say honorable judges good morning the court should reverse the board's decision invalidating the claims because the board adopted a claim construction contrary to a clear prosecution history disclaimer to distinguish the prior art the applicant the mended the claims to add and analyzing staff that occurs automatically upon a single entry of the execute command the amendment and accompanying remarks expressly disclaimed use or systems such as by selection of the first information or the text to be analyzed as a condition for the the board's disregard of this disclaimer in its claim construction was error under proxy con and omega engineering under the proper construction the claims are valid the court should reverse so the prosecution history contains a clear and unmistakable disclaimer that was required to obtain allowance over the so prior are the amendment added the requirement of a computer process for this is a quote analyzing the document to determine if the first information is contained therein because the claim covers a computerized method the amendment means that the determination if the information is contained therein is a step carried out by a computer not by him so the analyzing happens by the computer in contrast to the manual text selection by user that is required by that so prior art in making the amend the applicant made this very point and further emphasized that the computerized method executes the step automatically based on a single click of the input devi can read the claim so broadly and so on the whole broadest reasonable interpretation of the applicant has an opportunity to narrow the claim to respond to that objection now so  was added in the prosecution following in interview with the examiner and the examiner invited just this and then which the applicant make and we have a computerized process we know it's computerized because the preamble says that it's a computer method so the process that what it was added is analyzing the documents to determine if the first information is contained there and so the applicant added that the applicant added that after the examiner using b r r i said applicant we would like you we invite you and this limitation the african as that limitation explains why it's added and the examiner so that amendment was made on december eighteenth two thousand on in january two thousand and one the examiner notes that the applicant did just what the examiner requested and says that distinguishes overt so in the reasons for allow ability so in fact the amendment follows in invitation by the examiner and the examiner using b r i determine that that limitation distinguishes over that so prior art and the reason is the analyzing happens automatically you have to understand that one of the things that's clever about this technology is that it mediates between two application programs there's the application program in the preamble in which the document is open and there's text in that document and there's another thing called a record retrieval program which could be for example outlook where  information that's in the outlook program and view it and insert it into things like that that are reflected in the claim so the interaction is very clever so the it so the functionality that actually we it's developed by my client was to be able within an application program such as word to access address information and other kinds of information there for a change to for example a name you might have typed into the document so you can insert the address into the word document without having to flip into a new application that's that was the invention and so the invention discloses analyzing the t in the description in the hand and izing the text in the document this figure out what contact information and what do you have to do you simply push the one click button that was developed by my client and then the analyzing occurs it's automatic and this claim limitation to distinguish over in so there is some analyzing going on but first you had to select that which is going to be the subject of the analyzing unliked so all you do is push this little button and it limitation that allows the analyzing to occur automatically in fact in january second the examiner says this is a quote from the examiner's reasons for allowance however and so the texturing to be  is determined by the current cursor position as specified by the user and then there is a citation into so whereas the present invention and this is a quote inside quote does not require the user to select the text ring to be  the situation in which it looks from the record and see if the opportunity to amend was offered but was not accepted and my question is do i read that record correct i see the board had done so i think the board certainly said that the disclaimer was not evident to the board they the words failed to see that and they certainly said that in their opinion that the applicant has a selection even under your construction so that's am i missing something i mean i understand the town argument but i want to i we should not only change the claim construction which i think you've already done with your disclaimer argument but in addition to are magically what is ruled out it's not simply selection but any form of assistance by the user once there's been an execute command and her there's if there's no assistance by the user then clearly having to put the information in the selection box of good hand is a kind of assistance dramatic assistance that is not present in in the randi solution and the claims rule it out because it  it must happen automatically upon entry of the the single click so the board got to that position by ignoring the full impact of the disclaimer so the disclaimer was achieved yes selection but it also rules out any assistance beyond entry of that's the that single execute command that's what really got ruled out and in that sense once you look at the power or power of the disclaimer and the examiner embraced it examiner adopted it the board by the way says it does not need to pay attention to the examiner because it's just what the examiner said but they failed to pay attention to the fact that the examiner was quoting from the applicant the examiner in january two thousand and one was quoting from exactly what the applicant put in the remarks in december two thousand so the record was selectively regarded if it was viewed in a very selective way by the board and that's not proper test look at the whole record you can't pick the parts that likes in our opening brief we pointed out a passage what was said by the applicant and what was quoted by the board and they missed all the stuff that was most germane and similarly they missed that the examiner had quoted from the applicant so the when one really focuses on this ruling out of assistance then the record is ok the board was selective in its consideration of the record it didn't look at the whole record i don't think there's any evidence to support the board's conclusion owner to file a motion to amend that's in the appendix pages thirteen twenty two thirteen twenty three gave them in fact a special dispensation with the age limits to file amendments to all seventy nine claims and they just didn't take advantage of that so there was the opportunity to and in this case and the owners didn't do that regarding the alternative holding which judge moore referred to all of them a nice claim construction arguments in a proposed construction which is found in a randi's opening brief towards the end of the claim construction section of the page fifty and that proposed construction says in the relevant part paraphrasing it that the single  analyzing limitations of the claims must carry out an examining of the document that is inconsistent with users like the text to be sure the board rejected that as a matter of law and i'll talk about that in a couple of minutes but the board did the first being that the good hand prior art performs analysis that used essentially the same as the eight five three the board uses that language four times in its opinion and that's the analysis of identifying display names that will later  searched distinguishing those display names from other material in the address the old email document including so michael and spaces and also properly formatted e mail address that finding by the board of those that set a finding by the board was supported by the testimony of mr allison google's expert was supported by the deposition admissions of dr levy and supported by the specification of the good hand prior art already doesn't attack that by saying the evidence wasn't five to ten and in the so patent column or line thirty one forty three which describes selection in the way that users of graphical user interface systems are familiar with highlighting clicking on selecting italics sizing things like that  triggering mechanism for the analysis that occurs to you initially trigger something with good hand and then enter the material in the address  goes directly to mr sun and in point that the analysis follows directly after the single entry to execute in good hand the analysis is triggered by clicking on the send button or clicking on the check name or in the alternative moving the whatever the user takes into the address field is that correct when i say nothing nothing that is triggering event for the operation that's a good hand mechanist yes that's correct that's for the board of course and we would submit was also correct in its analysis of the client instruction and let me focus on the prosecution strict slimer argument because that's the argument that randy makes most vehemently there are three principal problems with the prosecution history disclaimer argument and the first is that already characterizes the prosecution history as a sort of an agreement between the examiner and the applicant at that time if that was an agreement between the applicant and there are n t broken because they didn't do what the examiner was asking them to do in the october seventeenth two thousand interview summary the examiner says we discussed the prior art with the applicant's representative the applicant's representative just the so prior require selection the present invention does not require selection the applicant can submit and after final on that meant to raise th explain the forty two now in response to that i think the reasonable examiner would expect an amendment that negatively excludes user selection attacks but what if we have the experience reasonable construction we accept is it reasonable to adopt a position that was overcome countered and resolved fifteen years ago your honor i think it is reasonable for the board to do what it did because the file history is not clear why the examiner did what she did and it's not clear for two reasons it's not clear first because when to render the entered it's amendment did not enter an amendment that was relevant to selection facially just based on the language of the amendment it positively resigned it analyzing the claims but it satisfied the exam that we can say it's not clear but it apparently was sufficiently clear at entered i think it is not clear as you say because the examiners actions could be interpreted as accepting the amendments that are indeed gave them facially positively reciting analyzing and then going back to the prior and not require the user to select the text string to be processed since it functions automatically upon a single click so the examiner in his reasons for a little it's clearly an onion big us lee stated his belief that this is what the claims require and he put that expressly in his reasons for allowance so i don't understand your statement about how that there isn't clear and unmistakable evidence in this record about the disclaimer at the examiner seems to have a expressing its reasons for allowance said the claims are being allowed for that reason and the statement that it's not clear and ambiguous in fact results in part from exactly that notice of lot because what the examiner did not say there is the present invention exclude selection what the examiner actually said was the present invention does not require selection another two very different things and in fact if you go back up in that paragraph of and expats three forty nine just above there the examiner describes the invention as requiring a single click which triggers analyzing so it seems to me that the invent that the examiner is characterizing invention as positively reciting analyzing but not requiring selection and that happens to also be consistent with the literal language of the claims which does not require does not say anything about selection at all and the specification itself as the board expressly found on pages six and seven that seems to at is expressing not what the prosecution history says in the part that mr sunstein is quoting it already is quoting in its briefing about the prosecution history prosecution history is only talking about selection once we try to get argument about the word selection there is not be tenable for this lame argument where the prosecution history doesn't contain any language for example all user actions that might somehow assist the analyzing and there are a couple of reasons for that first is we're operating under the clear and unambiguous standard and as judge newman said under the broadest reasonable interpretation of the claims both of those i think would counsel toward narrowing the scope of the disclaimer as much as possible and keeping the scope of the claims as reasonably document that the analysis could take advantage of so for example paragraph and line formatting portions in the text that say mr or mrs or provide could find a foothold and then in further there is some information that you would want to use later in the process but all of those things are things that the user types into the document in other words all of these features that  take advantage of are things that the user gives to the in our system so the user is even in the eight five three patent in the only description of the analysis there providing assistance to the analyzing step of the claims and so if to file an amendment a motion to amend and there is some discussion about how plausible and then once our inner parties review that an office actually did a study on this in april it's not a record you can certainly look it up would find written descriptions or any specification that expressly says selection can be part of the invention maybe it's questionable maybe it's not but the issue didn't come up because of the disclaimer argument whereas it would have come up if randy had file to amend the talking when you are searching the express reference in the specification to the paragraph on column ten that's exactly right lines five to ten and we would submit that that is not the course of action that this court should encourage under the broadest reasonable interpretation of the claims where the captain owner has the opportunity to amend claims that known or should be cleaning up this mismatch between the literal scope of the claims and the monopoly and for that reason we would suggest that under the broadest reasonable scope of the claims known or simply should not be allowed to assert even prior disclaimers if they have the opportunity to know that and but all of this argument is probably not even necessary i want to first talk about the kind of analyzing that said to go on in good hand because the summing the board agrees with our views on disclaimer we believe that given the proper claim construction including the disclaimer there is no evidence of analyzing without user selection in good good him necessarily requires the user to identify first information to the system by putting it in good hands selection box by identifying where the first information to be searched is the selection box of good hand serves the same purpose in terms of the patent claim as the selection of text and so the execute command asserted by google is the cursors leaving the selection box or clicking on an enter command when the cursor is in the selection box the execute communed in the good hand system cannot trigger analyzing the document for contact information the document is not analyzed to determine if there is any such first information when you say it's not analyzing the document it's analyzing everything that's within the address field right right but is not analyzing the text of an e mail for writing i can put the text i can put whatever i want including a recipe for a great breakfast in the body of the email in the in that template and good hand sees nothing of that it requires the user to put the dress information in that selection box without that it analyzes nothing and of course it is assume what the user puts in their includes first information so the execute command in good hand can trigger analyzing the document for contact information the document is not analyzed to determine if there is any such first information since that's what the user put into the selection box and then the claimed there searching requirement in the claim as well and that claim searching for first information takes place in good hand only with respect to information entered by the user into the selection box now the board referred to other kinds of analyze one of them was and it was cited by the petitioner checking to see if there is text in the selection box that's that's one of the theories for analyzing just whether there's something put but that really if you think about it it means checking to determine if the user has placed text into the selection box and that checking is not the same as the claim limitation of analyzing the document to char and if the first information is contained there in if the user is type nothing in the selection box then there is nothing to analyze it is the user who determines if the first information is present by putting it into the selection box and in fact there is no evidence even analyze what the user has typed in the document and per column for lines twenty two to twenty seven the user has already typed text into the document possibly including first information such as an address as a result analyzing the document to jerk determine if first information is contained there and as required by the claim they are ending the system is analyzing what the user answers typed meaning that there must be determine if the first information is contained therein and so that doesn't constitute the analyzing that's required by the client just looking to see if text is there and there are other kinds of analyzing that go on  so there is no analyzing in the record that supports the board's determination we think if you properly construe the claim then taking into account the surrender and then looking at the claim limitation of analyzing which is required to occur automatically because it's part of this computer process that means if it's automatic it can't you can't cheat by ok i'll stick it here our put it in the selection box it means that the analyzing has to occur automatically when you click on the one button in the randi technology it figures out where the contact information as it finds the first information automatically does the search and the comment by