may please the court thirty three of the thirty five claims of the patent are directed to player designation or choice of symbols for replacement claim thirty two which is the only claim at issue on this appeal is not one of those claims the arguments of the here and the decision of the district court are against this court's holding in fellows and it's baffles extending inwardly from the walls could include baffle so oriented at a ninety degree angle from the wall face even though in the specification there was not a single disclosure of battles that were hinted at so much that you didn't disclose a machine doing that designating even to the point where and you recognize that that could create enable men a written description problem but that you said that's not what the about it's about player does it nation and then in your in the prosecution history that's how you emphasized your difference from the prior so i think that goes to the issue of whether or not there was a disclaimer in the prosecution history or added in the specification or in the specification correct and if we if we're past the part about the ordinary meaning and we understand that the ordinary meaning of the claims here is that they do they are broad enough to apply to machine designation and two is programmed to decide which of the initial displayed symbols will be respon and replaced with replacement symbols that's what that means and i think that the preamble of clean thirty two is clearing machine is programmed to favor the of chance into more of a game of skill but that is not the only problem that the pattern sought to solve the title of the four seven seven seven four seven seven pattern itself is instructive it is an electronic second spin slot machine  additional problem that the background of the specification makes clear that mr d its was seeking to solve the problem of finality you put in a coin you spin the machine and you're done and if you don't have a winning combination you're just watching every start ing occurring and the prior art and the and his description of it was that the problem was that it was random so are you saying that the pattern was solving the random spending there was not random responding in the prior art but i don't i i don't think that's an accurate what you see on the reels in the pale line and then you could also see some potential additional symbols present and you could decide whether and again this was player choice and this prior device you could decide whether to push it forward and nudge the symbol to create a new resolved by the player getting a set of symbols maybe not a win but maybe close to and maybe there are two cherries and you need three to when the machine can be programmed to respond in all of the other symbols to see whether you get another cherry and so it was the excitement of having not just one tribe but two that the background of the specification talks about as and as an additional problem that this invention sought to solve we don't dispute that a significant portion of the specification in the prosecution history is directed to player does ignition and player choice that is because thirty three of the thirty five claims in the pattern are directed to player choice claim twenty as it was initially presented when the application was filed for example  modification of them where the player can choose only one box to respond the apparatus of the president mention could also respect all other boxes correct and in order to carry that out the operating system of the machine has to be programmed in order to know if the player picks a cherry i need to pick all other cherries and respect them it is all that you still have to have player choice to begin with you would have some player involvement but you would also have machines as ignition to machine this this is a hybrid or combination if you have anything that shows or discusses how the determination would be made by the machine alone i don't think that it's any different from the way that the machine determines what symbols to display or to turn or determines knowing how to spin other charities if one cherry is selected the way that the machine selects symbols for display it talks about using for example a random number designate or and so a particular number will be associated with the cherry another number might be associated with an orange and the microprocessor produces a random number generator and it knows that what symbols to plug into each box there's absolutely no reason that a person of skill in the art wouldn't know that you could also host then there's nothing to show that if it's totally random then what difference does it make it doesn't make a difference in terms of the odds to the casino it makes a difference in terms of player enjoyment and that's what the patent talks about in the background the finality of one stan and you're done until you put in another coin is something that was frustrating to players this invention allows for increased player enjoyment because you get your first spin and then you get another and in fact all of the if you say this is this these six lines or whatever this is it this is your entirety of your support of the specification for machine does the nation i don't think that's the only support for machine designation there's also there's also a section in colum two through eight talks about responding symbols again if they first three spin produces the same initial symbol as was previously displayed but then the rest of the specification where it talks about well it says it could be automatic insists player still has to say that they want to respond it says it could be respond automatically or at the player's option i believe but the symbol that was previously designated by the player machine doing the designation well the machine is programmed to know how to do that and i think the rest of the specification teaches someone of skill in the art how you would program a machine already know what to do from anywhere not that well the entirety talking about the microprocessor and the use of the random number generator to select symbols i'm not suggesting that it specifically tells you that you're going to do it with a machine and that's where we started off this morning is same this is very much tracking a philips i cannot tell you that there is a specific teaching all of the ways that you would perform claim thirty two without any player involvement but that was also true in philips that there was no disclosure of a battle at ninety degrees and yet the court held that the words of the claim are controlling and where isn't enough right but the the description of the invention and specification talks of the second spend resulted in a second spin respect machine and it talks about the ability to have that second spend it is only in the context of discussing preferred embodiments where the specification goes into who is actually doing the designating of symbols for respect so the discussion in the specification is not entirely directed to player designation although there is certainly a significant portion that claims here on their face are clearly directed to the operation of the electronic gaming apparatus and the claims where the patentee sought to talk about player choice of player doesn't nation were worded very differently those achieve the goal of the invention that is skill in player trying to see if the machine designates which symbols are replaced and i guess the answer is that they all of the invention one goal is giving  player choice but that is not the entirety of the invention and so claim thirty two i agree does not give the player necessarily a choice at least with respect to the limitations that are set forth in here claim thirty two however is directed to another aspect of the invention which is giving the player an opportunity for replacement of symbols whether or not the player has any involvement in that replacement or whether or not the player has any involvement in choosing which symbols will be replaced is not the point i would submit that this patent is directed to significantly giving the player a choice thirty three of the thirty five claims he directed to that but there is a second piece of this pattern that  directed to improving the player experience by not having the finality with one spin by giving them that second skin and giving them that opportunity for an improvement which makes the games more enjoyable these are the most popular games at the casinos right now the ones where the machines doing the respect so this is this is an aspect of the invention it is not the the bulk of the claims are not directed to it but it is not something that was not part means good morning and then it please the court that just recorded judgment should be affirmed because both the specification and the prosecution history repeatedly and consistently describe the invention requiring player designation and there doesn't know and i spent two parts as an example if you take a look at a regional claim eighteen and you can see that the record at nine forty seven claiming team generically recited designating initial symbols for placement with nothing in front of  geron just like plain thirty two clementi was rejected over the prior art and the applicant distinguished the reference by saying there was no provision in the prior art for allowing the player to select initial symbols for replacement and therefore it was entirely a game of chance whereas african slot machine involved an important element of skill i e choosing which slot machine symbols to replace so from the very beginning the output has always treated every single designating claim thirty there's a very specific definition of winning combination it was defined as being assessing whether a particular symbols are aligned horizontally or vertically diet going or in another geometric pattern claim thirty two had another significant difference which was this concept of a single simulated spinning motion those two limitations that identified were what the outlook that used to distinguish those claims over the well the applicant has use different language at different times to refer to the same thing that the fact is that every reference to the president vention and specification require player designation every single embodiment required player page fifty three of the read brief where we have an annotated excerpt from page one fifty nine of the record which was an excerpt from the july second two thousand and two and  that can argue that the important difference is that in applicants game the player has been given a choice he or she would not have had in a regular slot machine again as were cited in applicants claims all of them wasn't limited to any support for the cause of the machine designation of symbols the support that was identified was not machine designation of initial symbols it was only machine designation of  difference is there a difference yes so the applicant has argued the whole basis for the alleged invention was that to make it more interesting for a player so that way they're not frustrated by having no ability to control the outcome they're given a choice they can pick which which column or a row or diagonal to replace to get another second chance at getting a winning combination so that was the the point of distinction throughout the as one initial symbol that is selected by the player in terms of the claim differentiation argument this court in curtis wright has said that even if there are slight differences in other portions of the bodies of two claims that if a single limitation of a claim is identical but for specific different language that there is going to be an assumption that that specific different language is there for a reason because it means something different but that isn't your real problem history does appear to require dependency on player choice the preservation history was an evolving process that evolved over time as the claims of alt and under this court's precedent to review the prosecution history for purposes of finding a disclaimer or looking at whether there has been a disclaimer you have to review the entirety of the prosecution history and see where it started and where it ended because applicants are entitled to initially pursue claims based on one theory of player involvement or player choice and two over time will come back and forth with the examiner realize that there are other grounds for patentability in this case there were two separate bases that are revealed that reveal themselves over amended at that time to say from one to all other claims of the patent were amended to say allowing the player to designate and i think it's important that someone of skill in the art reviewing the prosecution history seen the arguments that were being made and then seeing this very important thing that happens where the patentee decides to amend many of the claims to say allowing the player to designate but expressly at that same time does not amend claim thirty two leaves claim thirty two to say designating it says something very specific that claim thirty two is being pursued on that basis and in fact the examiner here is his name of the settlement that says the reason claim thirty two is allowable is because of the incorporation of the from one to all claim language the reexamination examiner confirmed claim thirty two and thirty four were not limited to player designation they were issued because of the inclusion of the front one to all in which and just very briefly  word allowed to designate a chosen number from one to all that is not the language that was present in claim thirty three at the time which was issued claimed thirty two every time in the prosecution history where the applicant talks about the player choice it uses language that it was present in other claims claim twenty added to claim thirty added to claim one does not use the language of claim thirty three and there is no place in the prosecution history where the applicant or addresses