and the only reason for firming that withdrawal of the obviousness rejection by the p tam was its misreading of the claims to require substantial offset and it also read little along referenced to disclose only a small offset and so it didn't believe that that limitation was met by the long so the claim does not require a substantial offset your honour's the claim requires  quote it says two fields of view corresponding to images that are merged as a portion where the images are merged that is viewing directions that are substantially similar to the viewing directions of the other portion and where in the viewing directions within one of such two fortunes appear to originate substantially from a point that is offset from the point where the other one of such two portions let a lot of words i can direct you to the appendix at one twenty eight which is for your fourteen of the seven eleven patent which illustrates this claim perfectly it shows that you have these four merged images these four wedges in the figure and when you have t adjacent portions or to take adjacent him jizz there is a portion that is that is on the edge of each image that's that's adjacent to the portion of the next image so figure fourteen you have a portion that's labeled five twenty and that's one portion and only add another portion labeled five a team which have substantially similar viewing directions which are both pointing northeast in that figure and as you can see the point of alone says that there is no absolute size of the offset it describes in terms of five to ten centimeters as one example and it says that could be considered small in light of or only in relation to the distance to the view seen so if i'm standing here at five to ten centimeters and this forward from you say five meters away this could be considered a small offset but the patent acknowledge and that's it says if the ratio is fifty or higher you arguing anticipation rob isthmus right now it's obvious obvious as your honor i'm arguing that the the claim does not say substantially offset and it just says offset and  rejection should be reinstated so long talks about the would be offset in relative terms if i'm standing a foot before your honor's that same five to ten centimeters could be a larger  originally had entered a rejection on intice a patient on the wall she withdrew it because she didn't find it the won't disclose mirrors because there are some disclosure along that says mirrors are not necessary under certain circumstances the pieta ha shit rules require you to raise on rehearing in order to preserve it for appeal here your honor i don't think the rules require us to request three hearing on an issue in order to preserve it for appeal i think the opposite is if you do right then there are a set of rules you play by ok your honor i think just not understanding under magna but thank you so that so i think we just discussed anticipation we think that that should be reinstated found there were six substantial offset originally then they found an insubstantial offset and then when they were defending their finding of an insubstantial offset they went along which said which says a mirror is not necessary along to say you don't need a mirror so you're not going to be performing be redirecting limitation in when you have an insubstantial offset both readings are wrong the claim just says offset the long discloses an offset and we think that that limitation is met  when when when those two core of when the correct reading of the claim is is if this court would read the claim correctly as it's written and it reads long as it's written to think that it really should be reinstated this things we're saying your honor well why why is this so why do why is torture ever share in arguing and arguing that you know he's he's asking for a modification of the judge me saying that the obviousness rejection never should have been included in the first put some structure around that it says that if the rev references were already before the board as they were here and if and in that case in particular you i pressed there was a an inconsistency at least as this court perceived by the board  where the examiners decision in it entered some grounds of rejection and they didn't enter another ground but the this court believe that it was totally inconsistent and said the board under its authority under forty one seventy seven should have had the obligation circumstances should you review one of the two under long and under no circumstances should he review one of the three hundred combinations of your references that's very clear from the director saying do not do it yes your honor and yet the board and no i think we're aware of it we that preclusion was on on probably can only come could not appeal it the examiner could not review it but the board to me if you have a situation where someone comes in and asked for exam i'd like to address the question of whether the board misconstrued the term substantially in the in its decision after the  judgment and the court in the proceeding ruled that it had entered into a contract with and appeal the government asked for both  summary judgment and specifically it's request for relief reversal of the decision on the agreement the court in that case said because they were asking for judgment so our view is that we're not asking for any relief beyond firmaments of the orange decision if you affirm the board's decision the tab was allowed to institute one of the new or parties three exams on less than all the grounds sir right and there was a question about whether or not that was a question of the jurisdiction of the but for them to exercise that discretion in the face of the statutory primacy of the director to decide what should be reexamined is an abuse of that discretion and we were only looking for a very narrow decision here that for the board to take a particular issue issue w which had been twice turned down was that abuse of discretion other words according to requestors initial argument leave long discloses that you points are both substantially similar but at the same time are substantially offset and it was on in response to that argument that the board down below talks about the substantial offset there is some clarification of this given to us in judge all ministers time concurring opinion on  appendix page fifteen he says the majority and using the phrase substantially offset was merely following the short and convention patent owner and request to cross to employ and he references a a mistake to take what the board says here as a misconstruction of the claim and in fact if you take this short hand in unpack it into the constituent elements the short hand is supposed to represent is very true that that is what is required by the claim assuming for the sake of argument that the board did drop the ball and make a mistake in determining there was substantial offset i think there are four reasons why the board should still have rejected this long construction that they provided one is the very reason  that the board concludes with you says in any event they don't explain sufficiently how you can have two inconsistent conditions existing simultaneously and those inconsistent conditions will be there whether  offset is big or small so in that sense if they misconstrued it it was immaterial because the reasoning would apply reason number two is the reason given by the majority opinion in the which is that in response to polly comes argument that it doesn't have to be big it can be tiny and the board in the it's majority said well if it's really tiny i interpreted this as negligible versus not negligible that calls for a non negligible offset whereas long the sensually says we're trying as hard as we can to make these throwing away the the argument fourth one is the one that shows up on pages sixty one the very same you would develop the blind regions and that long it would not you one would not be motivated to make the offsets that way because  long says absolutely all the details of the panoramic scene there recorded by one or the other camera so that no object under surveillance is left out so you would be contradicting if you did that with respect to last point i would like to make in the minute and a half that i have left is our contention that this is a case that  based on substantial factual evidence the evidence that was required to be produced for the examiner to overcome the new round of rejection the declarations of d and our argument is that this constitutes the sort of substantial evidence that persuaded the board and was to be given deference the  when the evidence will support two different conclusions the it's the epitome of the kind of case where the decision to take one has to be treated as substantial of a thank you petition for your below an appendix six sixty three this petition was addressing only claims twenty two to twenty four of ground w were twenty two and twenty four at all everything else had been instituted this was a this was a petition on the decision not to institute twenty two to twenty four we are not looking to have twenty two to twenty four anticipated by law that's not in part of the claims that we're that we're appealing  i can move on the question that the p t have misread the claim i'd like to just read some quotes what the p t had said about substantial offset it said in view of the explicit disclosure of the law on that such an offset would be site another quoted appendix twenty eight which says it again it says requester does not explain sufficiently how the same viewpoints of the war would have been considered by those of skilled in york to be both substantially similar and substantially offset from each other at the same  even assuming requester to be correct that claim one does not require the claimed offset to be substantial appendix ten these are again and again misreading the claim limitation to require substantial offset  dissent pointed that out at thirty three and if you look at is a declaration it's seven twelve to seven seventeen years says not one word about the disclosure of the law so nothing