proceeds from a decision of the board of an appeals interferences in a reexamination proceeding denying all the claims the board made three primary areas areas of law and want to summarize those and then address them in further detail the new ground will i believe the board just took the position that this was the same that the board actually took a contrary position otherwise we would have had the right under rule forty one fifty as a they are right to present new evidence for continued prosecution but we were deprived of that right by the mere fact that the board did not designate the rejection as a new ground of rejection instead they purport to affirm our rejection even though it was a completely different you have the opportunity you presented the evidence what opportunity were you deprived if the applicant was put on notice of some alleged defect with the one thirty one declaration quit presented and you show evidence during prosecution here rationale and legal theories we have a lot of case law here that says that's a new growth for rejection this this is this these claims were never rejected we knew so was out there and we understood it to be satisfactorily cured with respect an alleged deficiency put on notice we could have presented some additional evidence to to address any alleged deficiency but no alleged deficiency was ever brought up during the prosecution during that briefing for during the argument brought this whole process th rejection even though the same statutory basis was involved because of a different reason and those involved section one thirty two section one or two in section one twelve respectfully for those three cases in addition supposed to the original one year that the problem that well i may it depends on if i was denied the opportunity to present evidence or argument for the first time and they hear your would be a distinction if you're not before the court and you're squarely before the examiner and you still have an cannot have a change when you do well i didn't know why i can and i don't have any case law that goes to the contrary my understanding is the agency cannot change its legal theory midstream can't it's unfair to concede one here that the supreme court case law the patent statute the patent office rules and even administrative procedure rock are consistent with the notion that you can't impose a requirement to try to undo a deprivation due process by the mere availability of a rehearing potential a discretionary opportunity for rehearing after a on a final decision on the merits without the opportunity to raise new evidence to a new ground rejection is not a fair opportunity to be heard and section six b for example the patent statute says that the the it provides that the mandate for the board is to review adverse to physicians of examiners not the favorable decisions that is to put the applicant on notice and to give them an idea of what  he's there for the litigation issues are similarly will forty one fifty plainly contemplates and says that the board must either affirm or reverse the decision of the examiner on the grounds and on the claim specified by the examiner not on a different block grounds the board and could have cured any alleged defect here the alleged defects were raised for the first time in a final decision to which there was no opportunity to be heard the opportunity to present new evidence or new argument which was barred by the rules and  opportunity before final and even after final to submit additional evidence here of course the issue is moot because there is no rejection of the one thirty one declaration by the examiner just the contrary he accepted it  there been a specific nuance that was raised the applicant could have on this endeavor to submit new evidence a new argument but effort when it's raised for the first time and a final decision that's inconsistent with the examiners decision  thirty three and its dependence stephan knew from the very outset that he was going to have to do to feds in order to overcome sing and not have to rely on his commercial success evidence  sure that he preserves his i mean the difference is if it's a new ground the boards opinion is not final so his clock purposes of appeal doesn't start to care if it is a final decision when the clock starts to drop how is the petitioner in the absence of  look at the regulation it says the board may express lee state that in its opinion there is no requirement in the regulations to do so we do admit however that the regulation could be more clear about what rehearing but in fact when you look at the regulation for rehearing it does forty one fifty two it does talk about new grounds of retraction and there even the regulation isn't completely silent as to how one would proceed if there was a new round of rejection at the board level but in this case there isn't again i want to reiterate that if we do not believe there is a new ground significant consequences to that distinction because under the rule if if the board acknowledges that there was a new ground for rejection that he could be offered prosecution  rejecting if if there was a new round of rejection and the board expressed lee said yes he could have done that he is correct in that circumstance we believe there is no new ground for each action had he thought that there was but to be a rejection and then this went to the board the board issues the exact same decision this court would not say there was a new ground a rejection this court would say the board just disagreed the board roger and it wasn't initially accepted as to those references what he's objecting to is he didn't have an opportunity to respond to the editing water limitation and how the ward looked at those examined her and said to them in the first instance what the board subsequently decided to respect to the inadequacy of the declaration to this water content issue under one of two they would be o of that in this instance they saw that the first time but that that said there are differences between the board's decision and the examiners decision isn't according to this court case law what makes something new come out of rejection what you're s knew they had to do two things to get it to not have to hang their hat on their commercial success evidence which is not great lacks an axis so they knew that if they were going to get behind this rejection they had to do two things one is they had to remove thing as one to be priore played getting back to seven seven but they also knew that they anticipated that once they had done that that wouldn't be the end of the story that they would also have to get by behind things whether to a prior art and at the exact time they introduce those claims they introduced that argument and they also introduce that evidence by necessity it could not have been something new cut from whole cloth because the board's decision is responding to their argument is responding to their evidence and you this is a unique case we're saying we're not saying that this is the way it should always g that it wasn't missed it wasn't the basis upon which the examiner acted so they didn't have to necessarily put it put it up before the board but because they did that's why we're here if i meet in the ordinary circumstance ordinarily if the board to substitute a new statutory basis for each action under ordinary circumstances that would  of references and the board you can has that said no this is really a want to rejection face and those other features that you were relying on those other references for in that  wanted to be reference wasn't going to be good enough unless they want to hang their hat on their commercial success that which is not wonderful and if they were going to if they wanted to rely on something more than their commercial success evidence they needed to get behind saying as one into a prior art so they could collapse the obviousness rejection and they knew that from the outset they knew what they had to hurdles to go all over and even though they never made it over the first hurdle with the examiner they made it over the first hurdle with the board that evidence was already in place and in play now we're not saying this is the typical situation we're saying this is an exceptional situation but this court has recognized other exceptional situations where the statutory basis for the rejection can change and there is no there is no new ground rejection i see them over my time and i was wondering if i might have thirty seconds to summarize or  been made known to the applicant they could have been cured but that the applicant was deprived of that procedural right due process he couldn't present any new evidence or new argument to an issue of alleged deficiencies in the one thirty one declaration for the first time  examiner had already have accepted the one thirty one declaration as adequate proof of a reduction in practice so i pointed in there isn't a concession that there's an issue alone an issue that could be reversed at the first time on appeal in the final decision so the other point very brief and maybe it's already clear but there is no continued right of rigs and a prosecution to reexamine were done as soon as the final decision gets from the from the board and this is a defect that could have been cured had we had some notice but the way it was done