good morning everyone the panel has before it today a total of five cases two of them are being submitted without oral argument on the briefs today namely appeal number zero six fifteen forty eight  versus sprint nextel and appeal number zero six thirty four twenty amen versus merit system protection board on the three case argument list will hear arguments first in appeal number zero six eleven seventy  motion before the court requiring the vote or decision of the panel it is our reading of the papers that they neither ask that the portions of the briefs be stricken or that public version of the briefs be made confidential nor do we read the papers as a motion to close the courtroom so the view of the panel is that there is nothing that needs to be decided at this time and the pan do you do you consider that what is before us for adjudication is the board's decision and i would have thought that all that is before us is the partial summary judgment legal issue you may not like the the district court sending him back to the board for a fuller explanation but that doesn't seem like a question that would be properly before us on the other hand if the issue cases that might present a legal question that we could properly consider but but the question of whether this particular board decision is supported by substantial evidence or whether the district court would benefit from clarification in my view is not something that suggested in your question the shifting of the burden of the privacy issue case whether or not an examiner looking at that specification can say i can't find it under oath and share the burden to the tell because of inadequate explanation elsa's articulation whether what the board done was proper or not that's that's seems to be quite different then creating a strict rule of law and sending the case back saying follow that new rule of law examiner did was right or not right on the merits or terms of the process i'm kind of figure out exactly what is it in judge sullivan's ruling that you think creates new laws that you're and to go back and try to figure out a way for examiner say that the different way we are now bound by that not to the federal but a number of cases that relate to this case as well as this case the second point is one point seven one b where we've made findings and they're wrong this is something we can't follow we can't prove a negative we try to explain why we can't prove the negative we've asked the african to come forward please tell us where it is and he refuses he basically says you haven't done a good enough job in the first instance so what we're debating here is whose birthday it is at this point and that is critical to this case because we i don't know how i provide for the poor or the board to find to explain it can't find the connected  when it doesn't exist i review the specification this dates back to eighty six and the date back to seventy it should be that reform and if you look at how he tries to explain it even to this court in the alternative he says go look at the hundred pages and find well but the question is whether the district court decide i'm having the same problem both chief judge michele and we're in the district court decision that we find the ruling by the district court that the patent office is not able to shift the burden to the captain under the circumstances the district court decision seems to me is not clear i mean there may be severe problems with it in the sense that the district were suggesting that new evidence could be taken before the board that's separate from  saying that the opinion of the boards is one reviewable because it's tool paid and therefore the case is being sent back for the board to elaborate its reasoning in order that this could court if the case were returned to the district court could understand the reasoning and could then reach the merits and make a decision the problem is that while the p t may indeed have done what you suggest both at the examiner level and the board level and and have rejected the application here and under the burden shifting provision of the regulations it is possible the district court simply didn't understand that that's what the p t o is was doing in that the district court is saying i want a clear explanation of what the patent office doing and the district court might be satisfied if if on remand the patent office said well what we're telling you is that under this regulation we can shift the  under this regulation where we state that we cannot find support in the written description we can shift the burden and this is the world we're now helping you understand by specifying clearly that this is what our regulation explanation why can't the board provide an explanation that this is the regulation this is what we're relying on and this is the way we interpret the regulation and and provide that clarity that the district court apparently is looking  what you would invite a client to and and so when this case in some ways has just basically taken and run around the district towards basically we ask them it was fine if you want to walk the motions but he imaginary case but when people cross move on an issue and the judge not telling you how to conduct this proceeding i just don't understand what you were saying please explain it better than that i'm understanding that that's your position but let's hypothetically assume that that is what we did and we ha i'd done exactly the same thing close the case but he said all i'm asking for the better explanation it's a complicated area i don't think the board has been very clear i'd like the board or the examiner to explain it to me a little bit better that's all i'm direct when we have jurisdiction either on appeal or on monday mr review that kind of decision i think it was a legal question well no but but that's not a legal question is it for him just to say i want you to explain it better if the rules you listening to our colloquy with mr whalen you must understand that there's some question as to how to interpret this for a court decision help us understand what your position is as to how to interpret this a court decision if the bill you seem to be saying that under the proper interpretation of the rule they would have to expose their one hundred elements or limitations the claim they would have as a as a limitation number one we look to the entire specification we can find as a limitation number two we look through every page as best gauge that we can find as a limitation or three and so on and so on and so on and only when they regurgitated that meaningless boilerplate a hundred times according to my understanding of what you say the rule commands would they have complied with the rule is that your view i think that they have to i don't think that you can say in this case that not a single cell was described in the specification the problem here is that once the original rejection was made which was very broad and very gay and didn't go to all the players the language itself was there are numerous other claim well what's insufficient if there are one hundred limitations in the claim and the examiner tells me the applicant i can't find any of the hundred components one hundred limitations anywhere in the specification then why am i the applicant not duly warned then i need to demonstrate as the each and every one where it is what's unclear  hear you and they said everything is missing and you're saying that to unclear putting aside the burden is just to one clear what i ask and i'm supposed to do and i'm saying to you why isn't it totally clear that i have to show as each component or each claim limitation where in the specification that is the first limitation is found a paid fifty five line six of the specification or issue is that the tag office goes first and said here pacifically is what's missing so there seems to be a central legal issue here he argued before the patent office they couldn't shift the burden to him by saying we can't find it show it where it is in in the patent office disagrees with that and as i understand what you're saying about the district court the district court has agreed with your view about what the patent office can and can't do that that's not our position i think what the district for said regardless of my what the district court said was found is i'm not telling you what to do i'm not giving you there's nothing in here that says you have to do it this way give us a sense the question i asked you earlier was that on the reaming if the patent office said we're relying on this regulation they're obligated to tell us where the support is they haven't done it that's the clarification you've been looking for that you will hire lose your view if they can't do that under the district court or right i suppose that office could take that position and then i would have to respond in the matter and chelsea case you know answer my question if the if that's what happens that's what's the patent office does on the remained are they in compliance with the order are they not in compliance with the or if they do what if they say we have this regulation which allows us to say we can't find it in the specification the obligation is on the patent applicant to show us where it is he hasn't done that here therefore we sustain the rejection if they did that on the rim and would they be compliant with the order i don't think they would then there then we do have a made here legal issue here which would suggest that your first argument that we lacked jurisdiction is have must fail we have jurisdiction and now you're really just saying we should agree with your view on the merits are perfectly proper for you to say that but i exerted certainly lots of distinctive you can make between the facts of this case in the sights of a single sign and travel says of the case but if at the end of the day it seems like you're saying that judge sullivan  is ordering them to have a different interpretation of their rule their regulations than they had before and if that's true i don't see why that alone isn't enough to compel us to exercise jurisdiction for the reasons sensually as stated by mr whalen which i paid to be that if we follow that mandate from that they could do that could do well what the district court wanted was where cation and specificity and i think the question is if i find the answer to my question are you changing your answer my question i ask you whether the pap knows to be in compliance with the riemannian order if they said this regulation allows us to still shift the burden we're not going to say anything more we said we couldn't find it they won't tell us where it is in that case rejection makes no sense and it's completely inconsistent with what you said before here's the issue the issue is whether when the examiner says i thirty five and i've looked through the hundred pages let's say of the specification and i can't find in a scene basis for any of the claim limitation whether that is authoritative because he says so as opposed to somebody else later having to agree with that so that once he says i've looked i can't find it therefore i'm putting the burden on the applicant that that's authoritative under the understanding of the law as argued i understand your position to be no he can't do that because judge sullivan has held that he can't do that instead of taking that position he has to write a long essay of exactly w and what he was looking for and why he thinks he didn't find it as the each and every claim limitation if there are one hundred then one hundred of those so it seems to me that that what you say the rules of our department the regulation is versus what the pattern of us says the regulation means are diametrically opposed and it looks like judge sullivan agreed with you in which case we you that they can't do it the way they did it before because he in effect he's saying that they can't simply assert that they looked and couldn't find it they have to do  extensive details limitation by limitation page by page analysis to show that limitation one we looked on page one we looked on page two we looked on page three hundred subset of it in find it and then the same as the limitation do same as limitations three drugs and what they did do which is simply say we read the claim representative claim we read the rest of the best education we can find in court for now yours that's what they did and it seems to be clear that what you're saying means right i don't know what sullivan is saying is they can't do that but that's exactly what their rule says they can do as they interpret it so somebody is right somebody is wrong and i don't see where you have a better  the single representative claim that they've relied on they have to consider the other claims on the remit is that the compel the patent office to accept new evidence on the rim and he doesn't speak that he doesn't think that i thought that was language in there where he said they did have to receive new  they're not directed to do that it's my understanding ok so the two issues here would seem to be he's told them to give a fuller explanation where the specification these limitations can be found that's one seating the examiner and the board said you're stuck with a single representative point does judge sullivan supporter wire that on the remains of the patent office consider all the questions or can they continue or all the claims being reviewed in this session which are quicker than i should and if you keep going and he suggests you can introduce new evidence and you are so the phrase take every opportunity to provide evidence you're saying that necessarily means new evidence beyond whatever was in there before we're we don't have to speculate on what he may or may not do in the future we can simply interpret the language used by the district judge in the context so when he talks about provide evidence he has to mean for via the evidence not previously provided because he's talking about what's go board examiner can shift the burden to the applicant by saying we can't find the specification the show was worded well i think often comes very close to saying that it said before gets to that point which is a is there one figure as we've shown the figures of this trial are not sufficient so this case for this type of case i mean this is a fairly unique case although it's it's