Ex Parte 6122482 et al

Patent Trials and Appeals Board

May 22, 2014

90012127 - (R) (P.T.A.B. May. 22, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
90/012,127 02/03/2012 6122482 850-32 9330
23117 7590 01/28/2015
NIXON & VANDERHYE, PC
901 NORTH GLEBE ROAD, 11TH FLOOR
ARLINGTON, VA 22203
EXAMINER
REICHLE, KARIN M
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
01/28/2015 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte GLOBAL COMMUNICATIONS, INC.
Patent Owner and Appellant
____________

Appeal 2014-001761
Reexamination Control 90/012,127
Patent 6,122,482
Technology Center 3900
____________

Before JAMES T. MOORE, BRADLEY W. BAUMEISTER, and
ANDREW J. DILLON, Administrative Patent Judges.

BAUMEISTER, Administrative Patent Judge

DECISION ON REQUEST FOR REHEARING

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SUMMARY
Pursuant to 37 C.F.R. §41.52, Patent Owner (“Owner”) has requested
rehearing of our May 23, 2014 Decision on Appeal (“Decision”). In that
Decision, the Board affirmed the Examiner’s anticipation and obviousness
rejections of claims 1, 4, 6-7, 12-20, 27-28, 31-33, and 35-39.
We GRANT Owner’s Request to the extent that we vacate various
findings and conclusions set forth in the prior Decision. We DENY Owner’s
request that we find “the present claims are entitled to priority to the 1995
filing date” (Request 17), and, therefore, DENY Owner’s ultimate request
that we reverse the Examiner’s decision to reject the claims.

BACKGROUND
The present appeal is taken from a reexamination of Green ’482
(US 6,122,482; issued Sept. 19, 2000) (“Green ’482”). Green ’482 issued
from patent application 09/001,484 (filed Dec. 31, 1997), which is a
grandchild continuation-in-part application of abandoned
US application 08/394,234 (“the ’234 Application;” filed Feb. 22, 1995).
Patent Owner contends that
[a]ll prior art rejections in this reexamination are based on the
Novak patent, which post-dates [Patent Owner’s] 2/22/95
effective filing date [of the abandoned ’234 Application]. If the
claims in reexamination are entitled to priority to the 1995
application, then Novak is removed as a reference and all
rejections are withdrawn.
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App. Br. 8. We will therefore summarize the invention, both as disclosed in
the abandoned ’234 Application and as set forth by the presently appealed
independent claim 1.
1

In the abandoned’234 Application, Patent Owner disclosed “a satellite
broadcasting receiving and distribution system and more particularly . . . a
broadcasting receiving and distribution system that will allow for the
transmission of vertical and horizontal or left-hand circular and right-hand
circular polarization signals [received from a satellite dish] to be transmitted
simultaneously via a single coaxial cable.” ’234 Spec. 1. The originally
disclosed satellite system is depicted in FIG. 1 of the ’234 Application – the
sole figure. Figure 1 is reproduced below:

1
Patent Owner argues all pending claims together as a group. See App.
Br. 8-30; Reply Br. 1-22. Accordingly, we select independent claim 1 as
representative. See 37 C.F.R. § 41.37(c)(1)(vii)(2010).
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Figure 1 of the ’234 Application depicts a satellite dish that receives
vertically and horizontally polarized microwave signals over satellite dish 1.
’234 Spec. 8. The following except of the ’234 Specification summarizes
how the microwave signals received at the satellite 1 are split and converted
to frequencies that can be transmitted over coaxial cable 13:
[T]he receiving satellite 1 is connected to a low-noise block
converter (LNB) 2 for amplifying the respective polarized
signals . . . This LNB is coupled to the head-in equipment
frequency processor 44. Accordingly, after signals are
received, they pass the low-noise block converter 2, to provide
for the signals to enter the head-in equipment frequency
processor 44 (illustrated in dashed lines) via conduits 3 and 4.
The head-in equipment frequency processor 44 provides
for the signals via lines 3 and 4 to be converted to the
frequencies which the present day amplifiers can transport via
converters 5 and 7, respectively. From the conduits 3 and 4, the
signals or transponders are transmitted to a first converter or
down converter 5 and a second converter or up converter 7,
respectively. These frequency converters convert the entered
frequencies to frequencies which the present day amplifiers can
transport.
. . . .
In the down converter, 5, the transponders are converted
down to a specified frequency. This specified frequency is the
frequency that is required for the present day amplifiers to
transport. The newly converted frequencies are amplified
through the amplifying means 6. . .
In the up converter 7, the transponders are converted to a
specified frequency. The converted frequencies then are
converted down via down converter 8. This process of
converting up and then down provides for frequencies to be
converted without difficulties and avoiding the forbidden
conversion area.
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The converted signals are transferred to the four way
splitter 10 in order to combine the frequency of the amplifier
signal of 6 and frequency from converter 8.
’234 Spec. 8-9.
Of particular relevance is the above depiction of, as well as the
above associated disclosure of, the two paths the signals 3, 4 take
within the head-in equipment frequency processor 44 before being
output onto a common coaxial cable 13. One signal travels along the
left branch conduit of the head-in equipment 44, through a down
converter 5. The other signal travels along the right branch conduit,
through up converter 7, and then through a separate down converter 8.
That is, the ’234 Application discloses both of the two signals undergo
at least one frequency conversion within the head-in equipment 44.
We now compare independent claim 1 of the present
reexamination application (emphasis added) to the disclosure of the
’234 Application:
1. In a satellite receiving and distribution system that
receives signals from at least one satellite and distributes said
received signals over a cable to at least one remotely located
satellite receiver having a frequency range and producing a
control signal, said system including at least one satellite dish
that receives, from the at least one satellite, a first block of
polarized signals comprising, a first set of plural channels and a
second block of polarized signals comprising a second set of
plural channels, said system further comprising:
head-in equipment coupled to said satellite dish, said
head-in equipment applying both said first polarized signal
block and said second polarized signal block to said cable in
different segments of the frequency spectrum such that said
cable simultaneously carries both said first and second
polarized signal blocks to said satellite receiver, said head-in
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equipment including a first block converter that frequency
converts at least one of said first and second polarized signal
blocks for application to said cable;
a second block converter coupled to said cable and
located in proximity to said satellite receiver, said second block
converter further frequency converting said frequency-
converted polarized signal block to a frequency band within the
receiving frequency range of said satellite receiver, wherein the
output of the second block converter is a block of plural
channels; and
an electrically operated switch located with said satellite
receiver and coupled between said second block converter and
said satellite receiver, said switch operating to select between
said first signal block and said second signal block for
application to the satellite receiver in response to said control
signal produced by said satellite receiver to enable said satellite
receiver to receive any of the plural channels in the first and
second sets.
The emphasized claim language highlights the fact that claim 1 only
requires the head-in equipment 44 to frequency convert at least one of the
two signal blocks—not both signal blocks.
Turning to the Decision, the Panel agreed with the Examiner that the
pending claims are not entitled to priority to the ’234 Application.
Decision 15. In so doing, the Panel drew a distinction between the so called
“no-net-frequency-change” (also variously referred to as the “no-net-
change” or “no-net-conversion”) embodiment or mode of the invention (see,
e.g., Decision, Analysis Section I, 10-12) and the “pass-through”
embodiment or mode (see, e.g., Decision, Analysis Section II, 12-15).
In the no-net-conversion embodiment, the signal 4 leaving the right
branch of the LNB 2 is converted twice within the head-in equipment 44—
first, up-conversion takes place in up-converter 7 and then down-conversion
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takes place in down-converter 8. The degree of frequency up-conversion
and the degree of frequency down-conversion are specifically set to be
equal. As such, frequency of the signal leaving the right branch of the head-
in equipment 44 (leaving down converter 8) is equal to the frequency of
signal 4 that enters the head-in equipment 44.
The pass-through embodiment is not depicted or expressly disclosed
in the ’234 Application. Cf. ’482 Patent, Fig. 5 (depicting a pass-through
embodiment). In the pass-through embodiment, a converter is provided
along only one branch of the head-in equipment. The other branch contains
no converters, so the signal of this latter branch leaves the head-in
equipment without undergoing any frequency conversions internal to the
head-in equipment.
To summarize, from the perspective outside of the head-in equipment
the no-net-conversion embodiment and the pass-through embodiment
ultimately produce substantially the same result: frequency conversion of
only one signal branch. Internally, though, the two embodiments achieve
the ultimate result in different manners: three frequency conversions take
place within the head-in equipment of the no-net-conversion embodiment,
while only one frequency conversion takes place within the head-in
equipment of the pass-through embodiment. The Panel found that the
’234 Application lacks adequate written description of either of these
embodiments. Decision 10-15.

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CONTENTIONS
The three section headings of the Request provide a general overview
of Owner’s contentions:
A. The PTAB’s Reversal of the Examiners' Express
Factual Determinations Are Contrary to (a) The PTO’s
Interpretation of the Claims Under Rejection; (b) Express
Disclosure in the 1995 Application that the Output
Frequency Is The Same As The Input Frequency; and
(c) Uncontradicted Evidence of Record that In 1995, Low
Noise Block Converters (“LNB’s”) Were Known to
Down-Convert.
Request 2 (emphasis omitted). “B. The PTAB’s ‘Written Description’
Legal Ruling Misapprehends the Law of Written Description.”
Request 10 (emphasis omitted). “C. PO’s Open Claims Are Fully
supported by the 1995 Application.” Request 14 (emphasis omitted).
We address the details of these three general arguments in order.

ANALYSIS
A.
Owner challenges the Panel’s factual finding that the ’234 Application
fails to demonstrate reasonably that the inventors possessed a no-net-
conversion embodiment at the time of the priority application filing.
Request 2-10. Owner urges that this finding by the Panel is directly contrary
to the Examiner’s express factual finding, which was that the
’234 Application does disclose a no-net-conversion embodiment. Request 3.
Owner also argues that the Panel’s finding constitutes a new rationale that
the PTO never previously asserted. Request 1.
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Upon reconsideration of the Examiner’s statements, we agree with
Owner that our finding concerning the ’234 Application’s lack of disclosure
of the no-net-conversion embodiment was contrary to the Examiner’s
finding. For example, in the Advisory Action mailed May 31, 2013, the
Examiner explains her finding that the ’234 Application discloses a “no-net-
change” embodiment, but not a “pass-through” embodiment:
while it is agreed that the 1995 Figure 1 circuit has an operating
mode where there is no net frequency change so that the
frequency of the output block is unchanged relative to the
frequency of the input block, the output block has also been
converted relative to the input block and thereby, no
modification of the circuit is required to cause the circuit to
operate in such “pass-through” but still converted mode in
contrast[] to a “pass-through” but not converted mode. . .
Adv. Action 4 (emphasis in original).
2
See also Ans. 10 (“[The]
Examiner’s interpretation to always require internal frequency shifting
never seen on the cable is not contrary to the determination the
specifications disclose [a no-net-conversion] operating mode where there is
no net frequency conversion for one of the two blocks” (emphasis in
original)).
Accordingly, we vacate the prior finding that the ’234 Application
lacks adequate disclosure of a no-net-conversion embodiment. To be clear,
we are not affirmatively holding that the ’234 Application’s broad disclosure
of an up-conversion followed by a down-conversion, generally, is sufficient

2
We understand the Examiner’s terminology of “a ‘pass-through’ but still
converted mode” to correspond to Owner’s terminology of “a no-net-change
mode,” while the Examiner’s terminology of “‘pass-through’ but not
converted mode” corresponds to Owner’s terminology of a “pass-through
mode.”
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to demonstrate that the inventors additionally had possession of the specific
embodiment of no-net-conversion operation. Rather, we are merely
acknowledging that if we were to maintain our original finding, our decision
to do so would constitute a new ground of rejection under 37 C.F.R.
41.50(b), the effect of which could potentially prolong prosecution. We
therefore vacate this finding because we need not reach this question in
order to resolve the present appeal.
In the course of reaching our ultimate conclusion that the
’234 Application did not provide reasonable support for the no-net-
conversion embodiment, the Panel additionally found that “the [Bell]
Declaration does not provide evidence that the LNB converter was known to
down convert frequencies at the time subject matter disclosed in the
’234 Application was invented.” Dec. 12 (emphasis in original). Owner
challenges this finding. Request 3. Because we vacate our findings and
conclusion relating to whether the ’234 Application provides reasonable
support for the no-net-conversion embodiment (supra), we need not address
the associated question of whether low noise block converters were known,
at the time of the ’234 Application’s filing, to down-convert signals to
intermediate frequencies that can be carried on coaxial cables. Accordingly,
we vacate our findings and conclusions on this point, as well.
B.
Owner contends in Section B of the Request that “[t]he PTAB
misapprehends the law of written description at least because an inherent
disclosure of ‘pass through’ is sufficient to meet the written description
requirement under 35 USC 112(1).” Request 10 (emphasis in original).
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Section B of the Request additionally contains arguments pertaining to
whether the ’234 Application provides adequate written description for
(i) the no-net-conversion embodiment and (ii) the proposition that LNBs
were known to down-convert to intermediate frequency ranges. See
Request 10-12. Because we have vacated our findings relating to these two
latter points, we limit our Analysis of Section B of the Request to whether
the ’234 Application provides adequate written description for the pass-
through embodiment.
Turning to this remaining argument, then, we disagree with Owner’s
contention that ’234 Application inherently discloses a pass-through
embodiment. Owner relies on the testimony of Dr. Bernard Sklar to
demonstrate that the ’234 Application provides a pass-through mode of
operation and argues that Dr. Sklar’s testimony is undisputed. Request 13.
However, Dr. Sklar’s testimony, as set forth in the Sklar Declaration, filed
Aug. 12, 2013 (“the Sklar Decl.”), does not reasonably establish that the
’234 Application discloses a pass-through mode of operation, either
inherently or otherwise.
In the Sklar Declaration, Dr. Sklar explains why he believes one of
ordinary skill would understand the ’234 Application to disclose that the
head-in processor 44 is inherently capable of providing a range of potential
conversion modes of operation, including a no-net-conversion mode. Sklar
Decl. ¶¶ 9-15. Based on his belief that a no-net-conversion embodiment is
inherently disclosed, Dr. Sklar then reaches a further opinion regarding the
’234 Application’s disclosure of the distinct pass-through embodiment. For
example:
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As I explained during the interview [with the Examiner],
while the circuit of Figure 1 of the 1995 application provides
the flexibility described above [in relation to the no-net-
conversion embodiment], one skilled in the art would have
immediately recognized that if it were desired to reduce
manufacturing costs for a specific commercial implementation
that did not require such flexibility, a specific commercial
implementation could in many cases replace the up converter 7
followed by a down converter 8 with either an up converter, a
down converter or a pass-through. For example, as I discussed
during the interview, one skilled in the art in 1995 would have
recognized from reading the 1995 application that the up
converter 7 followed by the down converter 8 when set to
provide the same output frequency as its input frequency (just
like taking the elevator from the main floor to the top floor then
back down again to the main floor) could be represented or
replaced by an amplifier or other pass-through that does no
frequency conversion at all. This is for example precisely what
is shown in the left leg of Figure 5 of the ’482 patent.
Sklar Decl. ¶ 16 (emphasis added).
This statement, as well as Dr. Sklar’s subsequent statements regarding
the pass-through embodiment (Sklar Decl. ¶¶ 17-21), merely asserts what
modifications to head-in equipment one of ordinary skill in the art might
envision could be made after reading the ’234 Application. The Sklar
Declaration does not provide reasonable evidence that the inventors of the
’234 Application, themselves, envisioned that the head-in equipment 44
could be modified to completely eliminate the up-converter 7 and down-
converter 8.
Stated another way, the present inquiry is not one of enablement—
whether one of ordinary skill in the art, upon reading the ’234 Application,
reasonably would have known how to make and use a pass-through
embodiment. Rather, the relevant inquiry for satisfying the written
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description test is whether “the specification [describes] an invention
understandable to the skilled artisan and show that the inventor actually
invented the invention claimed.” Ariad Pharm, Inc. v. Eli Lilly & Co., 598
F.3d, 1336 1351 (Fed. Cir. 2010) (emphasis added). See also Goeddel v.
Sugano, 617 F.3d 1350, 1356 (Fed. Cir. 2010) (wherein the Federal Circuit
rejected the same argument raised by PO, explaining that an earlier priority
date cannot be established merely because a “person of skill in the art could
‘envision’ the invention” claimed in later applications); Lockwood v.
American Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997) (“It is not
sufficient for purposes of the written description requirement of § 112 that
the disclosure, when combined with the knowledge in the art, would lead
one to speculate as to modifications that the inventor might have envisioned,
but failed to disclose”).
To summarize, the Sklar Declaration does not provide sufficient
persuasive evidence to show that the inventors actually invented the pass-
through embodiment at the time the ’234 Application was filed. Nor has
Owner alleged any other persuasive evidence that would reasonably
demonstrate the ’234 Application provides adequate written description for
the pass-through embodiment.
C.
In section C of the Request, Owner asserts that “the present claims are
not limited to require only one frequency conversion,” but rather, include the
open-ended transitional phrase, “comprising.” Request 14; see generally,
id. at 14-17. As such, Owner urges, the claims are merely reciting a
subcombination of the invention’s two frequency conversions. Id. Owner
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contends that reciting subcombinations through the use of the claim term “at
least one” is not only permissible, but is extremely common in many patent
claims. Request 15. In support of this position on claiming
subcombinations, Owner cites Gillette Co. v. Energizer Holdings Inc.,
405 F.3d 1367 (Fed. Cir. 2005). Owner notes (Request 14) that in the
Gillette case, our reviewing court held that a claim to “[a] safety razor blade
unit comprising . . . a group of first, second and third blades” encompassed
four-bladed versions of a safety razor, as well as three-bladed versions,
because it used the open-ended word comprising. Id. (citing Gillette.
405 F.3d at 1374).
However, the present issue does not center on the well-settled
question of whether claim terms that employ the transition word
“comprising” additionally encompass more narrow inventions that include
additional elements beyond those expressly claimed. The present issue is
whether a claim generic to two species (head-in equipment that frequency
converts either one or both blocks) is reasonably supported by the initial
disclosure of only a single one of these species (head-in equipment that
frequency converts both blocks).
To provide further support for the position that it is acceptable to
claim a subcombination of one’s invention, Owner cites to the example of
electrical inventions that possess power sources. Request 15-16. In such
cases, Owner notes, it is common for the claim to omit any recitation of the
power source. Id.
Certainly, a patent drafter generally is free to omit from the claims
conventional details of the invention that are disclosed in the patent
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application. The present situation, though, is not one where the claims omit
a conventional feature of the invention that was disclosed—e.g., where a
disclosed power source is omitted from the claim in an attempt to ensure that
would-be copiers avoid literal infringement by selling the invention without
batteries. Instead, the present claims—by reciting “a first block converter
that frequency converts at least one of said first and second polarized signal
blocks for application to said cable” (emphasis added)—affirmatively recite
the invention generically with the specific intent of covering not only subject
matter that is initially disclosed in the ‘234 Application (head-in equipment
that frequency converts two blocks), but also covering subject matter that is
not reasonably disclosed yet in the ‘234 Application (head-in equipment that
operates in the pass-through mode by frequency converting only one block).
Dependent claim 18 provides compelling evidence that independent
claim 1 was drafted with the specific intent of covering the pass-through
embodiment. Claim 18 expressly limits the scope of claim 1 to read
exclusively on the non-disclosed pass-through embodiment: “18. A system
as in claim 1 wherein said head-in equipment passes one of said first and
second signal blocks to said cable without any further frequency
conversion.” A claim drafter cannot draft a claim so broadly as to procure a
patent monopoly on additional subject matter that an application does not
disclose. See 35 U.S.C. § 112, ¶ 1.
Owner similarly argues that it is extremely common for a claim to
employ the open claim terminology “at least one.” Request 15. Again,
though, the issue is not whether the term “at least one” is permissible per se.
Rather, the issue is whether a claim that recites “at least one block
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converter” finds reasonable support in a specification that only discloses
equipment that frequency converts both blocks.
Owner also argues that it is permissible for claim 1 to recite “a first
block converter that frequency converts at least one of said first and second
polarized signal blocks for application to said cable” because whether one or
two blocks are converted merely relates to internal implementation details of
the head-in equipment. Request 15, 17. Owner expanded upon this
argument during the oral hearing that was held on November 12, 2014 for
the combined appeals of the following related inter parte reexamination
proceedings: 2014-007670 (95/002105; which is a reexamination of
US 6,334,045 B1); 2014-008608 (95/002022; which is a reexamination of
US 6,397,038 B1); and 2014-009567 (95/002312; which is a reexamination
of US 8,165,520 B2). See 2014-007670 Tr. 18-20. Based on the Briefs and
Request of the present appeal, as well as Owner’s statements at the oral
hearing, we understand Owners position to be as follows:
According to Owner, the language of independent claim 1 properly
finds support in the ’234 Application because the ’234 Application does
disclose frequency converting either only one block or both blocks. More
specifically, the no-net-conversion embodiment, allegedly disclosed by the
’234 Application, can be viewed as an embodiment that converts only one
block. This is because when the head-in equipment is viewed from an
external perspective, only one conversion takes place in the no-net-
conversion embodiment—the conversion that takes place on line 3 in down-
converter 5. The frequency entering the head-in equipment 44 on line 4 is
up-converted and down-converted by equal amounts and, therefore, exits the
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head-in equipment 44 at the same frequency. As such, no net frequency
conversion takes place on this second line. See 2014-007670 Tr. 18-20.
This argument is not persuasive. A difference exists between stating
that one conversion takes place in the head-in equipment (as in the pass-
through embodiment) and that one net conversion takes place (as in the no-
net-conversion embodiment). In the no-net-conversion embodiment, even
though one net or effective conversion is apparent from an external
perspective, three conversions are, in fact, taking place internal to the head-
in equipment: the conversions in down-converter 5, up-converter 7, and
down-converter 8. If Owner wished for “frequency convert one signal
block,” as used in the claims, to mean “one net conversion,” Owner could
have worded the claim language in some manner to clarify that the claim
coverage included the no-net-conversion embodiment, but excluded the
pass-through embodiment.
Furthermore, even if we were to accept Owner’s position, solely for
the sake of argument, that the claim language “frequency converts at least
one of said . . . signal blocks” reasonably could be interpreted as reading on
the no-net-conversion embodiment, this would not be the end of the inquiry.
The issue is not whether converting one signal block reasonably can be
interpreted as reading on the no-net-conversion embodiment. The relevant
inquiry is whether the Examiner’s broader interpretation also is reasonable—
whether it is reasonable to interpret the claim limitation of frequency
converting at least one signal block as being broad enough to read on the
undisclosed pass-through embodiment. See, e.g., Ans. 20.
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During examination, the claims must be interpreted as broadly as their
terms reasonably allow. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359,
1369 (Fed. Cir. 2004). “It is the applicants’ burden to precisely define the
invention, not the PTO’s.” In re Morris, 127 F.3d 1048, 1056 (Fed. Cir.
1997). Appellants always have the opportunity to amend the claims during
prosecution, and broad interpretation by the Examiner reduces the possibility
that the claim, once issued, will be interpreted more broadly than is justified.
In re Prater, 415 F.2d 1393, 1404-05 (CCPA 1969).
Owner has failed to provide sufficient persuasive evidence of why it
would be unreasonable for the Examiner to find that the claim language
“frequency converts at least one of said . . . signal blocks” reasonably reads
on the pass-through embodiment. Accordingly, we find the claims to be so
broad as to read on the pass-through embodiment—an embodiment for
which the ’234 Application does not provide adequate written description.
In Section C of the Request, Owner also traverses the Decision’s
questioning of whether the claim term “first block converter” is a nonce
word and whether claim 1’s language “a first block converter that frequency
converts at least one of said first and second polarized signal blocks for
application to said cable” constitutes means-plus-function language pursuant
to 35 U.S.C. § 112, ¶ 6. Request 16 fn. 5 (citing Decision 16-18). More
specifically, Owner alleges that this portion of the Decision constitutes an
improper advisory opinion. Request 16 fn. 5.
We disagree that this portion of the Decision constitutes an advisory
opinion. The Decision expressly states that the discussion is “not a basis of
our decision,” but rather, is a question the Examiner may wish to consider in
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the event that there should be further prosecution on the merits. Dec. 16. As
such, this discussion unmistakably constitutes permissible dicta. Regardless,
though, in order to further clarify our Decision and remove any potential
question of which rationales were the bases of the Panel’s Decision, we
hereby vacate the dicta relating to the means-plus-function analysis, which
appears on claims 16-18 of the Decision.

CONCLUSIONS
We GRANT Owner’s Request to the extent that we vacate various
conclusions set forth in our prior Decision:
(1) We VACATE our prior finding that the ’234 Application lacks
adequate disclosure of a no-net-conversion embodiment;
(2) We VACATE our prior finding that the ’234 Application lacks
adequate disclosure that the LNB converter was known at the
time of that Application’s filing to down-convert signals to
frequencies that can be carried on a coaxial cable; and
(3) We VACATE the dicta relating to the means-plus-function
analysis, which appears on claims 16-18 of the Decision.
We DENY Owner’s ultimate request that we modify our Decision
AFFIRMING the Examiner’s Decision rejecting claims 1, 4, 6-7, 12-20, 27-
28, 31-33, and 35-39.

GRANTED-IN-PART

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Patent Owner:

Nixon & Vanderhye, PC
901 North Glebe Road
11
th
Floor
Arlington, VA 22203

Third Party Requester:

Greenblum & Bernstein, PLC
1950 Roland Clarke Place
Reston, VA 20191