here i'd like to i'd discuss two of those flaws in the final written decision those are the go by the requirement of claim one and the interfacing requirement claim for with respect to the go button requirement of claim one claim one requires a go button and there's two components to this go by the first is the scanner that's capable of render him an image in response to a selection of a go by the second component is that in to the same selection of that go by that image is transmitted to one of a plurality of external destinations the claims further acquire the claims further acquire a system that's capable of having  email application software as a destination so the go button limitation requires a single selection where it where an image is rendered by a scanner and then transmitted to an external destination where one of those external destinations is email after haitian software that particular limitation is now found in the prior art just like the go button for acquirement scanning for a scanner that renders an image and then in response that same selection that image being transmitted to an external destination that's email application software ok so you you feel that you have to establish both of those facts and wind that that it i automatic or a single stamp and second that it is email that's right and we know that because the claims do require a proclaims a protocol that using a particular protocol when the destination is email application software the win win is conditional is conditional but in the choir well who we disagree with that we believe that a conditional requirement must be found in the prior art the priority has to teach that condition the meaning of the condition is something that's necessary in the prior art but the prior art can and it does it the conditions not have to be triggered in the prior art but the prior art system has to be able to handle that condition and that condition is using a particular set of protocols when that definition is email application software so in order to invalidate the patent that particular condition has to be shown in the prior art i'll note that the underlying case the email application software was something that was given  board by the apple these and by the appellate as well so it's only now that we hear this conditional requirement argument on appeal i also like to distinguish it from an optional claim limitation as opposed the the liberty national life insurance case that held that a term that says even if which is a conditional term is given patentable weight in the context in and of infringement and their infringing device was found or a device accused for infringement was enough to be infringing because it did not and body that conditional part so now the prior are there are two pieces of prior art that were primary references one is x n s the other is heartens and the opponent doesn't disagree with the factual findings of this prior art in x in s there is a scanner called the g i s one fifty it's a scanner from the one nine hundred eighty s that was produced by zero six and this scanner is capable of only transmitting it to a file server and a print server and nothing else and that's clear in the record and that's something that the board relied upon so this particular scanner that's that was used to invalidate the p cannot transmit to email application software what that x n s reference also discloses the ability to distribute documents over e mail but that's a completely separate transaction that's not tied to the scanner so in order to move the document from a scanner to the email software application a user must scan it manually manipulate it move it around and eventually get it to that email application s single gold one selection and what the prior art teaches is a multi step process where scanning is done on one end and then later on there's document distribution using email application software on the other but there's no link between the two and sure the user can manually manipulate the system to scan a document and move it to the email application software but that requires manual intervention and that's exactly the problem that the patent he was trying to avoid he patentee came up with a virtual copier interface to link different destinations and different input sources together so that all the user has to do is hit a single go button and it can copy directly from it from a scanner type users can drag and drop files out of that digital suitcase into any channel that they want and one of those channels isn't even the application software but harkins doesn't talk about how the documents get into that digital briefcase and one can presume that a scanner might scan document and a user might have dragged and dropped it into the briefcase but again this is manual intervention of dragging and dropping of moving documents around this is not the single selection of a go button that's being the go button selection implicates the scanner per peripheral in response to a selection that go by and the scanner renders the image so if you're just dragging and dropping from a file repositor an email application that has nothing to do with the scanner a scanner or any other multi functional per peripheral is not implicated by that particular action so for that reason harkins doesn't anticipate the single go button selection there's also another obviousness ground that was a latch it's an obvious and it was ground free where the the app believe brought in a third reference called motor yama but moti arm was brought in for a very small limited specific purpose of addressing protocols being stored in memory motor young was not used to cure the deficiencies of this anticipation argument with respect to go by so for those reasons it's if i does show a single step process you just say it doesn't show a single step process to email that's right it shows a single step process for scanning it to a file server and print server and but that's it in order to anticipate it has to be able to scan it to an e mail software application and went with this this is evidence that at the time or prior to the time of the invention commercialized scanners weren't able to do this and that's exactly what the prior art teaches that scanner to email software application and interfacing is not an abstract concept here it's use in the context of the software arts in the in the in the preceding claim element for c the claim requires the communicative link between the scanner and the email software application using a protocol so here we're talking about to an end point devices one talking to the other there intervention of dragging and dropping of moving documents around but when you see dragging and dropping and moving documents around in the prior art that that's actually proof that there is no interface in between the scanner and the email software application doing away with the manual intervention as i understand it your primary argument is that there was a discipline of manual intervention in the prosecution history right that's right and it's not absolutely clear from the specification that manual intervention is disallowed but you rely on the prosecution history to get there well not the prosecution history and i've clarified that at the provisional application i which is incorporated in reference to the one seven three s patent it's actually the provisional application and i'll refer to appendix eighteen nineteen where the inventor himself said that the manual drag and drop is a problem in the prior art my solution is an interface to avoid that to a lot of copying directly in one single step from a scanner to a destination application that's what the inventor came up with that's what the and his characterization of prior art is similar to what the prior art is of record here which is just manual drag and drop of moving to things moving a document from one source to another what you need clearly our standards for justin are high and why do you think this language satisfied some strangers it's because the inventor himself characterized the prior art he explained what the prior art was he referred to a prior art product one which is a xerox as well he explained the deficiencies  art which is the manual intervention and then he said why his invention is different from that and when you laid it out like that the inventors is free to describe what his innovations as a public disclosure he's using the prior art to set himself apart from that so it would be improper to read in the prior art that he characterize into the very claims that he's trying to use to describe what his invention is right if we agree with you that the board misconstrued the go button  ship we remained for the board to consider obviousness or anticipation in light of the perfect claim construction or do you think there's only one clear result there is only one clear result and that's because the factual findings have already been determined the board transmitting the document to the destination one step it's it's that's already based on the facts and already determined by the board the prior of documents to steps that's right this is a multi step process that's part of the prior art so that's known in a prior art but that's not what's being claimed what's being claimed is the single go button selection and the board there is an unseen basis between these two goldman selections and the board decided to separate and break those out into two different steps in order to justify its ok thank you thank you m h j must read into its claims to save the one seven three patent here the pac teach chose to claim broadly and to read such a specific environment into the claims violates the bedrock principle that it's the claims that the file the scope of the invention and the well settled principle of claim construction that we do not read into broadly drafted claims very  statement that that the patent he made in one of seven provisional applications and then suggest that oh that somehow defines the invention here should be read into the claims in the claims you it is true that the language is strong and provisional application that it says that it is disclaiming a two step process or or at least claiming something better than a two step process the function peripheral that's capable of rendering at least one of an image a graphic or a document in response to a selection to go blind the second place where they go but it appears in the is where i'm looking in the appendix for why accent as to us i think the clearest place perhaps of that appendix five twenty it says that the digitized image that the graphics input model may be sent to a specified file in a file service for storage or to a print service for printing that is using the go button on the x i s or the g i scanner and scanning it to a local file and th they call them eighty six at line twenty two there is a processor that's connected to the memory that implemented a plurality of interface protocols as a software application for and applications generically so the where in clause where where we see the second occurrence of the go by all that requires is that the document gets seamlessly replicated in transmitted to at least one of said there's no dispute and that is all claim one requires now when a destination is e mail you use an interface protocol that's not linked it you don't need that that's not a requirement of the wearing  those are right at the top of appendix four twenty three you see x and houses software application layer and it has protocols for printing it has protocols for filing protocols for mail protocols for scanning so that you would there's nobody to enter things you claim for has the limitation interface that's right so let's get let's shift to claim for there is the independent claim since it just says that we're in one or more steps occur in response to selection of the single go by so claim for as a number of steps as a transmitting step  let's i think the best way to answer that question is to look at interfacing in the context of the harkins rather than ok so let's look at parc and see i think the transmit the same thing can render entrancement right right so where does that deal with the between language ok i can explain that if we look at that figure one of  which is at appendix a forty or a figure or sort of gauge eighteen or a read brief if you see that yellow interface forty that is replicated at the scanner it's sitting at the workstation sitting of the printer it's sitting at a second workstation all those places and you off if you look at that interface and hearkens i think figure nine is the best places at appendix eight forty eight to show what that in terface looks like upper left corner than standing right at the scanner in harkin's you can take that report and you can slide it into jane rose communication profile for instance or any of the communication profiles there like does this have to do with the where they allege that the provisional application expressly defines an interface and what that says and i'm reading from the bottom of a twenty this patent should simply protect our interface and its ability distinguish between user interface and the question of whether the multi peripheral is interfacing with with something else i think that interfacing is the board construed the their construction an application of interfaces has shifted throughout this entire proceeding and if as shifted on appeal interfacing is making a direct or indirect connection between two elements so they can work with each other to exchange information now mph david say so they can directly work with each other or directly exchange information that's their claim in the upper left hand portion of the interface and figured i'd drop the document into a communication profile and if that profile has e mail which it can or fax which it can or printer which it can you have your standing at the email by simply taking the report that you've scanned and dropping it into a communication profile i don't dispute that you can do that that still doesn't show that the multifunction peripheral i drag a document that i just scan and drop it and send it via email how i'm a poet i don't understand how that is not interfacing with email application for four for transmitting the interface that is described in the provisional application that mph gave places so much weight on says the patent should protect our interface this is what they're relying on for interface so you're presupposing that the rendering and the transmission don't have to be in the same stuff but they certainly don't claim for there's a rendering step and there is a transmission stop  and depending claim six which is an issue here says there's a go by that can can accomplish one or more of the very thing so so so claim for has has a rendering stop claim for that step be it has communicative leave linking which is step see it has to interface and steps then it says you can communicate communicating over a land and then transmitting a document to one of the extra real destinations the very language that mph j v repeatedly relies on to define interference saying that portion of the provisional just talks about interface as and now you don't see the verb interface in there it just talks about at the bottom of eight hundred twenty this pattern should simply protect our interface and the interface in clapping plane for thank you i'll start off with the interface and work my way backwards to the go button for the record the appellant is arguing it's not arguing that if user interface is the interface the interface is achieved through protocols and the cli for requires those protocols to be used to achieve an interface between an actual scanner device and email application software so there has to be protocols use so just  user interface that allows the user to move things around and manipulated documents first of all there's no evidence that protocols are used for that purpose and second that's really not interfacing the scanner itself to email software application and in fact it proves that there is no interface because a user has to go in and manually do that and to go back to the provisional application that we just discussed on eighteen  it's eight hundred twenty there is this is an excerpt from the provisional application the imagine virtual copier interface but this definition of great here of the virtual copier interface is it's not describing the user interface it's describing the user's experience once the dot once you've achieved this interface which is a communicative link between the scanner and the email software application so but for actually linking the scanner to the email software application that's interfacing those two things using a protocol to do that the second point is that claim one email application software is required by the claims the the it's required as an external destination and the only thing required by that the only aspect of the external destination at the bare minimum is that it has to be the thing that receives the document that's being transmitted that's what qualifies it as an external destination what we just heard is that it can be an external destination we just happen to be in the claim system but it doesn't do anything besides using protocols but that's not true of the claims require that the purpose of this is to have an external destination that actually receives the thing that's being scanned or copied and that the claim require email software application to be an external destination as a condition which does have patentable way but what how do you respond to the argument that that if the external destination could be an email application but you could have a local file in the interim that's required that saw a local file and give me just a moment to look through the claims so i can so a local file is contemplated by the claims but this the claim system has to support an external destination that is email software application so yes a local file is a requirement of the claims for the claims go beyond that on the sort of the conditional and optional requirement and that's a case cited by the the i believe and there is actually an optional limitation in claim one it's at the very end there is a claim requirement that states that  the very last clause and it is optional ie printable by said printer that's an optional limitation that doesn't we can see that has no possible way but it conditional invitation does and in the case law to support that is the