thank you judge newman may please the court john o'quinn on behalf of honeywell the board's decision should be vacated because its refusal to allow honeywell to even file a motion to seek leave to obtain a certificate of correction from the director was both than one for this correction early so judge newman i think a couple of things first whatever standard this court applies in terms of reviewing the board's decision there's no question that the board was wrong in not in its analysis because the board was on the mistaken impression that you cannot use a certificate of correction to to correct a priority change and that's inconsistent with longstanding patent office practice and that is reason enough to vacate the board's decision because under under the principle of prelim versus the n l r b and other cases if the board's got it wrong with respect to one aspect of of its decision then that requires a rebalancing of its decision but i think that to answer the question that you asked the gentleman the inquiry before the board as we've described in our brief was whether or not it was a plausible basis for honeywell to be able to seek a certificate of correction in the first place and then analogous context the supreme court for example has said with respect to a certificate of a pick up he'll ability you don't have to show that you're entitled to prevail on the merits in order to be able to appeal and i think the same principle would apply here but yes the board has a role to weed out what would be a frivolous request but i don't think that there's any dispute with that request here is certainly not one that is frivolous and so the things that the board could could t did and did consider we're number one whether or not you can use a certificate of correction to correct a priority change again longstanding patent office practice says that you can the board's statement to the contrary on which its decision contested i think it's also fair to assume that if the changes made let's call it the correction the change it will affect the result it will affect the validity well certainly that the whole purpose of seeking the correction to the defeat of correction is to be able to get an earlier priority date than the filing of this particular application and that would affect what would and wouldn't be prior art that's absolutely right judge newman and indeed it's certainly clear and courts and the board have recognised in other contexts that that is perfectly fine that in versus it co the board said quote correcting a priority chain always has the potential to affect the validity of a pat involved in litigation yet such corrections are not precluded by the pending litigation and there in that particular case if it authorised pursuit of such a correction and similarly in the b braun case in the district court in delaware and in the pfizer versus context of preparing the patent on a response this is a patent that is one of a family of of one hundred plus patents and so in the process of preparing the patent owner response more than a month before the pad on a response was going to going to be do  well recognized that there was a sister chain that could be and should be claimed and at that point in time brought it to the board's attention now i think it's important within the response it was before the pad owner response was do a month before the pan response was was due to be filed let's time had been extended but it was before the pattern of response was to be filed in and to be clear even if you think that the board could have perhaps decided that this was untimely and there was no evidence that there was intentional delay here there was a suggestion that somehow this was strategic behavior there's nothing about of the woman strategic there's no reason not to claim both priority chains except inadvertence but even if you thought that the board could perhaps decide that  the play was reason that's not the basis for the board's decision board's decision is an appendix one seventy seven it's very short and what it relies on is the fact is the failure to show that the minor character prong has been met and that's just wrong as a matter of law it is a basic misunderstanding of what it seems say that it's the director that has to resolve that issue well it's two issues a judge or a number one that is what's left for the board to decide and when i read your argument it seems that you want the director to be the deciding factor in on both what do the board shirts of what i do think it is ultimately the director's decision this is not something that the director has delegated to the board unlike say institution decisions that the director has delegated to the board so it's alternately for the director i think that the only the proper role for the board here is to make an effort luminary inquiry to assess whether or not is this something that is is this frivolous is it is or is it is it the statute gives that authority to the director now the statute allows the director frivolous as in the standard for the for the director or the board no i agree the director would ultimately decide this on the merits and the director could theoretically delegate authority to what were the board to decide yet so i think that what the board should have been deciding here is kind of like the panel in plastic development which is available in the appendix of fifteen one forty three it's a two thousand and seventeen people have decision and the correction i think that's absolutely an appropriate way to think about a judge she is if the if the board thinks that it would be futile the no the board doesn't have to grant it but otherwise short of that i think it is absolutely appropriate for the board to say that isn't that kind of what the board did here they determine that even though you know some corrections can be granted under this including to get their rights again back then this was not a minor correction because it was going towards an entirely different not just correcting the chain back to the same priority they claimed in the original well first i don't i don't read that the board is deciding that what i read the board is deciding is simply that you can add to that you cannot use a certificate of correction to change to correct the priority chain if it's going to affect what would be potentially prior art in the proceeding and i think that's and i'm not sure that but it's really grew with you but let's let's stick to the premise though that there may be two types of corrections a priority change your mind you just somehow made a mistake in tracking back to the priority date you claimed in the original patent right and the chain and the cha somehow got broken or something but you can get there other way you're still going back to the same patent that's not what's going on here right you claim priority back to us from patent and your new proposed priority chain goes back to an entirely different path obviously related but not mentioned at all in the original claim i take it and a completely different change so the judge is first it's not mentioned in the original application i agree with that second i  wouldn't characterize it as being completely different chain because the two two of the patents in the chain are themselves continuations in part of patents that were already in the existing change but i would say that's not inconsistent with what has been authorized in under this minor or inadvertent standard no i stand the question i guess and for this what i'm not aware of any where the director has disallowed it on those grounds i'm not aware of one specifically that has allowed it but i'm not aware of one that is disallowed it  and if that is really sort of the basis here for saying maybe a certificate correction would not be appropriate i would submit two things number one the bourse of at least allowed us to file a motion so that issue could have been crystallized and second i'm not sure the board's in a somewhere is maybe your opponents i think they may have and they may have said that they think that that is that that that is what would be appropriate here and i think that gets back to the board's fundamental error the board's fundamental error is thinking that a certificate of correction could not standard had not been met showing that it was a minor or in a very well i don't the board didn't go off on the grounds that this was not inadvertent or in the that's right the board of went off on to on solely on two grounds one the failure to show it's a minor problem which i think turns on the board's misunderstanding the treating this the the board if you look at appendix one fifty four and one fifty six the board focuses on whether or not typographical error and indeed archivist counsel said the fact that was not a typo was enough to quote in the discussion that's a dependence one sixty two one sixty four where that discussion is taking place and that's not the right standard because again when you is simply wrong about that but we're also addressed the issue of prejudice but he did not provide any reasoning for that and it didn't adin if i anything that would in fact have then prejudicial in this case and it didn't consider the prejudice to us namely that there is no other remedy the right way to do this rather than the board kind of supplanting the director in this case so i don't think the board supplanted the director the board asked literally for showing of whether honeywell would be entitled to it and ask unable to prove it they asked for showing and if you and this is part of what we addressed in the harmless error even if they had gotten the motion even if it got in the chair correction that doesn't make it case dispositive makes questions why we're here at all on her pure procedural issue they would have to show that they were see one twenty a lay claim for priority it has the change in party has to be pulled clear from the record of the patent and apparent applications here there's no reference in the patent or the karen applications to the sister usually where you find support to say it was in the record all along and we're going to add a late claim a priority but we can point to where you can backtrack it here it's obviously not clear from the record it took honeywell even half months so here we have the complexities of patent prosecution which are getting worse and worse or better and better more and more unmanageable let's assume for the sake of this question that it was an inadvertent mistake at what point do the courts certainly it's not the rule of the e p a to throw the book at someone who might have missed something  all of the patents that were cited and on cited and didn't happen to have been put together and let's just assume that there is a meritorious entitle that here nonetheless at what stage do the courts step in and try and achieve the right result if we can figure out what the right result is i think that i think that the board had it correct they looked at this they looked at it it was already post minor and then there is the separate question later is does it change provide for description support they would need are you saying that the minor change is connected to the prejudice inquiry no i'm  saying it's not i'm saying that a minor is to fifty five if this was a minor change than it doesn't really matter what stage this was filed because there might be prejudice but it's still it's a minor change they're probably entitled to a certificate ertent mistake and are entitled to a certificate of correction under the sat in the regulations they're going to get that right taken away from them because you've filed in i p r they don't have a right to get a sticker for actions the direct to mean that you're arguing for more than you need to hear because the word determined that this wasn't mine or whether there was prejudice or the fact that there's prejudice helps but if this isn't minor it's not something the director would have granted absolutely and what honeywell i think overstates but ford said about miner the honeywell articulate that there was sort of per se decision by the board that a change in party can never be minor that's not what the board said and neither does the president they rely on say that the change in her already is always mine are you aware of any decisions or director from the border or the director that overloud certificates of corrections of this character where what they're trying to get the change is to a unmentioned patent or unmentioned earlier patent or parents you know all those are then correcting somehow something passed something that was already in japan an issue all the cases that that have come up in a briefing that high level states in support of their site as i read them are going back to the original parent application addiction a priority but you're not aware of any cases that say this situation is not permissible correct you if that's the case then why should that particularly if it's a kind of issue a person pression on the statute or regulation why shouldn't the director make it in the first instance not the p t a the peapod wasn't usurping the authority of pete cahall the director to make this repeat have had a duty to conduct well thank you i mean i get what you're saying but they kind of are it's a live question of whether this is possible or not i mean if it's if there was a long line of precedent from the director saying this isn't a minor change this is something that's not doesn't entitle you to a certificate of correction i think it would be very easy for the board to say look the director's not going to grant this it's futile we're not going to give it but this seems to me unless you all didn't come up with something that you haven't cited in the breeze for today that's open question of whether the director would have granted that there are there are other cases that are in the record prime focus is a tab case where it was correction was denied at the motion to offer authorization of a strip correction was denied because changing the change there was not a priority change i believe it was a change to the claims but it would have made the case a moving is impossible they say that honeywell who had two hearings over one a quarter hours to make a showing that honeywell failed to make a showing that he was a minor character given that the prejudice that had been articulated and further that it would be prejudicial at this stage so the board's decision rather simply don't have any precedent from the director or the board on this issue about whether this is minor or not what kind of showing would they make other than saying here this x here's the patent we want to give priority back to we think the board with a lot of what they had what they had made is in fact rather than making a showing is that the board's decision was premised the institution decision was premised on finding that the patent was only entitled  but if they'd have found a change back to the other patent that they claim priority to that was in the record i think that would clearly be a minor change so may have to do the prejudice analysis but that would have been sufficient showing for a minor change because the director does bring in a certificate of corrections in those circumstances so again the question is if we agree that the director of can grant a certificate of action in those circumstances and has never addressed the circumstance why isn't it an abuse of discretion for the board to make up first decision rather than the director the board has a rule forty two point three it's required to  futility to turn sending it back to the director two and a half months in would have interfered with proceeding as it was going on and that's what the board should probably be able as you demanded socket the board to agree that that would be the same argument even if it was a minor correction right and it was filed at the same time would you be up here arguing i suppose it would be at the board ruled in your favor in a moderate direction but i think you have a hard time for valet that it was ok for the board not to send something back that looks like it was a was not in accordance with law you've got to send it back i would submit that the agency here failed each one of those problems and acted contrary to law because it misunderstood what it means to be of minor character the more doesn't do the you've got a side i don't have  the only other point i make on that judge judge hughes is just again if you look back at the record look at appendix one fifty four you'll see there is no suggestion by the board not in its questions and not in its decision that this is about the specifics of the party change this is all about the fact that it's going to change par and that's correction of the use of a certificate of correction for correcting a party change it is said that that is something that is potentially available and that it is and that that is something you can use a certificate of correction for sure i did all that but my problem is it is it's it's very unclear to me whether this is the type of research correction of a chain that the director would allow sure if this is not the type of kind of generally the ones where we see which are pretty minor whether it's in the specification or in the prosecution history and you just didn't know the chain properly and you can go back right way to the underlying documents you have i take it in the end i may be wrong but i think you have to add additional documents here you have to add stuff that wasn't in the prosecute of this part what we point to what would be now the parent applications so this can all be discerned from this application and from what we're sorting would be the proper parent application right i think you have to point out parent obligation was not mentioned anywhere in the current path i'm not aware of it having been mentioned in in the interim and so nobody has cited to me any case where the director is allowed a correction when the aces and i'll say this don't use that gets back to again what is the posture in the board denied us permission to even seek permission to file a certificate of correction they cut us off at the first step and at a minimum the board you know precisely for the reasons that you've done a fide the board should have at least allowed briefing on this and then these issues could have been sussed out if i may judge newman i'd like to respond i know i'm past my rebuttal time but if i could i'd just like to respond on the prejudice point because we've heard a lot about it and i think it's important to recognize that for all of the statement of saying there is prejudice there's not actually any evidence of prejudice again because the board didn't brief this they didn't put on any evidence in response to say oh well they're actually his prior art that we would have put in that was one of the arguments they make is that there's other prior that we could've could've asserted there's no record of that that's pure speculation and their main argument about prejudice is just to say well it's prejudicial because now things the would would would have been prior art will not be prior art because you change the