claiming the method of performing the actual test using clear that they were only claiming the device but they weren't imposing any particular order of operations on how the fluid is added to the device and whether the fluid is added before or after the flow control channel or whether that's even a capability of the device and i think you can tell that not only from the claim language but also if you look at the specification at places like column five lines fifty seven dollars to sixty four dollars describes an actual embodiment of the invention have described as still preventing flooding even after the flow control channel is added to a sample container that contains fluid so when that embodiment the fluid is there before you add the flow control channel and there's no indication that there's any requirement for that embodiment also allow you to add fluid after the fact and in fact if you look at the specification the prosecution history not once to the inventor say changed a little bit the when clause has been there since the beginning so it has always been there although the wording was slightly different judge dyke what was the wording before i would need to look at the prosecution history and i can have that for you on there to begin with you would think the language was designed to exclude them but i agree judge dyke and i will have the exact language for you on robot arm but the length of the language has not changed in any significant respect it's always been when added to the container what was changed was the language surrounding it to make clear that you do not that it's direct application that you don't need any working material and that was to get around the tidings reference and you can see that the applicants making that directly adding the fluid and having this equalize pressure once again nowhere in the specification or the prosecution history the inventors talk once about the importance of the timing of when the fluid is at and whether it's added before or whether it's added after and that's because migrate through an intermediate structure such as waking material that once again has nothing to do with the timing of when the fluid is added and so i think that when you're trying to decide as this court said in recent and power integrations what is the broadest construction that corresponds with how the inventor described as invention the specification it's not a construction that imposes any limitation on when the fluid added or whether there's a capability to add fluid after the fact here which is that the board also applied an unreasonable obviousness analysis even under its own construction with the board did is it looked at a figure that rembrandt prepared that showed what it would look like if you just simply took the what you look at is you look at the teachings of the prior art you don't look at whether you can bodily incorporate the two references together it's not about embodiment it's about teaching it's you know as this court said in class though you don't have to just have a fits with perfect perfectly with puzzle element be a person of ordinary skill me are as a person of ordinary skill in creativity now with the board didn't consider touched ike is whether you actually apply that correct legal analysis whether these claims would be invalid so even if you disagree with our claim construction we think that every man is necessary for the board to address the obviousness analysis under the proper legal framework rather than applying this bodily incorporation that combination wouldn't work now rembrandt has some answers for why it thinks that combination would work we disagreed with those reasons including because rembrandt itself that they did twenty eight dollars of its brief acknowledges that you'd want to make this modification because there may be advantages to adding your own after the fact that a person born is clearly are would recognize that but the key point is the board didn't address that and that alone is a reason to send it back because under the administrative procedure act it can't be you know re non institute it claims and grounds and that will i think be more efficient judge newman including because some of the boards reasoning for some of the other grounds and it's institution decision such as for this combination of a german patent twi would be inefficient use of the parties in the court's time we will the court is already prepared for argument is already dug into the issues and we'd just be back here in two years to have the same arguments about  probably the exact same arguments about why those also apply to the german patents of koski and so we think and be more efficient to resolve those get those off the table and then the parties can have whatever disputes they have about the un as to the grounds as well as claims six  suggest that the test drips and flow control channel are immersed in the fluid of it so if that's the case then don't you have a problem in terms of kind of construction because the normal rule sample fluid added to the device when the flow control channel with the test trips is disposed ready within the container and having that capability gives a primary benefit that's recited in the abstract and the title of the invention that the device would be capable of operation in a single step so even if even if there are embodiments as the fluid is in the container before the flow control channel or test strip is placed within the container that doesn't suggest that those embodying its are in fact closed off these machinations that we're going through to somehow interpret the claims to cover a device that would be incapable of having fluid when the test trips and flow control channels are in fact disposed within the flow control within the container i know i understand what you're already but what was there any case in the claim language  this respect the the claims in the cross not with respect to the went at it to the fluid container so then i guess you got a problem we were disagree with you six starting at line twenty two it says the liquid pervious side of the flow control channel is necessary to allow the pressure within and without the flow control channel to maintain substantial equilibrium not withstanding an immersion into the sample fluid and entry of fluid into the essay tester of the supposed within the flow control chat so that could be referring to the state of it being in column six at starting at line forty the specificity cation says in use the test subject introduces an essay sample fluid typically your own into a fluid sample container such as cup mouth three closed and thirty five of flow control channel thirty four block sample fluid from entering the flow control channel as it is introduced through mouth three and so this capability after all what's claimed here is a device and it's not the fluid but the device is capable of having sample fluid added with the flow control channel which contains the test trip disposed within the container so it's not just about the timing of when the sample the board recognized that its construction could allow the sample to be at it before or after the flow control channel was disposed within the container so you were you were reading from the specification but isn't capability actually within the range so yes church arena in fact if we if we look at the clean language words the board's rested its decision on the plain meaning of the claim language and this wherein clause so that the claim is fairly straight forward the claims at issue here all depend from claim one claim one includes three elements a flow control channel a test strip within the flow control channel and a sample fluid container and then this wherein clause describes the structural relationship between those elements and how they work and if we just go through that straightforward language of the wearing cl the flow control channel is disposed inside the sample fluid container with the liquid pervious i oriented toward toward was a typo let's add it the base of the sample fluid container so that the a sample fluid when added to the container is delivered to the sample loading zone of the test trip and it goes on so that's describing interest plain meaning that it doesn't seem to me that the language is really susceptible to construction that it's a bill to do water at the other it seems to contemplate a particular mechanism which is cooperating in the simple way i submit that the claim language suggests that it's operable when the test strip which is in within the flow control channel is disposed inside the flap sample fluid container that the sample fluid can be a and if you could not add the sample fluid with it so disposed you're going to lose that benefit of the invention that it could operate as a single step which is in both the abstract and the title of the patent and also the figures the device device shown in the figures all show a device capable of having sample fluid added with the flow control channel and test trips disposed within the container and during the prosecution there could be a slow it already in the container correctness and then and then lead to strip is included and then more fluid is added after that the device remains capable proclaim language to add fluid with the flow control channel and test trip disposed within the container during prosecution the applicant consistently stated that the device of the present invention is shown in the figures and those figures plainly show device that's capable of adding fluid with the flow control channel and test trip dispose within and even in the specification the statement regarding immersion that that appellant's point to it follows read in column sex talks got in use the sample is being yes but what you're arguing is that a single device has to be capable of both methods of point to these statements that suggest the flow control channel is immersed into existing fluid there's nothing in the specification that suggests that the device would then be closed off if you don't get what i'm saying  to the flow control channel being disposed within the container and so we're talking about what's the capability of this device when the flow control channel is so disposed and the board's reading of the plain language of that claim was that the device was capable of having sample fluid added to it and that allows the device to operate in a single step as it's described as an advantage of the invention in both the title and the abstract now that the word below in addressing an issue that's not here on appeal said the advantage of single step operation was not cause to read the term device in the preamble as requiring the ability to operate in a single step but i submit that that where in clause here which describes the structural relationship of the three elements were cited and claimed one describes a structure that those three elements work together to provide the benefit that a sample fluid can be added with the flow control channel disposed within the container and that capability provides that advantage initially we thought it should just go back and we should avoid piecemeal litigation but now since since such time has passed we are here we think the most efficient course is to address the merits of this appeal and then send it back for the unaddressed  claims and grounds that the board found lacking at the institution stage now i'd like to address this the argument about the alleged error by the board in bodily incorporating the references the board function was to close off the container so the board was recognizing the teaching it was applying the teaching of supply and sets of koski teachers closing off which is inconsistent with a device that capable of having fluid sample added to the device when the flow control channel is disposed within the container and in fact the this teaching of closing off the device was what petitioner argued as the reason to combine they argued that the reason one would combine so koski with me mckay was this advantage that suppose of having a closure insert which could close off the device and a void a user being contaminated with the urine sample and in fact it's the very argument that they made for their obviousness case they argued this is a insert so that's the case they presented to the board and the board addressed it and it would also address the teachings of sokolsky and said he closes off and it's inconsistent with what the claim this is was not made below it was addressed in an oral argument below the concept of someone of skill in the art recognizing they could put potentially could pipette fluid through the insert and the board recognize this was never made lo and that's in the board's decision at appendix twenty four and council is going even a step further there's no evidence cited for this allege not if it were addressed in other grounds that were not instituted initially by the board but in this record of hard to tell if there is a dispositive argument by the petition below  and it shows in particular that when added to the container language has been there since the outset and i think that i think it's telling that counsel had no answer to call in five lines fifty seven sixty four when you asked him about it judge dike and how he could square the board's construction with that embody when he kept on one to talk about column six and trying to explain that one away but couldn't explain away column five lines fifty seven to sixty four and how that would adequately captured by the board construction i think that shows the critical flaw in what the board did here and that it is hard to reconcile this construction with that disclosure he said several times that reading the claims the way we want to read them and where we did the claims read which is the way to which and to either way as you said judge dike would be inconsistent with this notion of having a single stab device the claims don't claim a single set device the board walk through why they don't single device at appendix thirteen including the fact that they chose not to put that language in the claims and also because it would again be inconsistent with call in five lines fifty seven dollars to sixty four dollars because that specifically describe having a container that already has urine in it and then adding the flow control channel that's not a single step that's two steps that there was a lot of discussion about the teachings of sip koski and what we argued below i  completely agree with you judge newman that if there's any questions about that the proper course here is to correct the board's mis understanding that it could just apply a bodily incorporation theory and then let the ward a draft whether we sufficiently developed a those arguments you know add posher where it's really the board strop to make any of those factual findings about whether we've met our bird in the the problem here is the board committed to legal air that made it stop short of every even addressing the back to question and that alone requires a r here although we think that the remey and most principly as acquired because of the boards erroneous claim construction and reading in this timing based restriction into the claim it's in finally on the sask point it sounds like both parties now agree that the