good morning i would like first to address fifteen eight hundred ninety three since it's the older of the two the fundamental in the clash in this case is on the one hand the claim requires identifying first contact information without user id that's ignition of a specific part your own i'm not so sure that that's really what answers about  something that the program started with so the way spencer works is i have an e mail say and somebody sends me their updated contact information what i do with spencer is i might use my mouse for answer calls at selecting i select that information and then i push a graphical button and it will save that's what it's really all about and spencer tell us what's going on there and figure four is part of the worse than that i began with an e mail coming in and spencer has a little program working on it and i say ok i want to invoke this little baby to save my contact information so i select it with my mouse but i click it and then the screen starts changing and it adds that little box how do i know this it's laid out in our briefs and it takes a while to figure out but that little box is where spencer's strumming the intermediate progress progress where it's going through figuring out what right so you said initially well a contact and when you read the fine print and spencer everything you select will get processed into the contract there is no exception spencer thinks and depends on the user to tell it what the contact information actually this is the this is the real key to spencer the user has to tell spencer what the contact information yes and on page eighteen of the solicitor's brut brief the solicitor it nets that the for reading what is it what is it about spencer that tells us that if you read through the reference in detail and i wish i had more time but this that the detail of spencer says that which has been selected gets parsed and that which gets parsed yet saying now it's true that some things won't get saved for example if it says telephone number that's not going to get saved because it's an indicator that the telephone number goes in  select is contact information number words there's less than meets the eye here spencer isn't that smart it's depends on the user to select the contact information that information is parsed and then saved  or if i understand it is identifying phone numbers it's identifying fax numbers it's identifying addresses and putting those in the appropriate places and then you say it also identifies other things that are not it in one of the what we would conventionally call contract information but then spencer presumably would not so elect that hi george how are you doing as contact information  desegregate the fields but that's the contradiction our claim says that the system does the analyzing to identify contact information spencer says the user identifies the contact information contradiction number in our claim the system does the analyzing in spencer the user and the purpose of the analyzing is to identify contact information in spencer the user must the spencer system what the contact information is and only after that the spencer parcel that's the real big point and when you get into that situation remember it's what selected that is parsed by spencer and the claim has one of the requirements that's really really important and that is that when the information has been  analyzing to identify contact information must occur without user designation of the part that's going to be analyzed so the last six words of the cla without user designation of a specific part of the electronically display textual information to be subject to the analyzing and the board pays no attention to what's required there and so the claim for every every independent claim the summary points out the user selects the contact information so the spencer system is just the opposite of what the claim requires and somehow out taking the situation which is the opposite one of the there one in it uses that identify contact information still just from having pushed that graphical button to run a search very clever stuff spencer does not have that course it doesn't do a search but in addition you have to and it's only the selected stuff that is parsed by spencer so we have two mile ations first the violation that the analyzing has to be done by the system where spencer is depending on the  select whatever it selected secondly what's regarded as contact information and parse is that which is selected and that's a violation of this thing that you cannot point this stuff out to the system so to violations there that that's the nub of it and this inner box stuff is interesting and it's well briefed but the big picture is simply the user points out the contact information in spencer and the and the me just make sure i understand your answer to my earlier question about what constitutes contact information and what that with a night or expense or are you saying that everything the user makes  numbers a separate field and so forth so with of course her mission i'll move on to another interesting case which it is the appeal sixteen ten ninety three and intend ninety three there are two sixty five the examiner makes an obviousness rejection based on the combination of miller's with address may and one right and we know this because the examiner explicitly says so on this page listing each of these three references at the beginning of the rejection it's exactly their appendix to sixty five so he identifies three references and then they're after in the appendix on page two seventy two the miller fails to explicitly disclose electronically searching in an information source for the first contact information previously identified by analyze he says that now the examiner then sites address that's the original decision appendix page twelve so you have the examiner saying i'm using three references we have the board set oh no the examiner it gives miller for everything fairness requires ca or is lacking here and an applicant isn't title to rely on what the examiner says and rejection the examiner says he did not rely on miller for the searching limitations if the board quirk the solicitor for that matter wants to disagree with the examiner the solicitor are free to do so but the board in the solicitor are not entitled to come up with a new theory of rejection while attributing it to the exam says the board the examiner relied on miller not address many of the disputed examiner said otherwise will the real rejection please stand up i think we're entitled to rely on what the examiner said this new theory of rejection is not only improper it's also incorrect miller fails to teach here's a limitation actually in the claim in any information source for the first contact information previously identified by analyzing in order to find second contact information the associated with the first contact information the board chooses to ignore that the search must be for the first contact information found in the analyzing step and then the board chooses to ignore what the search search must be in an information source and that second contact information must be associated with first contact information and information source one of the things that had lloyd it is he said i'm working in microsoft word for example i'm writing a letter and i typed the beginning of the inside address sunstein ah what's his address i have to look at up i have to go to outlook but instead he figures out a shortcut you immediately stick it in right afterwards that's really smart stuff all done as part of the technology that had leuer figured out and so this idea of a search it's conducting a search in a database for example for the information found by the analyzing it's real analyzing it doesn't require user selection and none of that's in miller because miller is incapable of doing a search for contact information and they have some very farfetched eries why miller's search counts but those searches don't match the the claim limitation the solicitor in fact goes a step further with a remarkable new position nowhere previously in the record the contact information means type of contact information and heavily really carefully distinguish between type of contact information you can look at the claim structure and see there's a beautiful set of distinctions that's in the solicitor's brief page forty seven where the two concepts are always carefully differentiated i'm running out of time but the vital line is that the mill or the miller doesn't stand for that search for imitation miller certainly doesn't need the type variation limitation system if you do a search for if you first start with the name and you do a search it'll pop up an address if you start with a name and address it will do a search for the name and use the address also see if they match so the pipe that you start with can affect the type the youth end up with miller doesn't have that because miller doesn't even do a search on a database the last limitation on initiating electronic communication is a third of that address made on that you're just very briefly an address that well address might well do a search for an address but of course that's all it does it searches for an address and you know you can try to combine them and we thought that was a silly idea but we're not arguing that on the appeal no address may does it but the board has said as part of this new rejection that miller teaches and that's absolutely extraordinary and the point is the board attempted a rejection based that way shouldn't be left i'm going to i'm going to reserve my thirty sec of the text to be analyzed and if you look at what's listed in that smaller box there are things like facts in the word phone and if you turn to figure seven on page eighty two one  everything in the small box or in the portion that is designated even hi bob the wife he says that gets saved as contact information now can you explain to us whether that's not true and and actually does with the hi bob statement so the way spencer works the in this disclosure they don't really talk about if you were to take that high mom but we have it in figure four because you've got office hours which i take it is not spencer consider that to be contact information or put it in a miscellaneous area and sell as that would would hi bob also go into that miscellaneous area if that were in within the small that's my understanding  have something that i can point to because it's not necessarily disclosed here but i would think they would treat it the same way they treat office hours or a word you know in this instance they have a word like phone fax that kind of just drops away so it's not really clear to me what they would do what spencer would do with that but it's not necessarily contact information so to sort of respond to whether or not spencer is the same way by spencer saying that it's selecting all of textual information that is not choosing a specific part to be analyzed that the examiner construed that particular limitation to mean that it does not preclude instances where you select all of the textual contact information and the claims aren't read ten ninety three and address the comments that had my counsel made about miller so i think it's important to step back and figure out what it is the examiner found when it looked at miller though what's being construed here is a very large limitation that claim one limitation be the causing electronics for its limitation and its very long and what the examiner said was that miller discloses them and cure any of that limitation but there are two portion of that limitation that miller does school the first part is the one dealing with searching in an information source for second contact information because what miller does is it will search for second information which is what they consider those that caused the actions in miller but miller doesn't teach searching for second contact information so they need them and i relied on address me for that particular part of that limitation the other part of the limitation that the examiner said was not taught in miller well the part dealing with that the second contact information will vary depending upon the type of first contact information that a search i mean they're going to rely on ryan wri rely on other references to fulfill this entire limitation what miller is doing is searching and getting second information and address me comes in to do the second content what is it exactly th the broader use by the board of miller then was done by the examiner you're saying that there wasn't really an inconsistency between the way the examiner and the way the boy treated miller because of this the nature of the distinction between searching for information and second contact information yes you're right that's that's arguments now for you so you say that that the board's treatment was entirely consistent with t the specifications seems to contemplate some kind of external communication what is it you think is the basis for saying that that phrase includes any electrical signal from one initiating electronic communication in fact the only time i phrases even used is in the claims themselves and one of the things that claim requires that this is done with the use of one one button that the fact that you can  analyze and initiate electronic communication great so in head lawyers invention you press the one button and it will according to headley be able to analyze and initiate electronic communication so figure out that it's contact a region and make the call it's not clear to me it wasn't going to examine the board that that's something that can be done in one button and there is internal things going on there when you are examiner on the board looked at this particular limitation and didn't see anything defining it and didn't see anything the claims to be more narrow they said well that using the british amateur petition could mean using a signal to s that the that hadlow is now asserting is the in fact the proper construction the claims that they added the word external after initiating open between initiating an electronic communication so if they had said initiating external community electronic communications or something i mean just my parents but i suppose or something like that i think that would be more helpful i mean i had and i stand here i would like to think about it a little bit but i think that would get them closer to where they want to absolutely i mean there's nothing in the clean language as it's written right now to make it that limiting to be an external communication so there's no further questions you know my the first case it can ninety three on page fourteen of our reply brief we do talk about how anything that doesn't fit elsewhere gets saved as part of that contact and we site into spencer column five points twenty eight to thirty three and finally i would note in the other case the one rick reference as we mentioned in the brief always retrieves the same type of information in with a full record and what it displays depends on whether there is one record or two records more that more than one record and then it displays a partial stuff so that type variation limitation in that second case isn't satisfied by weinrich and we've spent a little more time on that on the break so i think the court's questions are spot on and we think ultimately that these cases these particular cases raise question about fairness and candor in the proceedings search limitation we're entitled to rely on that and the strikingly the board said as kind of a new ground of rejection i think the board was on easy with that round of rejection because what miller does and it does well it's an interesting technology that was developed by apple that was used for a while apple data detectors that identifies contact information in a document and when it does identify that contact information it allows the user to take actions so if it identifies a phone number one of the actions that you can take is dial telephone number but if a identifies a name one of the actions is sav the miller does do it i mean it's extraordinary and then they say that the examiner said that miller does do that i mean one of the comp complexities here is the examiner did say a lot of stuff and he kind of wandered around but examiner are allowed to wander around if they want but after he says all the stuff about miller he says but miller fails to teach the searching limitation and then he goes on and says a dress made does i think we're entitled to rely on that and we shouldn't be allowed to have the board coming up with a new theory in discard us because it's not fair no one one final question  initiating electronic communication limitation you know presumably you could have or solved this problem simply by explaining maybe with one word external or some equivalent but you didn't  t one thing that happens if you read the disclosure and compare it with the claims are there in figure one of the application there is a flow diagram that shows all the processes that are going on and if you take a look at the way the claim is mapped you can see the claim mapping to these different events and there is a situation where you get to around i believe it's box ten where if you find something that's not a name or address but something else it then talks about other appropriate action and the application goes through a really nice description that says in those situations where it finds an e mail address or a telephone number it can  that it's just an enclave well it is in the world it's not so easy once the because as prosecution goes on and these are cases that have been asserted against a lot of energies in the claims have been published and many gets to be an issue  the client has settled with microsoft which copy the stuff first he had a booth at comdex it was great stuff and microsoft locked it so we're reluctant to amend too quickly when the prosecution is very very late and on this situation we believe the context is really good and as i mentioned we have the type variation limitation was also not met because one right keeps recalling the same stuff it's like money python and he says and now for something completely different and it's the same thing over again that's what one reich does because whenever you it does a search it retrieves the full record and it displays a partial record with lots of results if there's more than one otherwise it displays a full record but in each case it's the same thing so we had several grounds that we thought we were quite solid on and for that reason we felt we could get fixed up in front of th