by the director or his or her designee and then try to be resuscitated if we're talking about art that had never been explicitly considered to raise a substantial new question that to me doesn't make any difference i mean thirteen eighty three of the decision is talking about section three zero three and it says that once a reexamination order has been issued the reexamination quote may not include other prior art and what constituted the basis of the director's determination of a one so that your third party request the director will determine whether substantial new question of an ability affecting any claim of not concern is reason why the request with or without consideration of other prior are printed publications so what the statute is saying r issues are rejection on the merits and the applicant response either with an argument or an amendment or both that the patent office is constrained to the art of record and can't cite creation of the statute which creates a timeline of things that must happen so if you do it as the patent office did it here you are you are depriving the patent owner of the statutorily allotted opportunities to respond to that essence you  months after the initial rejection right minus something i think you read so what is the i do want to get back to something else that seems important to me because i don't understand it very well but but as a practical matter what would assuming and this is what i'll get to in a minute at the examiner can actually do this though i'm not sure the examiner can what is the practical difference between the gammon are saying i reject necessarily there's a substantial question of patentability i actually think there's a meritorious patentability objection and you get your two months where's the prejudice so your honor it's the amount of of right to respond to that substantial new question of patentability by filing an optional pattern or statement then if there is a non final rejection the applicant gets another opportunity as of right to respond to that rejection that substantial new question of  then after a final the applicant may get another opportunity although it's discretionary whether or not it can be entered in at that will let me let me saskin to it and then i want to get back to the question that i have been known to focus on before we started this conversation i don't see that you have made a case in this particular case for how you were prejudiced in the usual concrete sense of saying had we that you know you you win let me focus on the following when i read the regulations in particular one five fifteen in one five twenty one five fifteen  the we x party b exam the examiner examines the s and you question on the request one five twenty says the director at any time can declare an s and q i do not see and i'd like to know if you know of one and if it makes a difference any delegation from the director to the examiner to make its own his own or her own sewer sponte s and you determination i know that under and i know that under patent office policies the director has l delegated that responsibility to the examiner and i'm delighted to be able to find what i said saw that there was in twenty ten a notice in the federal register that probably did not actually do that but addressed  only going to the board to challenge and examiners s and q determination but it's not clear to me that that was beyond one point five fifteen as the ones based on that request and then i saw something which i think the p t o the director point in this round of briefing but back in two thousand and fourteen about an april twenty third team letter saying the chief judge of the board can make certain determinations i'm not entirely sure what those determinations are from the letter but i don't see anything and i'm very curious the delegates to the examiner the authority to make suicide monte s into determinations and if there isn't such a thing then it feels to me like there's a problem with the your honor i don't know where the authority comes to do that your honor i we're not aware of any authority and we did raise that previously we didn't raise it here because we thought the statutory construction argument was affirmed without rejecting this legal contention about the statutory contention about s n q's and reexamined which is not in any way claim specific your honor it actually of the one point nine five and one through twelve of the ninety one that were never amended so this court may have adopted the argument that we're advocating which is that the examiner is confined to the us and you but then reached a different conclusion on the open question from vulcan what d that's a separate issue and why amended claims should still allow should still terminate the regs emanation in response to judge toronto's question about was there a specific issue that may have compel that decision which as a rule thirty six without  the request right and five fifteen provides that the examiner can make a determination with response what response to a request right and that's not that doesn't cover grounds that are not in the request and that's what we're dealing with here and wire art grounds that were not in the request right i think but once what is the misunderstood the premise i think so oh i don't know i'm not going to say that you've missed misunderst substantial new question of patentability outside the request and therefore outside five fifty one point five fifteen no now the order was issued based on the request so the reexamination order was based on the other references what language in one point five fifteen says that when an examiner in a ruling on their request can determine a substantial new question of patentability other than those asserted in that request there is no rule that says that but i know of but here that's not what happened here and what's happened is that in the order granted reexamination examiner considered the prior art that had been raised by the third party request or and the orders are is implied in the rejection the question is if there has to be as i think there has to be and tell me if i'm wrong under the statute it directors determination of a substantial new question of patentability the question is how did the examiner get to do that if there were a regulation that delegated that to a spontaneous already at any time authority in the second sentence of three o three then that would be fine i don't see it i don't i want to know if there is in fact a delegation from the director to the examiner to exercise the at his own initiative and at any time a story well i think that the way the statute works is that once you get once you issue the order then delegation vie the director to an examiner to make a determination of this of a substantial new question of patentability outside the terms of the request that was made by whoever the requester was i mean i guess other than then the section three b which gives the director the ability to delegate any of those functions i'm not disputing the director could delegate i'm asking if the director has de the first issue that was at issue in vulcan was whether or not there the board had jurisdiction to consider the essen to determination which it did that the court held did not under three twelfth's see section three specifically i didn't understand the difference just in procedural context and that there was a determined it and that in that case the director had actually said no i don't think x is a s and q and but we said repeatedly as a statutory matter that there is an affirmative requirement for there to be an s and q from the director on a particular matter in order for the re exam to rest on that piece of prior art that the directive setting out the reexamination order defines the terms of the sorry five fifty rule five fifty they certainly contemplate that the examiner can consider other prior art in five fifty five for example it says that the examiner should parties and x party correct so that would be equally true in the built in context correct so how could that mean something contrary to do what this court said in health in the statute limited  which makes sense because in essence q determination is a lower threshold it's a substantial likelihood standard and therefore it would make sense that the examiner could have written a rejection based on prior art and that's all that balcony is stands for not all th is really hold and it was it was about the jurisdictional issue and secondarily it was about whether or not there was a final written decision favorable to patentability and for those reasons that held there was no final decision because there could not and the camera could not did not consider those references and would not have consider those references and therefore there had never been a final determination what parable the patentability in falcon not all that i case stands for and that's simply different from this case where the examiner is considering new prior art i was brought in by pact of and practive and included there was a prior art in addition to that the prior art that have been raised by the requester and combined that to write its first understanding that you think that there is at least a potential distinction so that even if i thought examiners could not do this for an an amended claim you would have an argument maybe right i do think there is possibly a distinction however i do believe that in the prior appeal at twenty seven he wanted twenty seven thirty two of the record active raised oh i made arguments with respect to the original claims and said that's an twenty one seventy want to says those original claims which also were based on s and q s that were not in the original order and then in twenty seventy two it made a case for amended claims and it gonna just address that last point they were all of ended claims what the what we had asked for was something rather novel in the remained which was because the court had me at because the p t o we thought had gone beyond the statutory bounds to essentially turn back the clock on those amendments and allow the claims as they were in their original form prior to the amendment but they were all amended notwithstanding the fact that we asked for those original planks to be to be issued and the court may not have wanted to do that because it would have been we it a novel and every man argument i do want to address a number of things in particular this issue about bulk and and rejecting the prior the built in decision goes through the entire statutory analysis and comes up with its conclusion and doesn't address this rejection of the three pieces of prior till the end and the very beginning of page thirteen eighty four is where to dress this and at this point that's what the court has already made its conclusion about the statutory control struction and so when addresses this it says quote secondly if there had been any doubt in this case and then it goes on to say the examiner rejected those those three talks about the fact that the examiner examiner rejected those three references so the rejection of three references was merely confirmatory of the statutory construction in fact this court set to resolve the question on appeal we start with the statute also in relation to the idea that the regulations may require the examiner to go out and search our and one point five one five and five to zero again let's just take a step back to the statute as this court said and vulcan on page thirteen eighty four statutes ranked higher  regulations which rank higher than the m p e p and let's look at the statute and i want to read one more issue on judge trotter your point about the commissioner can do certain things and then the examiner can do certain things judge this question earlier of an i d s if in proceeding that's a do your view confined to the affirmatively stated substantial new litigation so even though you can't use the i d s to formulate a new rejection the examiner can use the i d s to for example see how the parties are arguing combining the art the examiner can also under the rules and under the statute go out and  other art to rebut arguments of patentability so for example were i to say if i had a case ice does not melt at thirty two degrees the examiner can go out and find other art or statements in i d s right may have admitted that ice melts at thirty two degrees the statute which confines examination and which determines what happens following so you first heard the director delegated to the examiner and said during the course of the reexamination you can you have the authority to declare reissue where you have full on bond and ability you can file an r c d or of continuation of that amendments not entered and here on peach six forty seven of the record in the advisory action post the final office action examiner actually took us to task for not presenting additional evidence to counter the arguments well that's only because the procedural posture cat hampered us you would think that that's the specific prejudice your honor that you were talking about not having a full opportunity to respond to the s and q and then the examiner calling us on it and saying you didn't provide that prevent sufficient evidence for me to really reconsider my argument well after final if we want to get it entered we have to be really careful about not overstepping their bounds or may not get into at all