it absolutely does not trump the statute it's a way of satisfying statute and if you look at the text of section one twenty it says that the it says that that occasion has to contain or be amended to contain a specific reference that's exactly the same as the language if you look to section one twelve it says the specification shall contain a written description in such full clear concise and exact terms everyone agrees that section one twelve's requirements can be satisfied if the corporation by reference without trumping section one twelve i don't see any reason then that the same corporation by reference technique couldn't satisfy the terms of one twenty one to deal with encyclopedia britannica encyclopedia britannica simply says and we don't take any issue with it that you do have to actually provide a specific reference to each in the chain in a you know particularized manner that identifies exactly documents that are being incorporated our contention is not that rule one point five seven of voids that requirement is simply way to satisfy if you import text description to set forth the best mode to specifically conclude with claims to describe even the structure for means plus one from claiming all those things also are served by putting it on the face of the patent it will point one one point five seven everyone agrees can satisfy those requirements i think it's materially indistinguishable to say that this also can satisfy one twenty section one twenty does not say that it has to be written verbatim directly on the text it simply says it has to contain a specific reference th macs said that when you incorporate a document by reference it's exactly tantamount to explicitly reproducing that exact text on the face of that of the patent and again the answer some problem with reference to  seeing the way this is played out but this is a this is a real property right you know backed by substantial investment ingenuity and the quo sion is whether the regulator community reading the text of one point five seven which on its face does not  last hour and i think when it does reach the supreme court i think that will be the end of that deference but you don't need to decide that here because our contention is that the agency's position is actually incompatible with the text of the regulation the way that regulations typically think a few reasons are on a first that wasn't the basis at the board ruled and of course under its basic a p a principles you're bound by the stated reasons provided by the board i think more importantly not even the government in pointing that out suggests if there's any legal relevance to the i think you're  essential material the question isn't is it other material and that's the way to look at the text in the structure other non essential for other will it says nonessentials actually tucked in the middle of the sentence in apparent federal so if you if you read it most naturally it simply  essential etherial can be incorporated by reference focusing on very limited documents you can use to make sure that there's absolutely no confusion and then it gives broad authority to incorporate other material by reference and as a slightly broader set of material and simply how to make a specific i hasten that i think because they dress two different topics your honor one is describing what don't think governments point well no no i think i think it's a different point that the specific reference regulation describes the degree particularities necessary to identify exactly what your corporate eat can't just wave your hand in the general direction of some prior application and say that's enough you have to say by serial number you have to have a title the date that describes the degree particularities the incorporation by reference regulation describes how do you go about providing that material and there are two ways you can do it one you can get your pen and you can write on the face of the the application exactly with particularity the specific reference and we met that is a better way to do the other alternative way to do it is you can point to a document that that has exact priority chain and you can incorporate if i reference using the root words under one point five seven b we incorporate this virus france identifying exactly the document that's being incorporated and if it provides that specific reference then it satisfy section one twenty just as it satisfy section one twelve you know again if that is that you refer to that it is essential material priority mit is not essential material that's right you're well yes in no your honor because again you have to read it in the context of the regulation i think the alternative reading actually is more odd which says that anything that has a legal effect presumably is essential in some sense if you don't satisfy the point of the regulation it's vesa fine what documents can you corporate for different things when we go to long problem they went to trigger the trouble because they wanted to make sure that when you're when you're satisfying section one twelve you're limited to the us patents and use patent applications when you're satisfying any other provision of the patent act and again this gets back to your question judge dyke surely section subsection of the isn't irrelevant if it's subsection the other material non essential material only refers to things that are absolutely irrelevant it makes no difference whether you can incorporate them by reference or not it has no effect so surely subsection v has some legal effect is dealing with some material that can be incorporated by reference it has some reason for doing that or subsection d is effectively referencing a no set so so our view is that subsection the authorizes incorporation by reference for everything that isn't essential material if you slightly broader category that you can use and as long as that thing you've incorporated satisfies with placed the court section one twenty eight and it's and commenting regulation one hundred seventy are clear priority claim requires a specific reference to each prior filed application by serial number  relationship and this court has strictly construed want to twenty to put the burden on the patentee to provide a clear chain of priority i guess i found your argument very appealing you know begin with the statute the regulation says essentially exactly what the statute says and i'm being very and i'd like that except for the fact that that this one twelve argument is a little troubling one twelve essentially reads almost identically to one twenty in terms of how you have to identify it but all the sudden one twelve is doubt treated differently so what your response to that well incorporation by reference regulation specifically allows one twelve material as essential material that can be incorporated by reference there is no other statutory requirement that is listed non essential material i think naturally is the complement of essential material and if then in the e p since the sixty's q b state of the art background of the inventions things that compliment that are non essential but complement essential material and i think the scope of what can be non essential material is shows you that droplets argument is unreasonable because you can incorporate non essential material by reference to foreign patent applications non patent publications and those publications themselves can incorporate the information for reference so the idea of incorporation by reference statute is to get a complete to allow applicants to give an additional information about the background of the imprint of the invention but it's not it doesn't have a legal effect you don't need it in the application what one twenty a priority claim is essential for you to claim or what you're saying is that it's not that the statute is being interpreted differently it's just that you're you're allowing this essential material for one twelfth purposes to be incorporated by americans that's correct in the purpose of that is then we don't want specifications don't have to balloon if you have information in a series of applications those that information can be incorporated by reference to meet the one twelve disclosure but it's limited to u s patents and u s pat application publications because those we know that the public has access to and that's essential for the for the one twelve allowing people to be able to find that information here for non essential material any path any publication with reference that the the public would now have to search to make sure that somehow there's not a priority claim in that because under droplets reading of non essential material a priority claimed in a non patent publication that was incorporated by reference to what effect the priority claim there's nothing hard about including a clear chain of priority which are your response to droplets  not so clear to the public or reading the patent on the face of the public because on the face of the patent because of the corrective pretty plain receipt you only see the a three a patent and then when you go to the specification the only specific reference in  they also had notice when the one one five patent issued quit on the face of the patent the a three eight prior patent was the limited priority claim and they took no action they could have filed a significant correction or reissue application but instead they sat on their hands and i think the burden should have been on them to correct it as opposed to the public to try and figure out what priority date with what we do get into the needs of analyzing what  material and what's nonsense material as a matter of logic my problem is is that if you have an agency that says there is a central material on non essential material it seems that that would be one hundred percent of the landscape the notion that you can have essential material non essential material and then some of the material out there so i think the thing is the whole purpose of the incorporation by reference is to for disclosure of the invention and so essential a non essential material are the entire universe disclosures of the invention the agency didn't contemplate that that the non essential material would be this other statutory requirements that are not about disclosure of the invention at the same time they probably at the agency promulgated one point five seven they also amended one point seven eight to say that you could have multiple sentences for your priority claim to make sure that chain because we want that change to be clear and sometimes it's clearer in several sentences so when the agency was probably getting these regulations they really must be amended to contain the specific reference yeah so i think the office position that you know one one twenty is its own that we can't define redefine that statute the thank you and may please the court each trade is in agreement with the director's argument here that the board's decision decision the pretty issue should be affirmed and we agree with the director in the sense of the statute is very clear on this point the corresponding regulation is very clear and this court's guidance is very clear your honor you have mentioned the brittanica case i would also respectfully direct attention to the medtronic case which addressed this issue very much on point and explained that section one twenty as well as the corresponding regulation very specifically requires that specific reference and that entails a identification of the application by serial number and by relationship this is something addressed on this issue and it's not necessarily a matter of deference to an agency these are things that of have been addressed and decided on the the rule question with regard to section one point five seven i think there is i would agree with that what i think i'm hearing and that is that section one twenty as well as the corresponding regulation one point seven eight imposes a different requirement when it comes to a priority clan right one point five seven may let you do certain things with respect one twelve support but doesn't change the fact that there's a statute a corresponding regulation that imposes a different requirement when it comes to priority claim that requirement is a specific reference  these are very clear requirements they're very easy to follow they've been in place for decades and they serve an important purpose in allowing the public students back to pat and understand exactly what the priority claim is and what the corresponding that make what we should do with your cross appeal in other words is the question that across from me all is moot and so therefore we don't address it or is it that the cross appeal within a program in the first instance and therefore should be stri judgment in rather than experience and that's the situation is moot understood and that is an issue of wreckage an open question in some way is there you know we do recognize the court's guidance in the district court contacts we've regarding whether to take the vehicle of a cross appeal or an alternate route of the different board context well because it's an agency situation if there is a strict general application then there is a question of whether i'm not aware of the agency context of an this this ground that involves the p c t application why isn't that just an alternative ground to affirm agencies ultimate judgment it very well may be and we try to be candid in the briefing that you know is it your position that you think this just satisfied with the language in the a i a somehow broadens the scope of appeal right and i wouldn't characterize it that way it's more of a question of what's the appropriate vehicle if  party in our position that ultimately prevailed on the issue of one patentability did so on one ground but not the other certainly we're satisfied with the ultimate outcome but we disagree with direction from the board that in cases on remain and that they don't want to consider issues that weren't raised by the party in front will suffer if that's is you have to raise the issues moving the board and set about having to fall across appropriate way and i think the parties are in agreement that there was an entire clarity and this is it wasn't meant to be any type of inappropriate vehicle it's just to be very clear what we're trying to do and that this was  priority issue if it's helpful and i'll leave open the discussion to questions but one was on the on the notice issue the board does actually discuss this at age twenty one the corrected filing receipt issue and i think this is a very important set of facts for this case there is this issue of what to do with the directors argued and what we agreed with is a very clear statute and corresponding regulation and past office guidance to the extent that somehow not clear in this particular case the pattern was told multiple multiple times and very in a very clear fashion that they're pretty claim only went one step back to the fee three and if at an y point they wished to correct that or they felt that was an error they had multiple opportunities to do so over the course of years and corrected filing receipt a notice of allowance which identified this limited priority claim the patent issued with it with a prior to claim that that actually is quite clear on in column one that it goes it goes one step back to that e three a patent payment to so you're saying contrary to what your friend on the other side to that we could go off on issue i think there's a very important issue of fact here and this could have been addressed during the i p r event and there are multiple steps along the way where if there was some perceived error unintended priority claim here and something different was desired there are multiple opportunities throughout the course of the proceedings today to address that so i don't have anything further on the specific questions on the ok ruth you know so i guess i'll comment very briefly on the cross appeal issue again i don't think the court reaches this issue but to the claim construction we did but that's a point of confusion if you look at the board's decision at a thirty two they say specifically note that this was an issue for application of the prior art and declined to  to provide an express claim construction and i think what you're referring to is a fifty three where the board notes that the parties during the course of the litigation seem to arrive at an even though greta upon construction of the term and that term with you for this term instructions was some indication of what to do and that you know this and the date corresponding data did not have to include executive it was an agreeable definition between parties there are two problems with that one is what that means for a claim construction we can look at the decision because really be clear what the if the board applied that agreed upon construction or something different when you get to the application if there's a disconnect between that construction and the disclosure of the prior reference in other words there is no reasonable basis to conclude that based on that construction that the prior art disclosure didn't meet that and in why the board came to think conclusion is it's just you can do that even if all that's in the actual specification is saying i incorporate this other document by reference it still containing it using the same word contain and the question is what does it contain and so i don't i don't think there's any material distinction between those two things there's certainly no textual restriction in rule one point five seven it does not limit on its face any use of incorporation by reference so long as you're incorporating a document that's approved in subsection c or subsection d but the eight thirty eight doesn't have the incorporation language you mean you want to say that even if you incorporate the eight there again by reference and it doesn't have the party language that them were supposed to go back and see whatever the ate their gaze incorporated by reference and keep going back to change it our contention is that once we incorporated the eighty three pattern by reference and that appears as if it were explicitly written into the text of the one fifteen pattern itself and it was uncontested below this is a page of one twenty and exactly the kind of particular terms that section one twenty and rule one point seven eight requires that my my last point if the court may i don't think the government has a good answer for how this is different than section one twelve the government suggested that the differences that are one point five seven less the requirements of one twelfth of course if the statutory language precludes the use of incorporation by reference then it doesn't matter what the regulation