on the accrual of office delay and the type referred to in here is the type we commonly refer to as a delay how do you draw the line because apparently you think that some deficiencies in the notice are tolerable and still be a notice even though as a result of negotiation it's changed in is it is it the clarity of the error that makes it not qualify as a notice i think that's one way  i think that where we're actually drawing the line here and i'm in the to to put things in context here you know we're talking about the threshold sufficiency issue and not necessarily an issue where there's a legitimate dispute regarding the merits of an office action whether that be a rejection or restriction requirement so for example if a restriction or requirement was issued that took into account all the claims and parties that had a dispute over where those claims or groups or the you know there's a provisional election with travers and then the patent office ends up coming around to the applicant's arguments that's part of the normal give and take process and that's actually what happened later on the prosecution so call that's right in this case you know we had a notice that attempted to group one hundred forty four pending claims into twenty one separate and distinct groups now the grouping of the because it's an obvious error it doesn't qualify as of now this the emission of the claims i mean yeah yeah and and i would posit even further though that the grouping of the claims that were omitted wasn't necessarily with respect each one of the claims clear as one to one matching up the dependent claim with the group that had the corresponding independent claim for instance if we take just claim one hundred six as an example that claim was dependent on plain ninety eight which the parties i think both incorrectly call that an independent claim the briefing claimed ninety eight depends off of a couple other claims for the purposes today's discussion the argument of the same claim ninety eight from which one of because if you look at the m p c the chapter on for example situations where a reply period is reset or restarted that's chapter seven ten point zero six that chapter actually  out calls out situations like that in one of the situations is where an office actually contains some other error that affects the applicant's ability to reply to the office action and so the patent office in interpreting its interpret the statute has as at least promulgated this instruction for its examiners in terms of when to reset or restart a reply period and there has to be a court in the patent office something that affects determine what the issues are on which he can or should produce this now i'm with the judge died here there's there's two extremes coming if you read the district court opinion at face value would seem to say  but at the other end of the spectrum just because there's some error doesn't mean that there isn't enough information for you to respond and so that's the real question and you knew that one of the problems here was that there were certain claims that were omitted you could respond as to the other claims and you could also respond by saying what about these all medically isn't it wasn't their right not to give you something to responses well i think there's there's that the director shall provide or shall notify the applicant and i'm skipping over some of the stuff in the information and references as it may be useful in judging of the propriety of containing the prosecution of that location so yes there were not making a sort of football argument where any clerical error in an office action automatically resets the reply period or worst thing is that in this particular case if you go and you look at the record  applicants when they noticed that there was a problem with the restriction primer that there were six committee claims follow the steps outlined in the m p e p section seven ten point zero six they brought the deficiency to the examiner and then elect routes orally over the phone based on the p t o telephone practice and just didn't happen in this case and for whatever reason the exam or took it upon themselves to say you know what i see we messed up this restriction requirement but we're going to procedure to do so do you mean an amendment just right bend over the phone well know that the lever sends out a later document which is titled amended notice so there's no withdrawal any time that if you follow the provisions in n p p seven ten point zero second i keep going back in a chapter in the manual i think anytime you follow those provisions you go through it and in the applicant brings a problem up with an office actions that examiner the examiner in that case could do what they did and you mass which is the case both parties briefed and say i don't think that affects your ability to reply you guys need to still respond and then you make your arguments and then we'll enter the normal give and take a pass the prosecution i want to let me tell you what my concern is here understand your argument i'm not unsympathetic to that in this case you had some difficulty in responding to it because it wasn't clear which way the independent coins were going to be resolved they didn't automatically follow the independent lives i understand but what what concerns me is the possibility of sandbagging you know other words that the applicant what's the problem with that i mean if if a claim is left out that would seem to be something which was pretty obvious in the beginning why shouldn't that will be for example that the applicant gets the amount of a delay that would be a kid who would get an adequate amount of time to notice the error and then the amount of time that was with would have been taken to correct the error so that we don't have a the competing concerns here and i think that there's two answers so that firstly you know the in the reply periods have been set by statute and the potential extensions in those re no reply period in the first place so it's not like there's a time period within which to respond in fact you know judging from the p t o s briefing on on this issue they seem to have drawn a distinction between whether the p t o unilaterally decides to amend the office action or not should be one of the deciding factors but assuming even assuming that there needs time period to reply had started  case and response of the official action sooner than a statutory periods or an extended statutory period but what i observe is that as soon as the applicant in the normal course of business why would there should be even on the most benevolent understanding and entitlements to an extension for any longer than that period that it took the examiner to correct the admitted error and no you're  k you i know i have to bring it back to the office has decided that if you bring the error up to the office after the first month of receiving office action it has decided that the office will set a new period for  apply that to substantially equal the time remaining in your reply period but not less than one month but nevertheless the time period for reply does get reset and that's just something the patent office thought about and ornamented classification of the clients i mean you know what they were aiming for you know where those claims were going to fall then the the applicants were only able to reply after receiving a corrected restriction requirement so only after they received the for every twenty third two thousand and six restriction requirement did the applicants then engage in the normal give and take process of prosecution and look at look at the restriction requirement and say you know for instance we think a claim one  you've placed in group eleven we think it also should be placed in group six but that only happened after the office issue months and months of that was when it was your failure to raise the error promptly that caused the delay it would you where you waited you're getting the benefit of the fact that you waited six months to call a sort of the attention of the p t o and you see the whole six months gets counted as a bill or i think you know we have to think about the policy then in terms of you know why these time periods or set the time periods for apply you know a patent examiner has many many applications on their docket a patent prosecution attorney at a place like pfizer has you know hundreds of applications on their  manage their time based off of these time periods for reply that they're automatically in these time periods for reply that they're they've been given by statute and by the patent office cell so the fact that a patent prosecuting attorney may have six contemplates various reset reply periods in the length of those apply period based on the timing of when one brings a defect for deficiency in an office action to the for the period will not be restored in any appropriate extension field you're required to render a reply time so the patent office back in the early two thousand already thought about it at least some of these issues and made the policy call  issues one of the notifications under section one thirty two any additional patent term adjustment in the form of a delay ceases even really argue that no encouraged to be made into whether or not absolutely absolutely where's how do we draw one where's the line draw the line is drawn by both sections one thirty two and its language and this court's decision was already interpret in that language so this is an admitted mistake it certainly a mistake your argument about there's no argument that it is a mistake the question is whether it is a mistake that renders the office actually here the restriction requirement so on informants that's the words of chester that the the applicant is unable to proceed with the application but that wasn't really an issue this is a much more open and casual interaction the patent attorney getting ready to file a response and make the election this so where does is put us in terms of looking to see how to correct and compensate for office the leg yes your honor a couple of responses to that first the question end of the world that it was music that had to be corrected that it that is correct your honor but the statutory language only provides for patent term adjustment in the in the area of certain types of mistakes made by the patent office and certain delays that are attributable to the examiner it is not simply that all delays that can be one way shape or form attributable to the examiner are awarded with patent term adjustment and here are six assume so junks question where do you draw the line and we draw the line at those those office actions that are so on informant that they fail the very minimal bar of section one thirty two and here we need look only at the record to determine that this office actually this and so why didn't they need to know what the examiner was saying about the proper characterization of the dependent claims in order to respond but there are two answers to that first i agree with your honor that they that the placement the dependent claims did not perhaps automatically follow from from their independent claims but they are brother quotes and i think a review of both the claim at issue one of the main claims that issue here and its dependence claim claim ninety eight when combined with the very detailed twenty one categories of inventions that are found in the first restriction requirement leave their little guesswork as to where the examiner would have placed blame w very dramatic change as it relates to anything in terms of where things fell out but should we or should the lower court be getting into those weeds every time we have this debate or should it simply question of if you are going to ask to go through that analysis then we ought to assume that if the error was that was that of the office that the upper should just be charged i agree with your honor and as our brief indicates that we are concerned about the same thing not only from an article three court perspective but also from an agency workability perspective and i think that that only highlights the reason why the low bar section one thirty two is the proper touchstone that this court on a number of occasions has construed section one thirty two very very to place a very very minimal hurdle in the path of the examiner simply to provide a the broad statutory basis for the rejection or restriction in this case of the claims of the ship that's traverse that application and be whether the traversal didn't know that there is a there is another bright line approach to this which is what judge newman suggested and that is to give them the amount of the way between the withdrawal of the original difficult issues that we've been talking about so why not at least give them that amount of well i even if i were to agree with your honor's analysis about the work ability and the equities involved unfortunately it doesn't flow from the  from the statutory language because the statutory language is is clear that a delay ceases from the at the moment that a initial notification under section one thirty two is issued and that if there is a time period between the fourteen month mark after the application filing and the filing of that notification one day a patent a patent term adjustments provided for each of those states so there is simply no statutory hook if you will to provide the type but i don't think that it would it would make a difference here because what this this restriction requirement did was provide eight that all hundred forty four planes were subject to restriction be provided twenty one extremely detailed categorizations of separate and distinct inventions the remaining aspects of this this portion of the area longet examination that led to this not is a matter of advocacy pfizer's attorneys could very simply have looked at those twenty one separate independent claims and made an argument about where the omitted claims belong in their own interests and the examiner would have considered that and made a decision about whether he or she especially in the face of seeing that he or she made the type of error that we're talking about here well exactly and openly in an open exchange or i was there wasn't any adversarial situation a mistake was corrected  it did set back the examination i think you certainly could argue that it set back the examination we don't have to argue we just look at the record they set then they had to go back and make their election and proceed having had this lapse of time because of the office is sick but if but if we i think we could also make the argument your honor that the pfizer having had six months to look at the initial restructuring requirement and then seeing the very well it doesn't work that way you can have a six month period to respond to an office action and in a timely manner you look to see what you have to do and if the rule is going to change to change the entire practice of patent prosecution in the nation that you must immediately take up every office action that you get to see if there's something you under grumble about all you do is increase the costs for the had to be corrected but under section one fifty four b the only types of errors that and delays on the part of the patent office that are rewarded or ordered for lack of a better term with additional a delay are those that are that violate section one thirty two that are so on informant that stu not allowed the applicant the understanding of what's the basis of the rejections are where the restriction requirement and prevents them from making an argument going forward i it ourselves and corrected it then then you can get a delay for that but if you have to point it out to us and we correct it then by definition you were able to respond that's not really your that's certainly not the underpinnings of what we're what we're suggesting we do in the two decisions that the to administrative decisions that have not been subjected to judicial review in any way that are cited by my opponents uncle part of the difficulty in those cases the difference excuse me between the this case and that is that the examiner unilaterally took action now obviously there was more going on in those cases and just saying now that should be a fact correction that is correct and there is a rationale for that and the rationale for that is where the examiner unilaterally takes action it takes the examination away from the applicant it presupposes that the applicant believes that the the restriction requirement or the office action is so one informative that they can't make an argument but it but in this case the examiner quickly said oh yeah you're right this is examiner would in looking at the final notice the subject let's assume assume that that happens yes if that were the tapes and that was this type of error i don't want to speak for the office and how it would decide that case but i'm not sure that that in and of itself would warrant additional patent term adjustment but again unilateral action on the part of the examiner is different than part of the given examiner to continue to revise office actions over and over and over again unilaterally taking the examination can down the road without any additional a honour's one point on the our political case it wasn't unilateral action by the examiner if there was actually an interview between the applicants between the contested and office action in that case it was a rejection and then there were numerous the relevant part of the interview summary that twenty one sixty two to sixty three now to the question of where do we draw the line as judge newman just pointed out we look at the record in this case we're not here you know the examiner already told us where they drew the line when the examiner heard the applicant's concern and decided to redo in recession the restriction of arm this came this case came to us under the a p a the part agreed to the case was amenable to summary judgment of the district court based on the record and so the case isn't here to discuss what pfizer could have done or what the exam or could have done or what pfizer should have done way back in two thousand and five thousand and six the examiner acting on behalf of the patent office at the time in two thousand and six has decided where to draw the line at least in this case and so in so if if if the question is where do we draw the  line i think the type of error in this case the record there is out that it affected fires ability to reply and that the examiner took it upon himself to reissue and redo the and redo the restriction  with regards to the last point about the p t o s distinction that if it's unilateral examiner action versus applicant actually following the procedures outlined in the n p p and bringing the mistake to the attention  and why you know the pre gap era of basing your patent term off of the issue date surely greatly incentivize people to push their issue date as far as possible but that the way the patent term adjustments statute and the applicable regulations and provision of the n p t are design is that there is a given saying there is not just applicant in size not just office delay that you know you're running a risk if you're an applicant and you're trying to game the system to get office delay because after a certain point you're also going to be assessed with applicant delay and in so it's not you know in the post dat world we're pegging your patent term ultimately off of your filing date and you're making certain adjustments you know that's something that congress has decided in the p t o has interpreted in terms of what are the specific instances that will allow you to get additional patent term based on delays on the part