Ex Parte 6122482 et alDownload PDFPatent Trials and Appeals BoardMay 22, 201490012127 - (R) (P.T.A.B. May. 22, 2014) Copy Citation 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 Appeal 2014-001761 Reexamination Control 90/012,127 Patent 6,122,482 2 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. Appeal 2014-001761 Reexamination Control 90/012,127 Patent 6,122,482 3 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). Appeal 2014-001761 Reexamination Control 90/012,127 Patent 6,122,482 4 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. Appeal 2014-001761 Reexamination Control 90/012,127 Patent 6,122,482 5 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 Appeal 2014-001761 Reexamination Control 90/012,127 Patent 6,122,482 6 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 Appeal 2014-001761 Reexamination Control 90/012,127 Patent 6,122,482 7 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. Appeal 2014-001761 Reexamination Control 90/012,127 Patent 6,122,482 8 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. Appeal 2014-001761 Reexamination Control 90/012,127 Patent 6,122,482 9 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.” Appeal 2014-001761 Reexamination Control 90/012,127 Patent 6,122,482 10 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). Appeal 2014-001761 Reexamination Control 90/012,127 Patent 6,122,482 11 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: Appeal 2014-001761 Reexamination Control 90/012,127 Patent 6,122,482 12 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 Appeal 2014-001761 Reexamination Control 90/012,127 Patent 6,122,482 13 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 Appeal 2014-001761 Reexamination Control 90/012,127 Patent 6,122,482 14 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 Appeal 2014-001761 Reexamination Control 90/012,127 Patent 6,122,482 15 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 Appeal 2014-001761 Reexamination Control 90/012,127 Patent 6,122,482 16 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 Appeal 2014-001761 Reexamination Control 90/012,127 Patent 6,122,482 17 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. Appeal 2014-001761 Reexamination Control 90/012,127 Patent 6,122,482 18 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 Appeal 2014-001761 Reexamination Control 90/012,127 Patent 6,122,482 19 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 Appeal 2014-001761 Reexamination Control 90/012,127 Patent 6,122,482 20 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 Copy with citationCopy as parenthetical citation