NOTE: This disposition is nonprecedential.

 

United States Court of Appeals 

for the Federal Circuit ______________________ 

VIRNETX INC.,

Appellant

v.

APPLE INC.,

Appellee

KATHERINE K. VIDAL, UNDER SECRETARY OF 

COMMERCE FOR INTELLECTUAL PROPERTY 

AND DIRECTOR OF THE UNITED STATES 

PATENT AND TRADEMARK OFFICE,

Intervenor

______________________ 

2022-1523

______________________ 

Appeal from the United States Patent and Trademark 

Office, Patent Trial and Appeal Board in No. 95/001,682.

______________________ 

Decided: October 20, 2023

______________________ 

IGOR VICTOR TIMOFEYEV, Paul Hastings LLP, Washington, DC, argued for appellant. Also represented by 

STEPHEN BLAKE KINNAIRD, NAVEEN MODI, JOSEPH PALYS,

DANIEL ZEILBERGER. 

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2 VIRNETX INC. v. APPLE INC. 

 JOSHUA JOHN FOUGERE, Sidley Austin LLP, Washington, DC, argued for appellee. Also represented by THOMAS 

ANTHONY BROUGHAN, III, JEFFREY PAUL KUSHAN; SCOTT 

BORDER, Winston & Strawn LLP, Washington, DC. 

 SARAH E. CRAVEN, Office of the Solicitor, United States 

Patent and Trademark Office, Alexandria, VA, argued for 

intervenor. Also represented by THOMAS W. KRAUSE,

MONICA BARNES LATEEF, AMY J. NELSON, FARHEENA 

YASMEEN RASHEED. 

 ______________________ 

Before LOURIE, BRYSON, and CHEN, Circuit Judges. 

BRYSON, Circuit Judge.

In this appeal from an inter partes reexamination 

proceeding before the Patent Trial and Appeal Board, the 

appellant VirnetX Inc. challenges the Board’s decision 

holding that several claims of VirnetX’s U.S. Patent No. 

6,502,135 (“the ’135 patent”) are invalid. We affirm. 

I 

The ’135 patent is directed to a system and method for 

communicating over the Internet and creating a virtual 

private network following a domain-name server look-up 

function.1 Claim 18 of the ’135 patent, which is the 

principal focus of VirnetX’s appeal, provides as follows:

18. A method of transparently creating a virtual 

private network (VPN) between a client computer 

and a target computer, comprising the steps of 

(1) generating from the client computer a Domain 

Name Service (DNS) request that requests an IP 

1 A domain name server uses a look-up table to correlate human-readable domain names to IP addresses and 

returns the IP address to the user.

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VIRNETX INC. v. APPLE INC. 3

address corresponding to a domain name associated with the target computer; 

(2) determining whether the DNS request transmitted in step (1) is requesting access to a secure 

web site; and 

(3) in response to determining that the DNS request in step (2) is requesting access to a secure 

target web site, automatically initiating the VPN 

between the client computer and the target computer, wherein:

steps (2) and (3) are performed at a DNS server separate from the client computer, and step (3) comprises the step of, prior to automatically initiating 

the VPN between the client computer and the target computer, determining whether the client computer is authorized to resolve addresses of non 

secure target computers and, if not so authorized, 

returning an error from the DNS request.

At the conclusion of the reexamination, the examiner 

found claim 18, along with several other claims of the ’135

patent, to be invalid for anticipation and obviousness over 

several references. The Board reversed some of the examiner’s rejections but affirmed the rejections of claims 10–14 

and 17–18 on various grounds.

First, the Board upheld the examiner’s rejection of 

claim 18 for obviousness over a combination of three references—Beser, Kent, and Blum.2 Second, the Board upheld 

the examiner’s rejection of claim 18 for anticipation based 

2 The Beser reference is U.S. Patent No. 6,496,867; 

the Kent reference is a November 1998 paper entitled “Security Architecture for the Internet Protocol”; and the 

Blum reference is U.S. Patent No. 6,182,141. 

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4 VIRNETX INC. v. APPLE INC. 

on a reference the Board referred to as BinGO.3 Third, the 

Board upheld the examiner’s rejection of claims 10 and 12 

as anticipated by BinGO. Fourth, the Board upheld the 

examiner’s rejection of claim 11 as obvious over a combination of BinGO and a reference the Board referred to as 

Reed.4 The Board also affirmed the examiner’s rejection of 

claims 13, 14, and 17, but VirnetX does not challenge the 

Board’s rulings on those claims. 

We affirm the Board’s decision on appeal with respect 

to claims 10, 12, and 18 based on BinGO and, with respect 

to claim 11, based on the combination of BinGO and Reed. 

In view of our decisions regarding BinGO and the combination of BinGO and Reed, we do not find it necessary to address the Board’s reliance on the combination of Beser, 

Kent, and Blum.5

II

A 

At the outset of its discussion of BinGO, VirnetX complains that the Board “recrafted” claim 18, “ignored the 

claim language,” and failed to address the limitations set 

forth in the claim. In particular, VirnetX argues that the 

Board misconstrued the “wherein” clause of claim 18, omitting the “prior to initiating the VPN” limitation and 

3 The BinGO reference consists of the BinGO! User’s 

Guide and the BinGO! Extended Feature Reference. 4 The Reed reference is a paper by Michael G. Reed, 

Paul F. Syverson, and David M. Goldschlag entitled Proxies for Anonymous Routing, presented at the 12th Annual 

Computer Security Applications Conference in December 

1996.

5 We also find it unnecessary to address the Board’s 

reliance on collateral estoppel with respect to issues concerning the combination of Beser and Kent. See J.A. 27–

32.

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VIRNETX INC. v. APPLE INC. 5

mischaracterizing the “determining” limitation. As such, 

VirnetX argues, the Board analyzed only its own version of 

claim 18, not the actual language of the claim. VirnetX Br. 

30.

We disagree with VirnetX’s characterization of the 

Board’s treatment of claim 18. To be sure, claim 18 is written in a manner that makes it hard to understand, and the 

Board confessed that it had difficulty in doing so, especially 

in its effort to map claim 18 on any portion of the ’135 written description.6 

VirnetX’s quarrel with the Board’s treatment of claim 

18 relates to the Board’s statement that it needed to decide 

“whether, as a general matter, the Beser, Kent, and Blum 

references would have rendered obvious determining 

whether a client has permission to access a web site and if 

not, returning an error message.” J.A. 31. That general 

characterization of the thrust of claim 18 does not indicate 

that the Board misunderstood the limitations of the claim, 

and particularly the “wherein” clause on which VirnetX focuses. In its discussion of obviousness, the Board accurately characterized that clause as requiring a 

determination of “whether a client is authorized to access 

a non secure target computer and returning an error if the 

6 We agree with the Board that claim 18, as drafted, 

is not easy to understand. Moreover, the Board was correct 

in stating that the written description of the ’135 patent 

appears to contain nothing that describes the invention recited in claim 18. VirnetX seems to concede as much. As 

support for the claim, VirnetX points not to the written description, but to a canceled claim that was part of the initial 

application that ultimately matured into the ’135 patent. 

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6 VIRNETX INC. v. APPLE INC. 

client is not authorized to access a non-secure target.” J.A. 

32.7

Later in its decision, when the Board discussed 

whether BinGO anticipates claim 18, the Board again accurately characterized the requirements of claim 18. In 

that portion of its decision, the Board walked through the 

limitations of claim 18, pointing out how BinGO satisfied 

each of them. The Board explained that if a user enters a 

domain name server request for a website and the destination is unknown to the BinGO! Router, the BinGO! Router 

will forward the request to a domain name server for domain name resolution, satisfying steps (1) and (2) of claim 

18. J.A. 44–45. If the request from the client computer is 

for a secure target computer, the Board added, the BinGO! 

Router sets up a virtual private network consistent with 

step (3) of the claimed method. J.A. 45.

The Board then examined the last limitation of claim 

18, which comprises the step of “determining whether the 

client computer is authorized to resolve addresses of non 

secure target computers and, if not so authorized, 

returning an error from the DNS request.” As to that 

limitation, the Board found that BinGO “discloses 

authentication of the initiating partner, which would 

include situations where the requested web-site is nonsecure” and that a person of ordinary skill in the art would 

“have immediately understood that such an authentication 

failure would result in an error message being returned.” 

7 VirtnetX’s contention that the Board ignored the 

“prior to automatically initiating the VPN” component of 

the “wherein” limitation overlooks the examiner’s finding, 

upheld by the Board, that the BinGO! Router “discloses requiring authentication before establishing connections to a 

remote server, by disclosing checking incoming data to decide whether the connection should be allowed.” J.A. 37–

38. 

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VIRNETX INC. v. APPLE INC. 7

Id. Throughout that analysis, contrary to VirnetX’s 

contention, the Board neither recrafted claim 18 nor 

misconstrued its limitations. 

B 

VirnetX raises two principal contentions regarding the 

Board’s reliance on BinGO to anticipate claim 18. First,

VirnetX notes that the Board’s anticipation analysis was 

based not only on the instruction manual known as the 

BinGO! User Guide, but also on the supplemental 

instruction manual known as the BinGO! Extended 

Feature Reference. VirnetX contends that the Board’s 

reliance on two separate references disqualifies 

anticipation as an invalidating theory, because 

anticipation requires that all the limitations of a 

challenged claim be found in a single reference. Second, 

VirnetX argues that the Board committed error when it 

found that a person of ordinary skill in the art would have 

understood that an error message would be returned if the 

client computer is authorized to resolve addresses of nonsecure target computers. VirnetX contends that 

anticipation cannot rest on a finding that a person of 

ordinary skill in the art would have envisaged a limitation 

that is, in fact, missing from the purportedly anticipating 

reference. Neither argument is persuasive. 

1 

As for the argument that the BinGO! User Guide and 

the BinGO! Extended Feature Reference are separate 

references and that they cannot be combined for purposes 

of anticipation, the Board found that the User Guide 

incorporates the Extended Feature Reference and thus the 

two references must be treated as one for anticipation 

purposes. That finding is consistent with the law of 

anticipation. See Advanced Display Sys., Inc. v. Kent State 

Univ., 212 F.3d 1272, 1282 (Fed. Cir. 2000) (material in a 

second document is considered incorporated by reference in 

a host document if the context “makes clear that the 

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8 VIRNETX INC. v. APPLE INC. 

material is effectively part of the host document as if it 

were explicitly contained therein”); see also Callaway Golf 

Co. v. Acushnet Co., 576 F.3d 1331, 1346 (Fed. Cir. 2019)

(incorporation by reference requires that the host 

document “contain language clearly identifying the subject 

matter which is incorporated and where it is to be found”) 

(cleaned up). Whether and to what extent material has 

been incorporated by reference is a question of law that we 

review de novo. Advanced Display, 212 F.3d at 1283; 

Callaway Golf, 576 F.3d at 1346. 

The BinGO! User Guide repeatedly cites to the BinGO! 

Extended Feature Reference, instructing the reader to 

consult the Extended Feature Reference for information 

about how to configure the virtual private network of the 

BinGO! Router. The evidence shows that the two 

documents were “collectively distributed as a single 

reference document,” and that the User Guide directs users 

to consult specific parts of the Extended Feature Reference 

to implement the VPN features of the BinGO! Router. See 

J.A. 6298 (citing portions of the User Guide). The two 

documents thus serve in effect as two volumes of a single 

instruction manual for using the BinGO system. As such, 

the Board was correct in holding that the BinGO! User 

Guide incorporates the BinGO! Extended Feature 

Reference and that the two references can be considered as 

one for purposes of anticipation.

2 

We also reject VirnetX’s argument that the Board 

improperly found anticipation given its acknowledgement 

that “BinGO does not expressly disclose returning an error 

message” as required by claim 18. J.A. 45. This court has 

made clear that a reference can anticipate, even when it 

does not expressly recite a claimed limitation, if a person of 

ordinary skill in the art “would reasonably understand or 

infer from the prior art reference’s teaching that every 

claim [limitation] was disclosed in that single reference.”

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VIRNETX INC. v. APPLE INC. 9

Genentech, Inc. v. Hospira, Inc., 946 F.3d 1333, 1340–41 

(Fed. Cir. 2020) (quoting CRFD Research, Inc. v. Matal, 876 

F.3d 1330, 1338 (Fed. Cir. 2017)). On the other hand, a 

reference that is missing a limitation does not anticipate

just because “a skilled artisan would ‘at once envisage’ the 

missing limitation.” Id. at 1340 (quoting Nidec Motor Corp. 

v. Zhongshan Board Ocean Motor Co., 851 F.3d 1270, 

1274–75 (Fed. Cir. 2017). The core inquiry is whether a 

person of ordinary skill in the art would understand the 

reference to disclose the limitation in question, rather than 

merely “envisage” a limitation that is in fact missing from 

the reference. 

In this case, the Board concluded that one of ordinary 

skill in the art “would have immediately understood” that 

an authentication failure in the BinGO system “would 

result in an error message being returned.” J.A. 45 (citing 

Apple’s Comments Pursuant to 37 C.F.R. § 1.947, J.A. 

6299). That is, the limitation in question—returning an 

error message upon determining that the client computer 

is not permitted to resolve addresses of non secure target 

computers—would be understood to be disclosed by the 

BinGO reference, even though not expressly stated as such 

in the reference itself. That finding is supported by 

substantial evidence and is sufficient to satisfy the 

requirements of anticipation under Genentech. 

3 

Apart from those two principal challenges to the 

Board’s use of BinGO as an anticipating reference, VirnetX 

asserts in passing that BinGO “operates differently than 

claim 18.” VirnetX Br. 32. The evidence on which VirnetX 

relies in making that argument consists of statements from 

its expert’s declaration to the effect that BinGO does not 

disclose “determining if the user’s PC is authorized to 

resolve addresses not located” on the network and does not 

disclose “performing such a determination with respect to 

‘non secure target computers.’” Id. (citing J.A. 4122–23). 

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10 VIRNETX INC. v. APPLE INC. 

Apple offered contrary evidence, which the examiner 

credited, and the Board upheld the examiner’s findings on 

that issue. J.A. 44–45. In particular, Apple offered 

evidence that in one configuration BinGO requires 

authentication before the DNS request is resolved, without 

regard to whether the request specifies a secure or nonsecure destination; Apple’s evidence also showed that 

BinGO discloses routers that establish and maintain 

connections to multiple networks based on the destination 

specified in a DNS request. See J.A. 351–52, 6296–97; 

Right of Appeal Notice pp. 25–26 (Nov. 6, 2019). That is, 

because BinGO discloses authentication based on target 

computer security, a person of ordinary skill in the art

would understand that BinGO discloses determining 

whether a user’s computer is authorized to resolve 

addresses not located on the network, including those of 

non secure target computers. We conclude that substantial 

evidence supports the Board’s determination on that issue. 

For those reasons, we sustain the Board’s ruling that 

BinGO anticipates claim 18 of the ’135 patent. Because we 

have upheld the use of the BinGO! User Guide and the 

BinGO! Extended Feature Reference as a single reference, 

and because VirnetX has not challenged the rejections of 

claims 10 and 12 on other grounds in this appeal, we 

uphold those rejections as well.

III

VirnetX makes a brief reference to claim 11, arguing 

that the obviousness rejection of claim 11 based on BinGO 

and Reed “fails for the same reason” as the rejections of 

claims 10, 12, and 18 based on BinGO. VirnetX Br. 36. 

With respect to claim 11, VirnetX makes the same 

argument that the two BinGO references cannot be 

considered as one. Because that argument has been 

rejected for anticipation purposes, it fails a fortiori in the 

obviousness context.

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VIRNETX INC. v. APPLE INC. 11

IV 

A 

VirnetX’s final point on appeal relates to the way the 

Patent and Trademark Office (“PTO”) handled VirnetX’s 

request for rehearing of the Board’s decision. In its sixpage request for rehearing, VirnetX sought reconsideration 

of various aspects of the Board’s ruling, including a single

paragraph devoted to the Board’s reliance on BinGO as an 

anticipating reference for claim 18.

In the concluding paragraph of the request for 

rehearing, VirnetX stated that “reconsideration of all of 

VirnetX’s prior arguments, which VirnetX continues to 

maintain, is also appropriate here given imminent 

guidance from the Supreme Court regarding the proper 

remedy for decisions rendered by Board panels whose 

appointments did not comport with the requirements of the 

Appointments Clause.” J.A. 7055. Citing this court’s 

decision in Arthrex, Inc. v. Smith & Nephew, Inc., 941 F.3d 

1320 (Fed. Cir. 2019), VirnetX noted that the court had 

held that the Board’s structure “did not comply with the 

constitutional requirements because [Board judges] were 

principal officers of the United States not appointed in 

conformity with the Appointments Clause’s provisions.” 

J.A. 7055. VirnetX then pointed out that the Supreme 

Court “may agree that the remedy [discussed by the 

Federal Circuit in its Arthrex decision] did not cure the 

Appointments Clause violation and/or may order a 

different remedy.” Id. at 7056. In its conclusion, VirnetX 

stated that “whatever remedy is provided by the Supreme 

Court should be provided in the present examination.” Id.

A week after VirnetX filed its request for rehearing, the 

Supreme Court issued its decision in Arthrex, in which it 

agreed with the Federal Circuit that the unreviewable 

authority wielded by Board judges in inter partes review 

proceedings is incompatible with the Appointments 

Clause, but held that an appropriate remedy was to render 

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12 VIRNETX INC. v. APPLE INC. 

inoperative the statutory restrictions that prevented the 

Director of the PTO from reviewing final decisions issued

by Board judges during such proceedings. United States v. 

Arthrex, Inc., 141 S. Ct. 1970 (2021).

Considering VirnetX’s express reference to the 

challenge to the constitutionality of the Board’s structure 

and VirnetX’s request that it be accorded whatever remedy 

the Supreme Court provided in its Arthrex decision, the 

Board treated VirnetX’s request for rehearing as a request 

for Director review. The Commissioner of Patents, Andrew 

Hirshfeld, acting on behalf of the Director, then reviewed 

the request and on January 10, 2022, denied it. J.A. 55–

57. 

VirnetX now contends that it was improper for the 

Board to treat the request for rehearing as a request for 

Director review, and that the Board should itself have 

ruled on the request for rehearing. As a result, VirnetX 

argues, this court should remand the case to the Board for 

a further review of the request for rehearing.

Shortly after the Supreme Court’s decision in Arthrex, 

the PTO issued interim guidance for Director review of 

Board decisions in inter partes review or post-grant review 

cases. The guidance explained that in seeking rehearing, 

a party must choose between asking for rehearing from the 

Board panel or from the Director and would not be 

permitted to request both. See Arthrex Q&As, A3, found at 

https://uspto.gov/patents/patent-trial-and-appeal-board/ 

procedures/arthrex-qas (“[A] party may request either 

Director review or rehearing by the original PTAB panel, 

but may not request both.”). Following the issuance of that 

guidance, VirnetX did not specify whether it was seeking 

Director review, Board review, or both.

B 

VirnetX raises several arguments regarding the 

Board’s handling of the request for rehearing. First, 

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VIRNETX INC. v. APPLE INC. 13

VirnetX argues that the Board’s failure to render a decision 

itself on the request for rehearing violated 37 C.F.R. 

§ 41.79(d), which provides that the Board “shall render a 

decision on the request for rehearing.” Second, VirnetX 

points to the requirement of the Administrative Procedure 

Act (“APA”) that an agency “fully and particularly set out 

the bases upon which it reached [its] decision,” Power 

Integrations, Inc. v. Lee, 797 F.3d 1318, 1323 (Fed. Cir. 

2015), and argues that Commissioner Hirshfeld’s denial 

order did not adequately explain the basis for his denial of 

the request for rehearing. VirnetX Br. 38. Third, VirnetX 

contends that it is unclear whether Commissioner 

Hirshfeld reviewed the request for rehearing on the merits 

rather than simply concluding that Director review is 

unavailable in inter partes reexamination proceedings. 

VirnetX Br. 41–42.8

As Apple points out, the subtext of VirnetX’s complaint 

seems to be that VirnetX should have been permitted to 

seek both rehearing by the Board and Director review, 

rather than having to elect one form of review or the other. 

In the interim guidance provided by the PTO following the 

Supreme Court’s decision in Arthrex, however, the PTO 

made clear that a party could choose which form of review 

to request, but would not be entitled to have a petition for 

rehearing reviewed by both the Board and the Director. 

While it is true that the PTO issued its interim guidance 

8 VirnetX’s fourth argument is that Commissioner 

Hirshfeld was not properly appointed as a principal officer 

of the United States and thus was not qualified to act on 

behalf of the Director in conducting Director review in this 

case. Br. 43–44. VirnetX acknowledges that its argument 

on that issue is foreclosed by this court’s decision in Arthrex, Inc. v. Smith & Nephew, Inc., 35 F.4th 1328 (Fed. 

Cir. 2022), and is being raised simply to preserve the issue 

for en banc or Supreme Court review. 

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14 VIRNETX INC. v. APPLE INC. 

after VirnetX filed its request for rehearing, VirnetX could 

have made clear, following the issuance of that interim 

guidance, that it wished to have the Board rule on its 

request for rehearing rather than seeking Director review, 

but it did not.

Contrary to the implications of VirnetX’s position, we 

do not read section 41.79(d) of the PTO’s regulations to 

require the PTO to grant the right to two successive 

reviews of a request for rehearing, one by the Board and 

the other by the Director. VirnetX cites no authority 

indicating that such a two-stage review process is required. 

Nor is the PTO’s position that a party seeking rehearing 

must choose one or the other of those paths at odds with

the text of section 41.79(d), because the PTO could 

reasonably conclude that a party that elects Director 

review has waived its right to rehearing by the Board. 

As for VirnetX’s second argument, neither the PTO 

regulations (including the PTO’s interim guidance) nor the 

APA required Commissioner Hirshfeld or the Board to 

provide an explanation for his decision to deny VirnetX’s 

request for rehearing. The regulation and the interim 

guidance do not require such an explanation,9 and the 

pertinent portion of the APA, 5 U.S.C. § 555(e), likewise 

does not require agencies to explain rehearing denials. 

Rather, the statute expressly states that the requirement 

of an explanation for agency action does not apply to an 

agency decision “affirming a prior denial.” See ICC v. Bhd. 

9 The regulation provides that the agency’s decision 

on the request for rehearing “is deemed to incorporate the 

earlier opinion reflecting its decision for appeal, except for 

those portions specifically withdrawn . . . .” 37 C.F.R. 

§ 41.79(d). That provision makes it clear that if the agency 

does not alter the initial decision on rehearing, the explanation given in the initial decision will serve as the 

agency’s final word on the matter. 

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VIRNETX INC. v. APPLE INC. 15

of Locomotive Eng’rs, 482 U.S. 270, 283 (1987) (“The vast 

majority of denials of reconsideration . . . are made without 

statement of reasons, since 5 U.S.C. § 555(e) exempts from 

the normal APA requirement of ‘a brief statement of the 

grounds for denial’ agency action that consists of ‘affirming 

a prior denial.’”). 

There is also no force to VirnetX’s third argument—

that Commissioner Hirshfeld’s decision following Director 

review may not have been based on the merits. If VirnetX 

can be viewed as having elected Director review, it must be 

regarded as having accepted the possibility that the 

Commissioner might decide the request for rehearing on 

procedural grounds rather than on the merits. 

Even assuming the PTO erred in treating VirnetX’s 

request for rehearing as a request for Director review, we 

conclude that the error was harmless. The bulk of 

VirnetX’s request for review is addressed to issues not 

germane to VirnetX’s appeal in this case. The only portion 

of the request for review that is pertinent here is a single 

paragraph dealing with claim 18. J.A. 7054–55. In that 

paragraph, VirnetX argued that the Board erred in holding 

that the error message limitation could be found in BinGO 

because a person of ordinary skill in the art would have 

immediately understood from the BinGO reference that an 

authentication failure would result in an error message 

being returned. J.A. 7055. VirnetX does not challenge the 

Board’s factual finding on that issue, and we have held 

above that the Board’s legal conclusion flowing from that 

finding was consistent with our decision in Genentech. It 

is therefore highly unlikely that the Board’s decision on the 

request for review would have resulted in relief based on 

that claim of error.

The other ground on which VirnetX challenged the 

Board’s ruling on claim 18 was VirnetX’s assertion, without 

elaboration, that the Board “misapprehended” VirnetX’s 

argument that BinGO does not disclose limitation (3) of 

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16 VIRNETX INC. v. APPLE INC. 

claim 18 and the following “wherein” clause of the claim. 

In our discussion of the Board’s interpretation of claim 18 

above, we analyzed and rejected VirnetX’s argument that 

the Board misunderstood claim 18. For the same reasons, 

there is no substantial likelihood that the arguments made 

in VirnetX’s request for rehearing would have led the 

Board to alter its ruling as to claim 18. We therefore 

conclude that the PTO’s decision to direct VirnetX’s request 

for rehearing to Commissioner Hirshfeld rather than the 

Board was, at most, harmless error, and that a remand for 

Board consideration of the request is not required.

AFFIRMED

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