Ex Parte 6397038 et al

Patent Trial and Appeal Board

Jan 28, 2015

95002022 (P.T.A.B. Jan. 28, 2015)

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.
95/002,022 06/18/2012 6397038 850-34 1066
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
________________

DIRECTV, LLC
Third Party Requester

v.

GLOBAL COMMUNICATIONS, INC.
Patent Owner
____________

Appeal 2014-008608
Reexamination Control 95/002,022
Patent US 6,397,038 B1
Technology Center 3900
________________

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

BAUMEISTER, Administrative Patent Judge.

DECISION ON APPEAL

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SUMMARY
This proceeding arose from a request by DIRECTV for an inter partes
reexamination of US Patent 6,397,038 B1, titled “SATELLITE
BROADCAST RECEIVING AND DISTRIBUTION SYSTEM” (issued
to James A. Green, et al. on May 28, 2002 from Application 09/664,443,
filed Sept. 18, 2000) (“the ’038 Patent”). We have jurisdiction under
35 U.S.C. §§ 134 and 315.
The ’038 Patent describes the invention as follows:
The present invention provides a satellite broadcast receiving
and distribution system that will permit for the transmission of
vertical and horizontal or left-hand circular and right-hand
circular polarization signals simultaneously via a single coaxial
cable. The system of the present invention will accommodate
two different polarity commands from two or more different
sources at the same time. This satellite broadcast receiving and
distribution system of the present invention will provide for the
signals received from the satellite to be converted to standard
frequencies so as to permit for signals to travel via existing
wiring which the present day amplifiers can transport in
buildings, high-rises, hospitals, and the like so that satellite
broadcasting can be viewed by numerous individuals by way of
a single satellite antenna.
Abstract.
Patent Owner, Global Communications, Inc. (“Owner”) appeals under
35 U.S.C. §§ 134 and 315 from the two adopted rejections of claims 1-6
(PO App. Br. 2, PO Reb. Br. 1):
1

1
Throughout this Opinion, we refer to (1) the Request for Inter Partes
Reexamination filed June 18, 2012 (“Request”); (2) the Right of Appeal
Notice mailed September 30, 2013 (“RAN”); (3) Third Party Requester’s
Appeal Brief filed December 23, 2013 (“3PR App. Br.”); (4) Patent Owner’s
Appeal Brief filed December 30, 2013 (“PO App. Br.”); (5) Patent Owner’s
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Claims 2-6 stand rejected under 35 U.S.C. § 102(e) as being
anticipated by Novak (US 5,787,335; issued July 28, 1998); and
Claims 1-6 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Novak in view of Green (US 5,073,930; issued
Dec. 17, 1991).
Third Party Requester, DIRECTV, LLC, (“Requester”) urges that the
Examiner’s decision to reject these claims should be affirmed. See 3PR
Resp. Br. 1-18.
Requester also appeals under 35 U.S.C. §§ 134 and 315 from the
Examiner’s decision to not adopt the proposed rejection of claims 1-6 under
35 U.S.C. § 103(a) over Yagi (Japanese Application Disclosure H4-189036;
published July 7, 1992) in view of DE ’208 (German Laid Open Application
No. 41 17 208; published Nov. 19, 1992) and Fujitsu ’989 (Japanese
Unexamined Patent Application No. H05-315989; published Nov. 26, 1993).
See 3PR App. Br. 4-26. Owner urges that the Examiner’s decision to not
reject these claims should be affirmed. See PO Resp. Br. 1-7.
Three related appeals have been filed before the Patent Trial and
Appeal Board (“the Board”). Two of the pending appeals arise from
separate inter partes reexaminations, and include respective, associated

Respondent Brief filed January 23, 2014 (“PO Resp. Br.”); (6) Requester’s
Respondent Brief filed January 30, 2014 (“3PR Resp. Br.”); (7) the
Examiner’s Answer mailed May 30, 2014 (incorporating portions of the
RAN by reference) (“Ans.”); (8) Requester’s Rebuttal Brief filed June 25,
2014 (“3PR Reb. Br.”); (9) Owner’s Rebuttal Brief filed June 30, 2014 (“PO
Reb. Br.”); and (10) the § 132 Declaration of Bernard Sklar, Ph.D., initially
submitted in ex parte re-examination, 90/012,127, on December 10, 2012
(“Sklar Decl.”).
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cross appeals by Requester (see PO App. Br. 1): Appeal 2014-007670 in
inter partes reexamination 95/002,105 arose from a request by Requester for
an inter partes reexamination of US Patent 6,334,045 B1, entitled
“SATELLITE BROADCAST RECEIVING AND DISTRIBUTION
SYSTEM” (issued to James A. Green et. al. on Dec. 25, 2001 from
Application 09/621,464, filed July 21, 2000 (“the ’045 Patent”). Appeal
2014-009567 in inter partes reexamination 95/002,312 arose from a request
by Requester for an inter partes reexamination of US Patent 8,165,520 B2,
also entitled “SATELLITE BROADCAST RECEIVING AND
DISTRIBUTION SYSTEM” (issued to James A. Green et al. on April 24,
2012 from Application 12/464,969, filed May 13, 2009 (“the ’520 Patent”).
The third appeal is 2014-001761, which arose in ex parte reexamination
90/012,127 of US Patent 6,122,482, also entitled “SATELLITE
BROADCAST RECEIVING AND DISTRIBUTION SYSTEM” (issued
to James A. Green et. al. on Sept. 19, 2000 from Application 09/001,484,
filed Dec. 31, 1997 (“the ’482 Patent”).
The present ’038 Patent, as well as the three related patents for which
reexamination has been requested, ultimately claims priority through various
series of continuation and continuation-in-part applications to US patent
application 08/394,234, now abandoned (“the ’234 Application”). Owner
states that all four of these related reexamination proceedings pending before
the Board involve the same priority issue. PO App. Br. 1. Four separate
opinions set forth the respective details of each of the related appeals, as
well as the associated cross appeals.
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The following proceedings are said to be related to the present appeal
(3PR App. Br., Related Proceedings Appx.): (1) Global Communications,
Inc. v. PDI Communications, et al., No. 4:11-cv-00541 (N.D. Fla.)
(May 21, 2012, Order Granting Partial Summary Judgment Based on Patent
Exhaustion); (2) Global Communications, Inc. v. PDI Communications, et
al., No.4: ll-cv-00541 (N.D. Fla.) (July 12, 2012, Order Dismissing the
Remaining Claims and Directing the Entry of a Rule 58 Final Judgment);
and (3) Global Communications, Inc. v. PDI Communications, et al., No.
2012-1619 (Fed. Cir.) (May 8, 2013, Order Affirming District Court
Judgment).
Oral argument for the ex parte reexamination appeal was held before
a panel of the Board on April 9, 2014. Consolidated oral arguments for the
three related inter partes reexamination appeals and associated cross appeals
were held before the same panel of the Board on November 12, 2014.
2

Transcripts of the appeal arguments will be included in the respective
records.
We review the appealed rejections for error based upon the issues
identified by Appellants, and in light of the arguments and evidence
produced thereon. Cf. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010)
(precedential) (citing In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992)).
We affirm the Examiner’s rejection of claims 1-6.
We do not reach the cross-appeal of the proposed rejection that the
Examiner did not adopt.

2
At the November 12, 2014 oral hearing session, Counsel for Owner and
Requester both agreed to argue the three inter partes reexamination appeals
in consolidated form. Tr. 3.
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BACKGROUND
The present appeal is taken from a reexamination of US 6,122,482 B1
(issued to Green et al., Sept. 19, 2000) (“Green ’482”). Green ’482 issued
from patent application 09/001,484 (filed Dec. 31, 1997), which claims
priority through a series of continuation and continuation-in-part
applications to abandoned US patent application 08/394,234 (filed
Feb. 22, 1995) (“the ’234 Application”). Patent Owner contends that
The ’038 patent in reexamination claims priority from Patent
Application No. 08/394,234 filed 2/22/95 (“the 1995
application”). The Novak patent (which is the basis for all
rejections) postdates PO’s 2/22/95 effective filing date. As a
result, this appeal presents a single issue: Whether the 1995
application provides an adequate written description under
35 USC 112 first paragraph for ’038 Claims 1-6 in
reexamination so as to overcome rejections based on Novak
(either alone or in combination).
App. Br. 4. 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.
3

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

3
Patent Owner argues all pending claims together as a group. See PO App.
Br. 4-22; PO Reb. Br. 1-15. Accordingly, we select independent claim 1 as
representative. See 37 C.F.R. § 41.37(c)(1)(vii)(2010).
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originally disclosed satellite system is depicted in FIG. 1 of the
’234 Application – the sole figure. Figure 1 is reproduced below:

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
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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.
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.
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We now compare independent claims 1 and 2 of the present
reexamination application (emphasis added) to the disclosure of the
’234 Application:
1. A satellite signal distribution system for distributing
television program signals to satellite receivers having a
predetermined receive frequency, the system comprising:
a satellite dish that receives first and second blocks of
polarized television program signals from at least one satellite,
said first block comprising a first plurality of television
program signals received from the satellite, the second block
comprising a second plurality of television program signals
received from the satellite;
a first frequency converter coupled to the satellite dish,
the first frequency converter converting at least the first block
comprising the plurality of television program signals received
from the satellite to a frequency range that is at least partially
outside of the satellite receive frequency range, the first
frequency converter applying said converted first block
comprising said first plurality of television program signals
simultaneously with the second block comprising the second
plurality of television program signals received from the
satellite onto a single coaxial distribution cable to enable two
different and distinct blocks of television program signals
received from the satellite to be stacked onto the cable and
distributed simultaneously over said single coaxial cable;
a second frequency converter coupled to the coaxial
cable, the second frequency converter further converting said
converted first block comprising the first plurality of television
signals to a further frequency range that is within the satellite
receiver frequency range;
wherein said second frequency converter performs a
frequency down-conversion and wherein all of the television
program signals within the first block comprising the first
plurality of television program signals are received by the
satellite dish with a common polarization.
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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. Independent claim 2 includes a
similar limitation: “A frequency converter coupled to at least said received
first bock of plural channels, said frequency converter converting at least
said first channel block to a frequency band that is at least partially outside
of the satellite receiver frequency range” (emphasis added).
Turning to the Decision of the ’1761 Appeal, the Panel agreed with
the Examiner that the pending claims of the ’482 Patent 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-conversion” (also variously
referred to as the “no-net-frequency-change” or “no-net-change”)
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
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
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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 Examiner found that the ’234 Application’s general disclosure of
down-conversion on one signal branch and on the other signal branch, up-
conversion followed by down-conversion, is sufficient to provide written
description for the specific case of the no-net-conversion embodiment, but
not for the alternative specific case of the pass-through embodiment. E.g.,
Ans. 8-9. The Examiner, therefore, found that none of the present claims,
nor any of the claims in the related ex parte reexamination or two related
inter partes reexaminations, can claim priority to the ’234 Application’s
filing date because all of the reexamination claims are broad enough to read
on the pass-through embodiment, as well as the no-net-conversion
embodiment. Ans. 4-5.
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Owner’s Appeal Brief of the present appeal generally sets forth two
broad arguments. First, Owner argues that the ’234 Application provides
support for the pass-through embodiment, as well as the no-net-conversion
embodiment:
Two flexible, low cost alternative solutions to the “no net
frequency change” structure are to (a) program converters 7, 8
to provide no frequency change or (b) eliminate those
converters. Both of these solutions are within the scope of
1995 Claim 1. They also are contemplated by the language in
the 1995 application (page 4)[.]
PO App. Br. 16. Second, Owner argues that irrespective of whether the
’234 Application discloses a pass-through embodiment, the Examiner’s
factual finding—that the ’234 Application does disclose a no-net-conversion
embodiment—“is determinative in resolving the priority issue in PO’s favor
and requires reversal of all rejections.” PO App. Br. 14 (emphasis omitted).
Subsequent to Owner filing the Appeal Brief on December 30, 2013,
the present Panel issued a Decision in the 2014-001761 appeal of the
ex parte reexamination of the ’482 patent. See ’1761 Dec. (mailed
May 23, 2014). Therein, the Panel found inter alia that the
’234 Application’s general disclosure of an up-converter followed in series
by a down-converter did not provide reasonable support for either the no-
net-conversion embodiment or the pass-through embodiment.
Owner subsequently argued in their Request for Rehearing of the
’1761 Appeal that because the Panel’s reasoning for affirming the rejections
of the ’482 patent went beyond the Examiner’s reasons as stated in the
Examiner’s Answer, the Panel’s additional rationales constituted new
grounds of rejection. ’1761 Request for Reh’g. 2 (filed July 23, 2014).
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Additionally, because of the substantial similarity between the issues the
’1761 appeal and the present appeal, Owner’s Rebuttal Brief in the present
appeal also sets forth arguments relating to the Panel’s additional rationales
of the ’1761 Decision. See, e.g., PO Reb. Br., Section D, “The 1995
Specification Discloses a ‘No Net Conversion’ Mode As the Examiner
Correctly Determined,” 11-15 (setting forth arguments that substantially
correspond to those appearing in, e.g., Section A of Owner’s Request for
Rehearing of the ’1761 Decision).
In our Decision on Request for Rehearing of the ’1761 Appeal, we
determined that the Examiner’s conclusions—that the ’234 Application did
not reasonably disclose a pass-through embodiment and that the claims were
broad enough to impermissibly read on the pass-through embodiment as
well as the no-net-conversion and dual-conversion embodiments—were
sufficient to sustain the Examiner’s decision rejecting the appealed claims.
We then vacated our additional findings and conclusions regarding whether
the ’234 Application discloses either a no-net-conversion embodiment or an
LNB converter that down-converts signals to frequencies that can be carried
on a coaxial cable. See, e.g., ’1761 Dec. on Request for Reh’g. 8-10, 19.
We also vacated cetain dicta relating to whether the ’1761 claims reasonably
could be interpreted as invoking the means-plus-function provision of
35 U.S.C. § 112, ¶ 6. Id. at 18-19.
In the present case, as in the case of the ’1761 Appeal, we likewise
find that we can resolve the dispositive issues without relying on the
additional findings and conclusions that we vacated in our ’1761 Decision
on Request for Rehearing. Accordingly, we find to be moot the arguments
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in Owner’s Briefs that relate to these additional issues. We address only the
remaining issues.

OWNER’S APPEAL OF THE ADOPTED REJECTIONS
I.
Owner contends that the ’234 Application inherently discloses a pass-
through embodiment. See, e.g., PO App. Br. 6, 16, 17. For the reasons
explained below, though, we find that Owner has not established possession
of the pass-through embodiment at the time the’234 Application was filed.
Owner primarily relies on the testimony of Dr. Bernard Sklar, as set
forth in the Sklar Declaration, to support the proposition that the
’234 Application discloses a pass-through mode of operation. PO App.
Br. 5-10. However, Dr. Sklar’s testimony does not reasonably establish that
the ’234 Application discloses a pass-through embodiment or 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:
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 a no-net-
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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 sufficient persuasive evidence to show 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
description test is whether “the specification [describes] an invention
understandable to the skilled artisan and show that the inventor actually
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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”).
Owner also argues that besides the Sklar Declaration, claim 1 of the
’234 Application, in combination with other portions of that Specification,
provides sufficient disclosure to evidence possession of the pass-through
embodiment. PO App. Br. 10-13. Owner argues that claim 1 of the
’234 Application does not require a conversion at all converters 5, 7, and 8.
PO App. Br. 11. “Instead Claim 1 requires only a first conversion.” Id.
According to Owner, the claim differentiation doctrine further confirms that
claim 1 only requires one conversion because dependent claim 7 requires
two conversions.
Claims 1 and 7 of the ’234 Application read as follows:
1. A satellite broadcasting system comprising:
a satellite dish coupled to a low-noise block converter;
and
said low-noise block converter is coupled to a first means
of converting vertical polarization signals and horizontal
polarization signals or left hand circular polarization signals and
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right-hand circular polarization signals from said satellite and
transmitting simultaneously via a single coaxial cable for
enabling two different frequencies and polarities to be
transmitted simultaneously via said single coaxial cable.

7. A satellite broadcasting system as in claim 2 [which, in turn,
depends from claim 1] wherein said first means includes a first
converting system for converting said signals of a first direction
to a desired first frequency and polarization and a second
converting system for converting said signals of a second
direction to a desired second frequency and polarization.
This argument is not persuasive. Statutory provision 35 U.S.C.
§ 112, ¶ 6, states that
[a]n element in a claim for a combination may be
expressed as a means or step for performing a specified
function without the recital of structure, material, or acts in
support thereof, and such claim shall be construed to cover the
corresponding structure, material, or acts described in the
specification and equivalents thereof.
The only “structure, material, or acts described in the specification” of
the ’234 Application that correspond to the “first means” of claim 1 is the
embodiment depicted in Figure 1 wherein conversions take place in all three
converters 5, 7, and 8. As such, we understand Owner’s position to be that
the pass-through embodiment corresponds to an equivalent of the disclosed
structure. However, the sixth paragraph of § 112 only covers the manner in
which disclosed elements of an invention may be claimed. Paragraph 6 does
not abrogate or ease the separate requirement of § 112, paragraph 1, that the
Specification also provide adequate written description of the invention.
Under Owner’s theory of the doctrine of equivalents, in virtually any
situation a skilled claims draftsperson could circumvent completely the
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separate, written description requirement of §112, ¶ 1, merely by disclosing
a single embodiment in the Specification, claiming the invention in means-
plus-function form, and then asserting that the combination of this disclosure
and claim provides adequate written description for a wide array of non-
disclosed subject matter. Owner has not cited any legal authority that would
support such an interpretation of the relationship between § 112, ¶¶ 1 and 6,
and we decline to give our imprimatur to such an interpretation today.
Owner additionally contends that the ’234 Application must be
considered for all that it teaches to those of ordinary skill in the art—not just
the embodiments disclosed therein. PO App. Br. 13. For example, Owner
notes that the Specification provides the following express disclosure:
The satellite broadcast system consists of a satellite antenna
which receives the polarized signals. These polarized signals
are transmitted to a head-in processor and are converted to
different frequencies and polarities in order to render the
different signals to be transmitted simultaneously. Hence, the
head-in processor will permit for the transmission of signals of
two different frequencies and polarities to be transmitted
simultaneously and will also accommodate two different
polarity commands from two or more different sources at the
same time via a single cable. (Emphasis added).
PO App. Br. 16. Owner contends that passages such as this teach all means
of accomplishing the end result of applying signals of two different
frequencies to the coaxial cable.
This argument is unpersuasive. This disclosure merely states, in
general terms, the result achieved by the head-in processor. It does not
additionally state the manner or structure by which this result is achieved.
The only structural embodiment of head-in equipment disclosed in the
’234 Application is head-in equipment that has converters on both of signal
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lines 3 and 4. Disclosure of this single embodiment is not sufficient to show
that the inventor additionally had possession of a pass-through embodiment.
To summarize, the Sklar Declaration does not show that the inventors
had possession of the pass-through embodiment at the time the
’234 Application was filed. Nor has Owner pointed to any other persuasive
evidence that would reasonably demonstrate the ’234 Application provides
adequate written description for the pass-through embodiment.
II.
Owner argues that irrespective of whether the ’234 Application
discloses a pass-through embodiment, the Examiner’s factual finding—that
the ’234 Application does disclose a no-net-conversion embodiment—“is
determinative in resolving the priority issue in PO’s favor and requires
reversal of all rejections.” PO App. Br. 14. Even if we were to assume,
solely for the sake of argument, that the ‘234 Application does disclose a no-
net-conversion embodiment, such a disclosure would be insufficient to
conclude that adequate written description exists for the present claims, as
required by 35 U.S.C. § 112, ¶ 1. We next address the following specific
arguments pertaining to this general contention.
Owner asserts that the present claims are not limited to require only
one frequency conversion, but rather, include the open-ended transitional
phrase, “comprising.” PO Reb. Br. 3; see generally, id. at 3-6. As such,
Owner urges, the claims are merely reciting a subcombination of the
invention’s two frequency conversions. Id. Owner 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.
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PO Reb. Br. 4. 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 (PO Reb. Br. 4) 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. PO Reb. Br. 5-6. 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
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
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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).
Owner acknowledges that the claims were drafted with the specific
intent of covering the pass-through embodiment. “Both of [pass-through
and no-net-conversion] solutions are within the scope of 1995 Claim 1.”
PO App. Br. 16.
PO intentionally drafted independent claims 1 and 2 to
not require such internal implementation details or particular
operating modes of the ’038 Figure 2, but rather to direct them
to the overall effect of frequency shifting as applied to the
cable. PO was entitled to do this because PO disclosed in 1995
a generic solution including where one or two polarizations
simultaneously applied to the cable is/are frequency converted
relative to the frequencies of the inputs.
PO App. Br. 9 (emphasis in original). We disagree with Owner’s position.
A claim drafter cannot draft a claim so broadly as to procure a patent
monopoly on additional subject matter for which the application does not
provide adequate written description. See 35 U.S.C. § 112, ¶ 1.
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
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two blocks are converted merely relates to internal implementation details of
the head-in equipment. E.g., PO App. Br. 9. Owner expanded upon this
argument during the oral hearing that was held November 12, 2014 for the
combined appeals of the three related inter parte reexamination proceedings.
See Tr. 18-20. Based on Owner’s Briefs, as well as Owner’s statements at
the oral hearing, we understand Owner’s position to be as follows:
According to Owner, the language of independent claims 1 and 2
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
head-in equipment 44 at the same frequency. As such, no net frequency
conversion takes place on this second line. See 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 may be 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
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down-converter 8. If Owner wished for “converting at least one block,” as
used in the present claims, to mean “performing at least one net conversion
on two signals,” 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 “converting at least one block”
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 the claim language of 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. 8-9.
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
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“converting at least one block” 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.
Owner further argues
Unless an art is unpredictable or unless a patentee has
disclaimed subject matter, there is no legal impediment to
claiming more broadly than the preferred embodiment. See
Superguide Corp. v. DirecTV Enterprises, Inc., 358 F.3d 870,
875 (Fed. Cir. 2004) [(Reh’g. and Reh’g. en banc denied
Apr. 13, 2004)] (“Though understanding the claim language
may be aided by explanations contained in the written
description, it is important not to import into a claim limitations
that are not part of the claim. For example, a particular
embodiment appearing in the written description may not be
read into a claim when the claim language is broader than the
embodiment.”). There is also no legal requirement to limit
claims to particular operating modes of a disclosed circuit.
PO App. Br. 21-22.
This argument is unpersuasive because the Superguide case is
distinguishable. At issue in Superguide was the meaning of various claim
terms including “regularly received television signal.” Superguide, 358 F.3d
at 878. The district court had held that the term “regularly received
television signal” was limited to analog signals and necessarily excludes
digital technology “because no televisions existed as of [the patent’s filing]
date that could receive digital signals.” Id.
Our reviewing court reversed the district court’s determination
because “indisputable” evidence indicated that at the time during the
pendency of the patent application “video data could be communicated in
either analog or digital format” (id. at 879); importantly, patentee’s
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specification provided examples of transmitting digital signals, as well as
analog signals (id. at 879-80); and “[t]he claim language does not limit the
disputed phrases to any particular type of technology or specify a particular
type of signal format, such as analog or digital” (id. at 878). As such,
Superguide does not stand for the proposition urged by Owner—that one can
claim more broadly than a specification’s single disclosed embodiment. See
PO App. Br. 21-22. The Superguide court did not hold that the patentee’s
claim covered digital technology even though their specification only
disclosed analog technology. Rather, the Superguide court merely found
that the claim term “regularly receive television signal” did not limit the
claim to only one embodiment (analog technology) of the plural
embodiments (including digital technology) that the specification
affirmatively was found to have disclosed.

REQUESTER’S APPEAL OF THE NON-ADOPTED REJECTION
In view of our sustaining the Examiner’s anticipation and obviousness
rejections, we do not reach the proposed obviousness rejection of claims 1-6
over Yagi in view of DE ’208 and Fujitsu ’989. See In re Gleave, 560 F.3d
1331, 1338 (Fed. Cir. 2009) (not reaching other rejections after upholding an
anticipation rejection).

CONCLUSIONS
Owner has not persuaded us of reversible error in the Examiner’s
conclusion that the ’234 Application fails to provide reasonable written
description of the claims on appeal. Accordingly, we sustain the
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Examiner’s determination that Owner cannot establish priority as of the
filing date of the ’234 Application.

DECISION
The Examiner’s rejection of claims 1-6 is affirmed.
The Examiner’s decision not to reject the alternative, proposed
grounds of claims 1-6 is affirmed.

AFFIRMED

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Patent Owner:

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

Third Party Requester:

Patent Group 2N (Jones Day)
North Point
901 Lakeside Avenue
Cleveland, OH 44114