on the morning your honour's it please the court in the decision below the board held it back to restriction to review the issues in this appeal the effect is to create a loophole for examiners to shield themselves from any appellate oversight and exert unfettered power of your honor yes this is not an appeal of the decision to initiate reexamination this is an appeal under section three fifteen as to the ability to appeal the issues that should have been considered during the conduct of prior art as it relates to various rejections and those in those rejections were were not because they were procedurally allowed by the by the director the director granted our petition as it relates to acceptance of all of the issues feel and under in re fry those procedural issues are and are to be expected to be accepted and what this appeal is about is the difference between the two stages of reexamination  initial stages not during the actual examination during the during the initial stages during the initiation period reexamination was granted your honor as it relates to the claims that are in reason emanation here once initiation once zana nation was ordered initiated what that means zamenhof who was then conducted pursuant to section section three fourteen section three fourteen says that the conduct of reexamination shall be pursuit to the ordinary and normal examination procedures which include pursuit to rule night one point nine three seven and one point one zero four that the examination shall in clue a discussion of all available prior art t not say that the director shall determine whether a particular prior art reference raises a substantial new question section three twelve says of the exam the director shall determine whether a new question affecting any claim is raised by the request of course  about is to consider the new question in in our case the new question was the technical teaching of whether the components including an operating system was operative duly disposed within a single device or chasse that's the question once that was triggered then under section three fourteen there was there has to be an examination conducted according to the in the normal procedures for examination that wouldn't do in involve a review of all of the prior art of record two to suggest otherwise read section three fourteen out of title thirty five section three thirteen when it says that that reexamination ship shall be ordered for resolution of the question specifically directed to section three fourteen which is for the conduct of the reexamination wouldn't the effectiveness mccombs be that if the director then granted re exam on any small part of a larger request for reexamination that he he would then have to carry through and examined every piece of prior art even though he found no substantial new question on most of it and once reexamination has ordered for the claims then it is conducted on the claims and there are rejections that are proposed being on i  why it's different there is a difference between a reexamination and a review a review is a trial before judges and in the proposed new rules that are adopted under forty two point one hundred eight b the the did the decision undertake that review can be limited to specific grounds as well as specific claims it's very clear that's much different than what we have under reexamination which is limited to substantial new questions well not in not under little piece of the question on any claim he stopped to look at everything on that coming right all prior art anything should the purpose of the order for examination and or a substantial new question is to prevent harassment of the patent owner once reexamination is triggered for a particular claim section three fourteen directs that it will be conducted according to the normal examine your answer yes there's no way the director can say i'm going to look at this question as a substantial new question and not the other eight ten twenty pieces of prior art because they did not raise questions you could not do  that i'm saying that what that's doing is conflating the difference between what is a new question which initiate the reexamination and what is an examination which is under the under section one zero two one of three four anticipation obvious with me that that that's essentially what you want to to say is that he cannot make those determinations the director can only make the determination at that point whether to initiate reexamination for a new question the new question is broader than the prior art involved it once once for examination is or is of that seems big because the trigger under a substantial new question only then sets what claims are to the new question affecting any claim involves prior art but as as we've discussed once it's initiated then section three fourteen says it will be conducted according to the normal procedures for examination and the public is entitled to rely upon that i'm i'm just trying to understand the fish and sees this way and that backlog system where we're trying to narrow the questions and focus on is this we want to do we want to force the director every time he takes one claim he's got a look at everything regarding that claim you can't just look at the one question he's substantially in there did to be it will be based on proposed rejections which are which are filer after this world clearly raise every possible question because any claim is questions granted on one of them they get them all know if the question is granted as it the other point i'd like to raise here is that silence is a decision to the extent that the soul is or has said that that the examiner is entitled to decline to comment does not mean that that is not an appealable issue under rule forty one point six one to hold otherwise would allow examiners shield themselves from appellate review merely by their silence on the record and so there really was a final decision as a relates to the issues  in this appeal the the examiner does not set up a federal civil service jurisdiction by deciding what what issues it will it will stay on the record the other thing to point out is that this appeal can be decided procedurally the patent office the directors decision on our petition that decision dated august thirteenth two thousand and ten explicitly accepted balcones briefed on the prior art rejections and that's it at a seventeen fifty fifty one in the record and the permissible scope of appeal is a procedural question and director cabos himself joined in the present presidential opinion x party friday holding that these procedural questions are to be decided by the director and not on appeal by the board so in our case we we petition the scope of the jurors did the scope of the jurisdiction for review the director specifically granted our petition which governed what what the issues were to be examined and the board decision to refuse jurisdiction exceeded its authority and an unauthorized reversal of your the director's decision to allow our appeal to proceed yet the other point i'd like to raise is that this is balcones only opportunity for this review  contrary to the solicitors argument rule one point nine two seven did not permit a petition for reconsideration at the at this point that really that reexamination was granted when it was ordered those petitions are routinely dismissed when reexamination has been granted and not denied and the petition was sought because when when a petition is sought because the because of the examiner agreed with some but not all of the substantial new assent no you do have another opportunity go well that's the sort of damocles that hangs over everyone in the in these rigs emanation proceedings where it's unclear the issue here is yes if there is if there is not a substantial new question granted for claims then there should be no stoppel that would apply but the confusion we have here is that under under the statute and rules what we're seeing is a situation where it is assumed that the all of the art of record is going to be reviewed because that's what the rules say and that's what it specifically says in the n p p and the statute so to the extent that there is examiner declined to hear that that puts everyone at risk because there really has been no review of  court i think i'd like to turn first to your your point about efficiency i think we see the way this actually just set up is to render an efficient process and what happens is people come to the u s p cases and because of the regulatory when the patients are failed prior to the m p you can't go broader than the regulation when we're looking at this case is that we're defining what is a question under the substantial new question doctrine is in everything relative to the claim or is it what the director says is which the director is given the authority under section three twelve to define the questions that are going to be considered during recantation when he orders reexamination he defines the questions that would be considered and that's not every potential question that has been raised or could be raised for particular claim if the particular question that the director has deemed to raise a substantially question of credibility with respect to a particular place so it's not the universe of the licensing thing the director says it is the air any chance to review that there is a petition right within the agency but the statute in freefall see makes patentability that were previously determined in another examination that's not the case we have here in our case all of the art that was is to be considered in the building appeal is new art that was not previously considered i'd also like to point out that as it relates to the question itself ard that did not triggered a new question does not become unavailable as suggested by the solicitor again this gets to the issue of the question of what is the new question itself being broader than the prior art itself the the office itself has said that the available prior art includes all of the art in the reason am an asian as judge laurie was pointing out if you look at one point one zero four and the various n p p sections that interpret that you look at for example n p e p seven zero seven point zero five and it specifically says that the that the examiner must consider all the prior art references and that's not permissive it's mandatory that all that art be considered in p e p twenty six fifty six likewise the source of path of the prior art for consideration at the conduct stage the if the rules that are proposed are adopted what they will do is allow the patent trial an appeal board to select which grounds and and which claims our reasons are to be review situation that we have for example and i for i know where the litigants in public are entitled to rely upon a thorough examination as it relates to determining you know what whether something is whether a claim is valid or not valid and what the presumption of political should be