SOFTWARE RADIO TECHNOLOGY PLC et al.

Patent Trials and Appeals Board

Oct 5, 2020

2020000390 (P.T.A.B. Oct. 5, 2020)

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.
90/013,498 04/29/2015 7512095 P257056.US.01 6156
20686 7590 10/05/2020
DORSEY & WHITNEY LLP - Denver
INTELLECTUAL PROPERTY DEPARTMENT
1400 Wewatta Street
SUITE 400
DENVER, CO 80202-5549
EXAMINER
POKRZYWA, JOSEPH R
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
10/05/2020 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 SOFTWARE RADIO TECHNOLOGY PLC, VESPER MARINE
LIMITED (3RD PTY REQ.), LOWE GRAHAM JONES, PLLC

Appeal 2020-000390
Reexamination Control 90/013,498
Patent 7,512,095 B2
Technology Center 3900

Before JOHN A. JEFFERY, MARC S. HOFF, and
DENISE M. POTHIER, Administrative Patent Judges.

POTHIER, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
Appellant has submitted a timely Request for Rehearing dated July 1,
2020 (“the Request” or “Request”),1 requesting rehearing of our February 4,
2020 opinion (hereafter the “Opinion” or “Op.”) that affirmed the rejection

1 Appellant filed multiple requests on April 3, 2020, May 4, 2020, and June
1, 2020, respectively, to waive the deadline for submitting the Request under
the Coronavirus Aid, Relief, and Economic Security Act and the April 28,
2020 Notice of Extended Waiver of Patent-Related Timing under the
Coronavirus Aid, Relief, and Economic Security Act and Other Relief
Available to Patent Applicants and Patentees. On June 17, 2020, the waiver
requests were denied because they did not include the reply to the
outstanding response (e.g., the Request). The Request was submitted on
July 1, 2020, and the waiver request was approved.
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under 35 U.S.C. § 305 of claims 1, 15, and 24–32 of U.S. Patent No.
7,512,095 B2 (“the ’095 patent”). Op. 26. Appellant does not request
reconsideration of the remaining rejections under 35 U.S.C. §§ 102 and 103
of the claims that were reversed. Id.
“The request for rehearing must state with particularity the points
believed to have been misapprehended or overlooked by the Board.” 37
C.F.R. § 41.52(a)(1).
We have reconsidered the Opinion in light of Appellant’s contentions
in the Request for Rehearing. Upon review, we grant the Request to the
extent we designate the rejection based on 35 U.S.C. § 305 as a new ground.
Regarding the remaining arguments, we maintain our determination that
claims 1, 15, and 24–32 enlarge the scope of the claims of the ’095 patent
being reexamined.
Request to Remand the Appeal
In the Reply Brief, Appellant submitted amendments to the claims and
requested that we remand this proceeding to the Examiner for further
consideration. Reply Br. 9; see id., App. A–B. We declined to exercise our
discretion to remand the proceeding in the Opinion. Op. 4–5 (noting that 37
C.F.R. § 41.35(e) indicates the Board may relinquish jurisdiction and that the
Manual of Patent Examining Procedure (MPEP) § 1211.02 (9th Rev.
08.2017 Jan. 2018)2 indicates there is no obligation on the Board to consider
new claim amendments).

2 MPEP § 1211.02 was subsequently updated in June 2020 (9th Rev.
10.2019). The update does not change the proposition that there is no
obligation on the Board to consider new or amended claims.
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Appellant requests once again that we remand this proceeding to the
Examiner for consideration of an amendment to the claims. Request 2,
11–13. Appellant specifically argues that “with respect to a reexamination,
Appellant would have no opportunity to present its proposed amended
claims to the Examiner unless the Board were to exercise its discretion to
remand.” Request 2; see id. at 11 (stating “remand[ing] the application to
the Examiner . . . represents Appellant’s only chance to present amended
claims that would satisfy the Examiner as to both the 305 rejections and the
prior art. No other mechanism is available to Appellant to do so because this
appeal is with respect to a reexamination application.”)
We are not persuaded. First, Appellant has not demonstrated in the
Request how we overlooked or misapprehended points in the briefing or in
U.S. Patent and Trademark Office (“Office”) regulations and guidance. See
37 C.F.R. § 41.52(a)(1). Second, when the Board enters a new ground of
rejection in ex parte proceedings, including ex parte reexaminations, Office
regulations permit Appellant to reopen prosecution and to:
Submit an appropriate amendment of the claims so rejected or
new Evidence relating to the claims so rejected, or both, and
have the matter reconsidered by the examiner, in which event
the prosecution will be remanded to the examiner. The new
ground of rejection is binding upon the examiner unless an
amendment or new Evidence not previously of Record is made
which, in the opinion of the examiner, overcomes the new
ground of rejection designated in the decision. Should the
examiner reject the claims, appellant may again appeal to the
Board pursuant to this subpart.

37 C.F.R. § 41.50(b)(1). As explained below, we designate the rejection of
claims 1, 15, and 24–32 under 35 U.S.C. § 305 as a new ground. As such,
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Appellant will have the opportunity to amend the claims, such as those
presented in Appendices A and B, and to have the amendments considered
by the Examiner pursuant to 37 C.F.R. § 41.50(b).
Request to Withdraw the § 305 Rejection
In the Opinion, we sustained the rejection of claims 1, 15, and 24–32
under 35 U.S.C. § 305 as enlarging the scope of the claims of the ’095
patent. See Op. 6–14. We found that the scope of claim 1 (along with
commensurate limitations in claims 15 and 26) has broadened with regard to
the recited “transmission detector,” specifically noted that the Federal
Circuit has found that the term “detector,” in one instance, is “not a generic
structural term, such as ‘means,’” and “is a sufficiently definite structural
term to preclude the application of § 112, ¶ 6.” Id. at 9 (quoting from
Personalized Media Commc’ns LLC v. ITC, 161 F.3d 696, 704–05 (Fed. Cir.
1998), cited in Reply Br. 6). We addressed that the term “‘transmission
detector . . . capable of detecting the predetermined time slots utilized by the
first group of radios’ may include a variety of structure (e.g., circuitry)” (id.)
and found this phrase “appears to broaden claim 1.” Id. at 10; see id. at
10–12. Additionally, we determined
Based on the above constructions and depending on the length
of the recited “predetermined portion of a time slot,” scanning
during a predictable window of time (e.g., before the end of the
window) can be viewed as narrow in scope than scanning
throughout a predetermined portion of a time slot.

Id. at 13. We further found the amendment from “several moving
participants . . . that are each equipped with a communication device” to
“two groups of mobile radios” in claim 1 (and commensurate limitations in
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claims 15 and 26) broadens the scope of the claims of the ’095 patent. Id. at
16–17.
Appellant requests that we reconsider our determinations and requests
that we withdraw the § 305 rejection. Request 2. Appellant contends that “a
transmission detector . . . capable of scanning throughout a predetermined
portion of a time slot for the appearance of transmissions” and “two groups
of mobile radios” found in claim 1 as amended does not enlarge the scope
the ’095 patent’s claims. Id. at 3–11. Appellant also seeks clarification as to
whether the recited “transmission detector . . . is capable of scanning
throughout a predetermined portion of a time slot for the appearance of
transmissions” is a means-plus-function limitation under 35 U.S.C. § 112,
sixth paragraph,3 which Appellant “believes it should be.” Id. at 6; see id. at
6–7. If construed as argued, Appellant contends the Board misapprehended
or overlooked the phrases “a predetermined portion of a time slot” and
“scanning throughout” in claim 1 as broader in meaning than the previously
recited “a predetermined time period” and “scanning within” respectively.
Id. at 6–10. Appellant further argues the Board incorrectly concluded the
term “mobile radios” in claim 1 is broader in scope than the previously-
recited “several moving participants . . . that are each equipped with a
communication device” because “[t]he term ‘mobile radios’ . . . indicate[s]
more than the communication device,” including that the “devices are used

3 The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
(2011) (“AIA”), amended 35 U.S.C. § 112. Changes to § 112 apply to
applications filed on or after September 16, 2012. Because the ’095 patent
has a filing date before this date, we refer to the pre-AIA version of § 112 in
this decision.
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in connection with various ‘participants.’” Id. at 10–11 (citing the ’095
patent 1:61–63, 2:51–56).
1. “[T]ransmission detector . . . is capable of scanning throughout a
predetermined portion of a time slot for the appearance of transmissions”
In the original briefing, Appellant argued the recited “transmission
detector . . . is capable of scanning throughout a predetermined portion of a
time slot” (“the ‘transmission detector’ phrase”) should be construed as
“structure [that] is now limited to hardware, i.e., a transmission detector,
rather than the broader coverage of both hardware and an algorithm.”
Appeal Br. 17; see Op. 8 (quoting Appeal Br. 17). For the first time in the
Reply Brief, Appellant offered an alternative construction for the
“transmission detector” phrase as a “non-structural” recitation (i.e.,
“[a]ssuming, arguendo, that the ‘transmission detector’ is non-structural”)
that “would also invoke § 112(f).” Reply Br. 6. Now, in the Request,
Appellant argues the “transmission detector” phrase is a means-plus-
function limitation pursuant to 35 U.S.C. § 112, sixth paragraph. Id. at 6–7.
Given Appellant’s departure in the Request from the briefing related
to how the “transmission detector” phrase should be construed, we could not
have overlooked or misapprehended points made by the Appellant in the
briefing that the recitation necessarily invokes § 112, sixth paragraph.
Compare Request 6 (arguing the “transmission detector” recitation invokes
35 U.S.C. § 112, sixth paragraph), with Appeal Br. 17 (arguing the
“‘transmission detector’ that is ‘capable of detecting predetermined time
slots” is limited to hardware).
When addressing this recitation, we stated:
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Based on the above understanding, the newly recited
‘transmission detector . . . capable of detecting the
predetermined time slots utilized by the first group of radios’
may include a variety of structures (e.g., circuitry), which are
not those described in the ’095 patent’s Specification or an
equivalent to the previously recited ‘means’ in claim 1. From
this perspective, we agree with the Examiner that the newly
recited ‘detector’ appears to broaden claim 1.

Op. 9–10.
In the Opinion, we further noted our concerns regarding what
hardware would be encompassed by the recited “transmission detector” in
claim 1 consistent with the ’095 patent’s Specification and contemplated
whether the phrase is a means-plus-function limitation. Op. 10–12. We,
however, did not conclusively determine whether or not the “transmission
detector” phrase invoked 35 U.S.C. § 112, sixth paragraph. Op. 11 (noting
“we are left to question whether the new ‘transmission detector’ recitation
(i.e., ‘capable of detecting the predetermined time slots utilized by the first
group of radios’) should be construed as a means-plus-function limitation”);
see also id. at 11–12 (discussing what structure, material, or act (or its
equivalent) may perform both the originally and the currently recited
function within the “transmission detector” phrase in claim 1). In the
Request, Appellant seeks that we clarify whether the “transmission detector”
phrase invokes 35 U.S.C. § 112, sixth paragraph. Request 6–7.
Given the invitation, we specify that the “transmission detector”
phrase does not invoke 35 U.S.C. § 112, sixth paragraph, but rather is
limited to hardware as explained in the Opinion. Op. 9–10 (quoting from
Personalized Media, 161 F.3d at 704–05 and indicating the recitation may
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include a variety of structure). We therefore withdraw any discussion in the
Opinion concerning the recited “transmission detector,” including the
“transmission detector” phrase, invoking 35 U.S.C. § 112, sixth paragraph.
See, e.g., Op. 11–12.
Nonetheless, we maintain that the “transmission detector” phrase
broadens the scope of the original claims of the ’095 patent. Op. 9–10,
12–14. Specifically, we found:
the newly recited claim limitation recites “a predetermined
portion of a time slot” (Appeal Br. i (Claims App.) (emphasis
added)), which does not have antecedent basis back to the
divided, “predetermined time slots” (id.). We thus disagree that
the recited “a predetermined portion of a time slot” as newly
recited is limited to time slots within a TDMA[4] protocol as
argued (see id. at 18–19), such that the scope of claim 1 is
narrower than the previously recited “predictable window of
time” (the ’095 patent 5:1–2). Rather, the record does not
demonstrate adequately whether or not “a predetermined
portion of a time slot” as now recited in claim 1 is narrower in
scope than the generally recited “predictable window of time”
as previously claimed.

Id. at 12–13 (citing the ’095 patent 1:25–26).
In the Request, Appellant argues that neither the “transmission
detector” nor its function of being “capable of scanning throughout a
predetermined portion of a time slot for the appearance of transmission”
“broadens the claims.” Id. at 8; see id. at 7–8. Appellant particularly
contends we overlooked that the recited “‘a time slot’ is limited to time slots
within a TDMA protocol in claim 1” (id. at 8) and misapprehended that the

4 Time Division Multiple Access (TDMA).
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“‘time slot’ did not have an antecedent basis in the claim” (id. at 9).
Appellant further points to dependent claim 27 to support its position,
asserting that “[w]ere the antecedent basis for ‘time slot’ in claim 27 not the
same ‘predetermined time slots,’ the recitation of ‘another’ would make little
sense.” Id. at 8.
We are not persuaded.
Above, we addressed that the “transmission detector” phrase does not
invoke 35 U.S.C. § 112, sixth paragraph and thus should not be construed as
a means-plus-function limitation. Also, despite arguments to the contrary
(see Request 8–9), we maintain that the recited “a predetermined portion of a
time slot” as currently recited in claim 1 is not limited to time slots within a
TDMA protocol. See Op. 12 (stating “[w]e thus disagree that the recited ‘a
predetermined portion of a time slot’ as newly recited is limited to time slots
within a TDMA protocol as argued”). That is, the currently recited “a time
slot” has no antecedent basis to the “first group of mobile radios utilizes a
time division multiples access (TDMA) protocol . . . divided into
predetermined time slots” recitation in claim 1. Appeal Br. i (Claims App.)
(emphasis added).
Appellant points to claim 27’s “another time slot” recitation in
arguing that we misapprehended the antecedent basis for “a time slot” in
claim 1. Request 8. But, the “another time slot” found in claim 27, which
depends from claim 1, also has no antecedent basis to the recited
“predetermined time slots” in claim 1. Appeal Br. i–ii (Claims App.)
(emphasis added). Although both the recited “a time slot” in claim 1 and the
“another time slot” in claim 27 are recited as a “predetermined portion” of a
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time slot, neither refers to the previously recited “predetermined time slots.”
Id. (emphasis added).
Without any further evidence to counter our determination, Appellant
asserts that:
There would be no substantive difference between stating ‘a
predetermined portion of a time slot’ than stating, for example,
‘a pre-determined portion of a time slot within the TDMA
protocol’ or ‘a predetermined portion of one of the
predetermined time slots’: the antecedent basis in any case is
the same ‘predetermined time slots,’ and each ‘time slot’ is one
within a TDMA protocol.

Request 8. We disagree.
Claim 1 recites the “first group of mobile radios utilizes a time
division multiple access (TDMA) protocol . . . divided into predetermined
time slots” and “the mobile radios of the second group each comprise: . . .
the transmission detector . . . capable of scanning throughout a
predetermined portion of a time slot for the appearance of transmissions
initiated by other radios,” without specifying the other radios’ (e.g., the first,
second, or other group) transmissions for which the transmission detector is
scanning. Appeal Br. i (Claims App.). Thus, the transmissions initiated by
other radios are not necessarily those from the first group of mobile radios
that use a TDMA protocol to divide a radio channel into “predetermined
time slots” as recited. Id. Moreover, the ’095 patent discusses mobile radios
(e.g., different groups) can use protocols other than TDMA protocol.5 For
example, the ’095 patent discusses using “pure RAT-DMA Aloha system”

5 Notably, independent claims 15 and 26 do not recite specifically a TDMA
protocol. Request 6 n.1.
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or protocol (the ’095 patent, 3:51–54; see id., 1:53–54, 4:24–25) but also
addresses a boat that uses “another protocol . . . that may have allotted slots
for users.” Id., 3:62–64; see id. at 3:2–8 (discussing Group I and II in Figure
1 have “two different protocols”).
Based on the foregoing and when construed in light of the
Specification, claim 1 does not clearly refer to the first group of mobile
radios’ initiated transmissions, which use a TDMA protocol to divide a radio
channel into predetermined time slot, when reciting the transmission
detector’s “scanning” capabilities. An ordinarily skilled artisan thus would
not have necessarily understood that the later-recited “a time slot” in claim 1
recited in the limitation of the “mobile radios of the second group,” each
having a “transmission detector” that “is capable of scanning throughout a
predetermined portion of a time slot for the appearance of transmissions
initiated by other radios,” refers to the previously recited “predetermined
time slots” related to a TDMA protocol as argued. See Request 8–9.
For the above-stated reasons, Appellant fails to demonstrate with
persuasive evidence that there is no substantive difference between in the
claim language “predetermined time slots” and “a time slot” in claim 1.
Even if we were to presume, without deciding, that the recited “a time
slot” refers back to the divided, predetermined time slots concerning a
TDMA protocol in claim 1, we further concluded:
Based on the above constructions and depending on the length
of the recited “predetermined portion of a time slot,” scanning
during a predictable window of time [as claim 1 previously
recited] (e.g., before the end of the window) can be viewed as
narrow in scope than scanning throughout a predetermined
portion of a time slot [as claim 1 now recites]. See Ans. 8–9
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(addressing the “scanning” limitation and stating the new
recitation is viewed as broader in scope than what claim 1
previously recited).

Op. 13 (citing Throughout, Merriam-Webster.com, available at
https://www.merriamwebster.com/dictionary/throughout (defs. 1 and2) (last
visited Jan. 15, 2020)) (first emphasis added).
Stated differently, we indicated that the previously recited
“predictable window of time” and the currently recited “predetermined
portion of a time slot” in claim 1 are not necessarily the same time length
and may include different time lengths. See id. at 13. For instance, we
disagreed that “a predetermined portion of a time slot” as now recited in
claim 1 “is limited to time slots within a TDMA protocol.” Id. at 12. We
further disagreed that the “predetermined portion of a time slot” recitation is
narrower than the previously recited phrase “a predictable window of time,”
explaining “[t]he Specification provides no examples of ’a predictable
window of time,’ but rather just discusses listening for ‘a predetermined
time period.’ The ’095 patent, 1:25-26.” Id. The ’095 patent also does not
discuss how long “a predetermined time period” is. See the ’095 patent,
1:25–26 (merely describing this as “a so called Detection Period”); see id. at
1:41, 1:44, 3:29–30, 3:35 (also describing only a “detection period” or
“detection period of silence”). Similarly, the ’095 patent provides no
examples of the length of “a time slot,” let alone “a predetermined portion of
a time slot.” See id., at 3:64–4:3.
Thus, given the Specification provides little guidance as to length of
the “a time slot” or “predictable window of time,” the scope of (1) the
recited “a time slot” in claim 1 can include, for instance, 8 milliseconds and
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(2) the previously recited “predictable window of time” in claim 1 can
include, for instance, 4 milliseconds, resulting in the newly recited “a time
slot” that is broader in scope (e.g., 8 milliseconds) than the previously
recited “predictable window of time” (e.g., 4 milliseconds). We therefore
disagree with Appellant that the newly recited “a predetermined portion of a
time slot” (Appeal Br. i (Claims App.) is narrower in scope than the
previously recited “predictable window of time” (the ’095 patent, 5:1–2).
See Request 9 (arguing “the Board should . . . hold that ‘a predetermined
portion of a time slot’ is not broader than ‘a predefined time period.6’”); see
also Op. 12–13 (stating “the record does not demonstrate adequately
whether or not ‘a predetermined portion of a time slot’ as now recited in
claim is narrower in scope than the generally recited ‘predictable window of
time’ as previously claimed.)
Appellant further argues that we “incorrectly determined ‘throughout’
is broader than ‘within,’ when ‘throughout’ is clearly narrower based on the
Board’s construction of the terms.” Request 9; id. at 9–10. We are not
persuaded because Appellant fails to consider this phrase in the context of
claim 1. The newly recited phrase in claim 1 further recites “transmission
detector . . . is capable of scanning throughout a predetermined portion of a
time slot for the appearance of transmissions” (Appeal Br. i (Claims App.))
versus the previously recited “transmission detector (8) scanning, within a
predictable window of time, for the appearance of transmissions” (the ’095
patent 5:1–2). Using the above example where “a time slot” includes 8

6 We note claim 1 originally recited “a predictable window of time.” The
’095 patent 5:1–2.
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milliseconds, “scanning throughout a predetermined portion of a time slot”
includes scanning for 6 milliseconds where a “predetermined portion” of the
time slot is three-quarters (e.g., ¾) of the time slot. Similarly, using the
above example where “a predictable window of time” includes 4
milliseconds, “scanning[] within a predictable window of time” includes
scanning for 2 milliseconds (e.g., during the predictable window, such as
before the end of the time as explained in the Opinion (see Op. 13)). As
illustrated above, the newly recited “transmission detector . . . is capable of
scanning throughout a predetermined portion of a time slot for the
appearance of transmissions” (Appeal Br. i (Claims App.)) includes
embodiments that are broader in scope than the previously recited
“transmission detector (8) scanning, within a predictable window of time,
for the appearance of transmissions.” The ’095 patent, 5:1–2.
Appellant further states that “it seems the Board based its conclusion
that the current claim language broadened the function carried out by the
structure, rather than broadening the structure.” Request 8. We reiterate
what the Federal Circuit has stated regarding 35 U.S.C. § 305 and
underscore that:
[the court] ha[s] strictly interpreted § 305 to prohibit any
broadening amendments. The reexamined claim cannot be
broader in any respect, even if it is narrowed in other respects.
Predicate Logic, Inc. v. Distributive Software, Inc., 544 F.3d
1298, 1303 (Fed. Cir. 2008). Therefore, while reexamination
can make certain changes in the patent, such changes are
strictly circumscribed by the original patent’s disclosure and
claim scope.

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Op. 8 (quoting Senju Pharm. Co., Ltd. v. Apotex, Inc., 746 F.3d 1344,
1352–53 (Fed. Cir. 2014)) (first emphasis added). As such, if claim 1 is
functionally broader (e.g., “the transmission detector . . . is capable of
scanning through a predetermined portion of a time slot for the appearance
of transmissions initiated by other radios”) in scope than its previously
recitation as (e.g., “transmission detector (8) scanning, within a predictable
window of time, for appearance of transmission initiated by other
participants”7) as articulated above, this can be viewed as a reexamined
claim that is broader in any aspect than claim 1 of the ’095 patent being
reexamined.
For the above reasons, we did not overlook or misapprehend
Appellant’s points related to the recited “transmission detector” and
conclude, as we did in the Opinion (Op. 13–14), that claim 1’s “the
transmission detector . . . is capable of scanning through a predetermined
portion of a time slot for the appearance of transmissions” (and similar
limitations found in independent claims 15 and 26) is broader in scope than
the recited “transmission detector (8) scanning, within a predictable window
of time, for appearance of transmission” in claim 1 of the ’095 patent being
reexamined.
2. “[M]obile radios”
Regarding the disputed recited “mobile radios” recitation found in
claim 1, we previously found that
the recited ‘two groups of mobile radios’ in claim 1, as well as
commensurate limitations (Appeal Br. i-ii (Claims App.)) in
independent claims 15 and 26, broaden aspects of the claims

7 We discuss “radios” and “participants” in the next part of this opinion.
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over the previously recited ‘several moving participants . . . that
are each equipped with a communication device’ in original
claim 1 (the '095 patent 4:57–59).

Op. 17.
In the Request, Appellant argues we incorrectly concluded the term
“mobile radios” is broader than the previously-recited “several moving
participants . . . that are each equipped with a communication device”
because “the term ‘mobile radios’ . . . indicate[s] more than the
communication device,” including that the “devices are used in connection
with various ‘participants.’” Request 10; id. at 10–11 (citing the ’095 patent
1:61–63, 2:51–56). Appellant further contends that “if not expressly a
limitation of the claims, ‘moving participants’ are necessarily integrated
with mobile radios” based on the definition of “mobile radio” presented in
the Opinion that includes that the mobile radio “is installed in a vessel,
vehicle, or airplane.” Id. at 11.
We are not persuaded by Appellant’s arguments. First, the term
“mobile radios” as recited in claim 1 does not include more than a
communication device (e.g., 10) when considered in light of the ’095
patent’s disclosure. As explained in the Opinion and consistent with the
’095 patent, “moving participants” are described as elements 20–25 (e.g.,
boats and ships). Op. 15–16 (citing the ’095 patent 1:61–62, 2:48–50,
2:52–54, 2:66–67, Figs. 1–2). On the other hand, “mobile radios” are “like
communication device 10 described in the Specification” (id. at 17), which
performs “functions separate from the boat or ship and is intended to be
mounted on a moveable object (e.g., a boat).” Id. at 16 (citing the ’095
patent 1:61–63, 2:48–54, 2:51–52, Fig. 3).
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We thus determined:
the newly recited “mobile radios” (Appeal Br. i (Claims App.))
encompass communication devices, like communication device
10 . . . , whereas the previously recited “moving participants[,] .
. . each equipped with a communication device[,]”
encompassed both vessels and communication devices (the '095
patent 4:57-59). That is, the presently recited “mobile radios”
now omits the previously recited “moving participants,” which
includes ships, boats, and other objects, and only encompasses
the previously recited “communication device.” Compare
Appeal Br. i (Claims App.), with the '095 patent 4:57-59.

Id. at 17. In other words, we failed to see how omitting the “moving
participants” from claim 1 did not result in broadening claim 1’s scope.
In this regard, Appellants contends that “[m]obile radios are not used
in isolation” and the Specification “reflects that the recited communication
devices are used in connection with various ‘participants.’” Request 10
(citing the ’095 patent 1:61–63, 2:51–65). Appellant also asserts the
definition of “mobile radio” that we presented and relied upon in the
Opinion supports Appellant’s position that moving participants are
necessarily integrated with mobile radios. Id. at 10–11. These arguments
are unavailing.
Although the Specification informs our construction of the claims and
may describe a communication device intended to be mounted on
participants, such as a buoy (see, e.g., the ’095 patent 1:59–63), we decline
to import a described embodiment from the ’095 patent into claim 1. See In
re Trans Texas Holdings Corp., 498 F.3d 1290, 1298–99 (Fed. Cir. 2007)
(indicating that Phillips v. AWH Corp., 415 F.3d 1303, 1323 (Fed. Cir.
2005) (en banc), found that “it is improper to ‘confin[e] the claims to th[e]
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embodiments’ found in the specification, as Trans Texas asks us to do.”);
see also Personalized Media Commc’ns, LLC v. Apple Inc., 952 F.3d 1336,
1343 (Fed. Cir. 2020) (noting “a particular embodiment appearing in the
written description may not be read into a claim when the claim language is
broader than the embodiment.”). Additionally, the Opinion explained the
described moving participants (e.g., elements 20–25) in the ’095 patent can
include communication devices (e.g., 10). Op. 16 (citing the ’095 patent
2:51–52). But, the converse—a communication device (e.g., a mobile radio)
includes a moving participant—does not necessarily follow from the ’905
patent’s discussion. See the ’095 patent 1:59–63, 2:51–65.
The technical definition provided in the Opinion for “mobile radio”
(i.e., “[r]adio communication in which the transmitter is installed in a vessel,
vehicle, or airplane and can be operated while in motion”8) also does not
support Appellant’s argument that recited “mobile radios” necessarily
include “moving participants” (e.g., vessels). See Request 10–11. Instead,
as the Opinion discussed, the ’095 patent’s Specification and the definition
support that the recited “mobile radios” are separate components from the
described moving participants because they are radios “that communicate[]
using a transmitter and [are] installed in a vessel, vehicle, or airplane.” Op.
16; see id. at 16–17. We therefore are not persuaded that the term “mobile
radios” in claim 1 include more than the communication devices discussed
in the ’095 patent or that the term implicitly claims moving participants,

8 Mobile Radio, MCGRAW-HILL DICTIONARY OF COMPUTING &
COMMUNICATIONS 240 (2003), cited in Op. 16.
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each having a communication device as claim 1 of the ’095 patent being
reexamined recites.
Additionally, in the Opinion, we stated that Gemstar-TV Guide Int’l,
Inc. v. ITC, 383 F.3d 1352, 1368 (Fed. Cir. 2004) determined the phrase
“moving” includes “that is marked by or capable of movement” and thus, the
phrase “moving participants” in claim 1 of the ’095 patent “may be
construed to include those participants capable of movement, and thus have
a similar scope to the term ‘mobile.’” Op. 15 (emphasis added). Even so,
Gemstar-TV also found “moving” to mean “that is not fixed or stationary”
(Gemstar-TV, 383 F.3d at 1368), which unlike one definition of “mobile”,9
only includes participants that are not fixed or stationary. From this
perspective, and to the extent the phrase “moving participants” in claim 1 of
the ’095 patent is limited to latter meaning, we further agree with the
Examiner the recitation “mobile radios” (i.e., includes both movable and
stationary objects) in the current claims is broader in scope than the
previously recited “moving participants” (e.g., includes only participants that
are not fixed or stationary). See May 4, 2016 Final Act. 3; see also Jan. 17,
2019 Final Act. 6–7 (citing the ’095 patent 1:59–63); Ans. 15–16 (citing the
’095 patent 1:59–63).
Appellant further contends that (1) the claims are not method claims,
(2) removing “participants” from the claims make clear that the claims do
not recite users or an impermissible “mixed claim type,” and (3) “the claims

9 As indicated in the Opinion (Op. 15 n.8), Appellant states Oxford English
Dictionary defines “mobile” as “able to move or be moved freely or easily.”
Appeal Br. 21.
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should not be construed in such a matter [sic].” Request 11 (citing Modine
Mfg. v U.S. Int’l Trade Comm’n, 75 F.3d 1545, 1557 (Fed. Cir. 1996))
(quoting “When claims are amenable to more than one construction, they
should when reasonably possible be interpreted so as to preserve their
validity.”). We are not persuaded.
As explained above, the previously recited “participants” have not
been construed to include users of the claimed system, but rather to include
boats, ships, masts, and buoys consistent with the ’095 patent’s
Specification. See also Op. 15–16 (citing the ’095 patent 1:61–63, 2:52–54).
Thus, we do not view the scope of the “participants” in claim 1 of the ’095
patent as requiring users to the use the system.10 Nor do we see the need to
remove the term “participants” from the ’095 patent’s claims to clarify that
they do not recite a user or impermissibly mix statutory claim categories.
Also, claim 1 currently recites “[a] radio communication system
comprised of two groups or mobile radios,” and further recites structural and
functional details about “the first group of mobile radios” and “the mobile
radios of the second group.” Appeal Br. i (Claims App.) (emphases added).
We do not interpret this claim, or current independent claims 15 and 26 (see
id. at i–ii (Claims App.) for that matter, as method claims or mixed claim
types.
Lastly, “[i]n a reexamination proceeding, . . . there is no presumption
of validity and the ‘focus’ of the reexamination ‘returns essentially to that

10 See IPXL Holdings, L.L.C. v. Amazon.com, Inc., 430 F.3d 1377, 1384
(Fed. Cir. 2005); see also HTC Corp. v. IPCom GmbH & Co., KG, 667 F.3d
1270, 1277 (Fed. Cir. 2012) (discussing IPXL Holdings).
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present in an initial examination,’” Ethicon, Inc. v. Quigg, 849 F.2d 1422,
1427 (Fed. Cir. 1988) (quoting In re Etter, 756 F.2d 852, 857 (Fed. Cir.
1985)); see also In re Swanson, 540 F.3d 1368, 1377–78 (Fed. Cir. 2008)
(indicating reexaminations are conducted according to initial examination
procedures and claims are to be given their broadest reasonable
interpretation consistent with the specification). As such, any concerns
raised in Modine Manufacturing, 75 F.3d 1545, 1557, that Appellant may
have related to preserving the claims’ validity in the ’095 patent do not hold
in this reexamination proceeding.
For the above reasons, we did not overlook or misapprehend
Appellant’s points related the recited “mobile radios” presented in the
briefing (see Request 6, 10–11) and conclude, as we did in the previous
Opinion (Op. 14–17), that claim 1’s “mobile radios” are broader in scope
than the previously recited “moving participants . . . that are each equipped
with a communication device.”
Request to Designate the § 305 Rejection a New Ground of Rejection
Appellant argues we relied upon “new factual findings that change the
thrust of the rejection originally proffered by the examiner.” Request 3; see
id. at 2–5, 10 n.2, 11. Upon further consideration in light of these
circumstances, we designate the rejection under 35 U.S.C. § 305 as a new
ground to afford Appellant the opportunity to respond fully to the rejection.
We have considered the arguments raised by Appellant in the Request
for Rehearing and grant the Request to the extent indicated. Based on the
record, we are still of the view that claims 1, 15, and 24–32 enlarge the
scope of the claims of the ’095 patent being examined under 35 U.S.C.
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§ 305.11 We, however, designate this rejection as a new ground under 37
C.F.R. § 41.50(b).
Section 41.50(b) provides “[a] new ground of rejection pursuant to
this paragraph shall not be considered final for judicial review.” Section
41.50(b) also provides:
When the Board enters such a non-final decision, the appellant,
within two months from the date of the decision, must exercise
one of the following two options with respect to the new ground
of rejection to avoid termination of the appeal as to the rejected
claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the prosecution
will be remanded to the examiner. The new ground of rejection
is binding upon the examiner unless an amendment or new
Evidence not previously of Record is made which, in the
opinion of the examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner reject the
claims, appellant may again appeal to the Board pursuant to this
subpart.
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.

11 This “decision on the request for rehearing is deemed to incorporate the
earlier opinion reflecting its decision for appeal, except for those portions
specifically withdrawn on rehearing[.]” 37 C.F.R. 41.52(a)(1).
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Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure § 1214.01.

REHEARING GRANTED
37 C.F.R. § 41.50(b)