don't read the open the greek is challenging the merits of the rejection but rather the procedure yes that's correct your honor we are not discounting indeed you liberally as i read that we stayed away from the that's correct your honor if they prime a face a case of anticipation has been established in a legally sufficient matter it's our position that that's the end of it but if they prime aphasia case of anticipation has not been established contesting the prime aphasia case of anticipation then we would lose so we don't want to second bite the apple what we want is that the prime of a shit case people honored as a legal requirement for the examination process which it was not done here in order for the prime aphasia case to be a real legal requirement for anticipation we submit to this court that there has to be an independent review by the board which never occurred here the board acted as a super examiner and basically did the rejection what they thought was in a proper manner for the examiner who had never provided a legally sufficient provocation case this is in our opinion a case of first impression we can official case is to create a burden of production that is in compliance with section one of two but i mean i really don't understand what the issues are you're not challenging provides the applicant with a sufficient written rejection but that begs the issue the issue is that the primus facia case requirement has to satisfy the one or two requirement which means there needs to be an on the record showing a reasonable broadest reasonable claim construction and there also has to be a record showing that there's evidence bridging the facial differences between that reasonable claim construction and the purported what is required in our opinion and then as we said earlier this is a case the first impression we believe is that there needs to be a reasonable on the record claim construction along the lines of the n r a sukkot cases examined by the examiner during the prosecution process not by the board and there has to be record evidence bridging the facial differences between this reasonably construed quain and the purported anticipatory reference and so what's missing here are claims construction on the exam and that there is no evidence filling the gaps between the reasonably constructed claim and the anticipatory aggressors saying is that the court can't say anything already your honor we we took the position o has no practical effect the patent office has can has conflated the notice requirement into the crime aphasia case and basically reduced it to just mere notice and we submit that that's not the law and it requirement lies with the examiner and not with the p t o and the reason we take that position is the very practical reality of what we're arguing here today applicants at the beginning of the prosecution process have the unfett ability to produce evidence on the record they have the ability to amend claims they have the ability to make arguments as the prosecution continues through the final rejection and then to the board their ability to submit evidence argument and make amendments is very reduced to the point where by the time they were before the board they can do none of this if the board can act as a super examiner like it did here and then say that it's not a new brand of rejection  the new argument well your honor what is the more well your honor in order to overcome anticipation oftentimes you need to provide record evidence in the form of one thirty two decorations for example what we're saying is that we're we're not asking for a second bite of the apple we're asking for the patent office to provide a legally sufficient initial rejection that satisfies the prime aphasia case what they did here your honor was they took this counted ski reference they pointed to it as if we're supposed to know what they're doing and then they construe the claim terms in light of the counted ski prior art they never construed the claims in light of our specification that cannot be your intention to answers your honor yes but it's very risky for appellants to do that and i would submit to you that we are the rare exception to the world we are not opening floodgates your honor i reserve may please the short good morning hours that prosecution is an interactive process the examiner goes first under section one thirty two the examiner has an obligation to put the applicant on notice as to precisely what the rejection is and to do so well enough so that the applicant knows how to respond well the examiner has to point specifically enough to the exact part of the reference the examiner thinks is within the scope of the claims and must do so clearly enough so that the applicant knows what to do so that the applicant isn't shooting arrows in the dark as in rio to well the breadth of the claim under the examiners interpretation is implicit in the initial rejection and we see that here where john came back and didn't argue that he didn't understand the exam which rejection but he made in an argument on the merits of the  r reference but is there an error in the board do that if the board moves in your hypothetical my answer to that would be no if the board moves a little you know if the if the examiner says it's absolutely there and then the board says well maybe it's not absolutely there but it's inherent if you're suggesting the change in the thrust of the rejection from an anticipation rejection that does not rely on inherent see to one that does rely on it here and see it seems like in that situation that might amount to a new grounds of rejection and might agreeing with how i know you are and let me be clear about this the problem with saying that your hypothetical is not going to have a new grounds of rejection is that that premise in the hypothetical answers the question if there's no new grounds of will come up with new reasoning so long as the reasoning isn't a different thrust and let me explain why that's very important the board is sits at the top of the examining core that's what this court said and in reality the board is the final word from the u s p t o on the patentability of claims and to fix examination with the very first office action and not allow anybody or anybody on behalf of the agency to change the position all the way up to this court simply makes no sense the examiner when they face an initial office action they could have ten they could have one hundred claims in that application all with multiple claim limitations and to say well the examiners got to go through it line by line tell us what every single construction means and if the examiner doesn't do that then we'll be able to reverse that rejection of the federal circuit here what happened is the examiner made it perfectly clear what he was doing the examiner did exactly what he was trained to do he used column line numbers and figure reference numerals to take the very short claim to take its limitations to take the well charge level controller limitation and to point exactly to the controller that's the prior phrase that controls the level of charge in the well he couldn't have well certainly first of all the board can make it clear and it's their obligation to do so but if they're doing so moved the rejection in a new direction then that's a new ground projection and i want to add right now a new kind of test i think it's important to look at what they actually are doing here that it was moving to a new direction it was not moving in a new direction that's the whole point of the flaw in their argument from their very first response to the very first office action they said exactly what they said all the way through even in response to the board they said the claim term well charge level controller is not found in the prior they made no allegation that they didn't understand the rejection they made no alibi ation that the rejection had some shortcomings other than that shortcoming on the merits that's precisely what they said and in their brief to the board that's what they said again at page two hundred ninety of the record which is where they specifically made their argument about independent claim one it's an argument on the merits it's an argument about clause c of independent claim one they could not come out of the box and say to the examiner you know what we would like to respond with evidence we would like to respond to your rejection but we cannot and the reason we cannot is we don't understand your objection if they had said that then that's the sort of thing that the board could have reviewed on those terms the board reviewed this case on the terms they presented to the board which was the shortcomings of the  know on the merits it is your honor and they re sukkot surface and this case is just likes to go surface in as much as the challenge is the same it's a claim construction challenge and let me try to discretion boards as well that apply because friday was right brought us reasonable instructions this but the result reached by these words correct is there a problem with that within your hypothetical i think that that could be a new grounds of rejection that would open the door and allow deprive the rejection of the the change that if they change the claim construction enough so that that there's a new thrust of the rejection and that's the language of this court uses there's a new thrust of the rejection to the extent that it wouldn't have been unfair it would have been unfair to them so if they get a rejection from the examiner and they do they respond in one way and they go to the board the board said oh let's put your response aside because we've got this new construction and into the new construction it's also  they have a valid argument in that sense that they were denied an opportunity to ever respond to that situation but that's not what happened here the construction of the examiner which is on the record is the very same construction adopted by the board and the construction is that a well charge level controller is something that controls the level of charge in the well it's a very straightforward and it's very simple to the board in this case and several places in these three different to back away from the substantial evidence answer because that's the standard that this court would rule you would use but the preponderance of the evidence standard is probably the right one and the language that the board is using is a little troublesome because it suggests i think to a reader he's used to reading opinions from district courts and that the board is looking for a showing of error of some kind in fact in the board clarified this in a recent in bank decision of the board in r frye a published decision that said what we what we want applicants to do is we want to tell us what the mistake is they don't bear the burden of proving the mistake but they do bear the obligation of identifying mistakes and what the board the board role is to review the react rejection a new and specifically view the issues raised by an appellant a new at the board stage so we're not placing a burden on an appellant to prove the exam are wrong didn't suggest that my answer to judge when i think what i tried to say was that when an appellant raises an issue they point to a part of the exam is rejection that the board reviews that the new in doing that the board can state its determination or assessment in its own words it's not locked into the examiners determination but obviously the agency is the one that has to come up with the evidence and the of the evidence here they counted ski reference has been there all along and there's absolutely and the board has to do that because hopefully in the in the brief to the board junks admits hopefully there's there's some evolution of the issue from their very first response that's why patent prosecution is so critical to district courts because they can see the evolution of issues and that's the same reason why an examiner shouldn't be obligated to construe every single claim limitation at the outset that would be a waste of time he would be focusing on terms that no one ever cared about and most answer said well charge level controller reads on count it's he's controller because it controls the level of charge in the well and the appellant came back and said no we use different words and because we use different words we win and they're different at the world hearing the board asked junks counsel repeatedly what is it about your words what is it about your specification that puts counted skis well charge level control are beyond the scope of your claims and his answer was nothing it doesn't we simply construe our claims in light of our example the problem with that answer is that they have a claim drawn to the example and that claim is allowable over the prior so their one on limiting example is the subject of a claim a p so what are we left with we're left with a very broad term that the examiner reasonably looked at and said well this reads on the same thing in this reference over here that seems to be doing the same thing and council at the board hearing said well it's doing the same thing it's just doing it in a slightly different examiner twice the board twice we've made our position crystal clear and they seem to have made their position in response crystal clear so i'm not sure what would happen on remount and certainly we don't want to create an incentive for an appellant to not put on this evidence that supposedly exists i don't know what the evidence would be in the context of  tight you ask the question where did the board go wrong answer they skipped over the prime aphasia case requirement and went right to the anticipation rejection we're talking about a single claim term an apple can create claim charge of well charge level control or the the board dealt with that issue in the description requirement context but even the board refused to look at the specification the examiner in the answer was claim twenty seven has a lot of additional language concerning the functionality the sweet spot that must be maintained by this invention in order to get the optimal response that's the invention it's the well charge level controller as construed by the so for the office to stand here and say that we're not entitle to claim want to claim twenty seven ignores those claim terms and ignores the spec we cannot respond to office actions that are like to use his phrase shooting arrows  the dark we are shooting arrows in the dark the patent office holds up the counted ski reference in their rejection to over and over again they point to three forty in the counties good reference to construe the well charge well controller that's the way it's put in there in their office action if they don't even get the term right and then they construe that term and wide of the reference that's very easy examination your honor you can always find it if you construe the claims without looking at the spec and look just at the reference we say that the proper prime aphasia case requirement that this court needs to create by this case and others is that you have to have the broadest reasonable construction that's reasonable there has to be evidence on the record linking any facial differences between that construction and the reference in order for applicants to be in a position to have notice to be able to respond we don't want to create a record that's that's inappropriate and i don't think the office does either we're not asking for a second bite at the apple we're asking for the examination that we paid for and we should have received in the first place we sent it back what would be the proper examination your honor would be for the for the board to instruct the examiner on the broadest reasonable on the prime aphasia case requirement necessities for anticipation and then either the examiner can provided sufficient aphasia case showing so that the burden shifts to us or the board can do that and then remained it back to the example all we're asking for is clarity on what is the requirement for the prime of face a case otherwise if we do what the board  here they're going to skip right over it go right to the rejection on the merits and the prime official case requirement for anticipation which is this you know i mean anticipation when compared to obviousness is is the paramount form of obviousness you don't have prime aphasia requirement for anticipation but you do for obviousness that can't be the