UNlTED S TATES P ATENT AND TRADEMARK O FFICE
`
`UNITED STATES DEPARTMENT Ol'COMMERC~;
`Uoitrd S tates P:atenl and Tr:id emork Orner
`Addrw: COMMISSIONER FOR PATliNTS
`P.0 . llOk 1<50
`Alcuncria, Virginaa 22lt)•l4SO
`www.uspto.gov
`
`APPLICATIOJII NO.
`
`95/001,482
`
`FILING DATE
`
`11/11/2010
`
`FIRST NAMED INVENTOR
`
`A TIORNEY DOCKET "10.
`
`CONFIR.~1A TION NO.
`
`7,397,431
`
`3008.006REXO
`
`610 1
`
`26111
`7S90
`12/0112011
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`I IOONEW YORK AVENUE, N.W.
`WASHINGTON, DC 20005
`
`EXAMINER
`
`NGUYEN. 1. INH M
`
`ART UNIT
`
`PAPER NUMB ER
`
`3992
`
`MAIL DATE
`
`12/01/201 1
`
`DELIVERY MODE
`
`PAPER
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`The ti me period for reply, if aoy, is set in the attached communication.
`
`PTOL-90A (Rev. 04/07)
`
`ZTE v Fractus
`IPR2018-01461
`
`ZTE
`Exhibit 1022.0001
`
`

`

`00 NOT USE IN PALM PRINTER
`
`(THIRO PARTY REQUESTER'S CORRESPONDENCE AOORESS)
`
`r·-· NOVAK DRUCE & QUIGG LLP
`
`·-····-·,
`I
`
`1000 LOUISIANA STREET
`
`53RD FLOOR
`
`HOUSTON, TX 77002
`
`Conmisstoner for Patents
`Unllad Slates Patent and Tridematl< Office
`P .o. Bo x 1450
`Alexandria, VA 22313-1450
`'WINIINltlfpll0 ,00.
`
`MAILED
`
`OtC O 1 ?011
`CENTRAL REEXAMINATION UNIT
`
`Transmittal of Communication to Third Party Requester
`Inter Partes Reexamination
`
`REEXAMINATION CONTROL NUMBER 95/001.482 . .,.. °'s\ oooS8<o + <l.5i 00\ 1-\C\'1
`
`PATENT NUMBER 7397431.
`
`TECHNOLOGY CENTER 3999.
`
`ART UNIT 3992.
`
`Enclosed is a copy of the latest communication from the United States Patent and
`Trademark Office in the above-identified reexamination proceeding. 37 CFR 1.903.
`
`Prior to the filing of a Notice of Appeal, each time the patent owner responds to this
`communication, the third party requester of the inter partes reexamination may once file
`written comments within a period of 30 days from the date of service of the patent owner's
`response. This 30-day time period is statutory (35 U.S.C. 31 4(b)(2)), and, as such, it cannot
`be extended. See also 37 CFR 1.947.
`
`If an ex parte reexamination has been merged with the inter partes reexamination. no
`responsive submission by any ex parte third party requester is permitted.
`
`PTOL-2070 (Rev.07-04)
`
`ZTE v Fractus
`IPR2018-01461
`
`ZTE
`Exhibit 1022.0002
`
`

`

`Control No. ('\e\
`Patent Under Reexamination
`"'"' co \ l...\'i'?
`A CT/ON CLOSING PROSECV__T/ON.-:.1-,9;=;51=00=0=.s=as;...;."1'.....;~::::..s-6-='lo..::..01'-''"i'o=1~<....:,.._+--1:...::3=97,...;.4;=..;;31 _____ ---;
`(37 CFR 1.949)
`.. .
`-
`Examin!:lr
`Art Unit
`
`LINH M. NGUYEN
`
`3992
`
`-- The MAILING DA TE of this comm unication appears on the cover s~~.t with. the correspondence address. ·•
`
`Responsive to the communication(s) filed by: -
`Patent Owner on 15 August. 2011 ··
`· · ·
`Third Party(ies) on 14 September, 2011
`
`- '
`
`-
`
`• t .. .
`
`• _ .. ... .... . . .. " • • • • · -
`
`..
`
`-
`
`"l.1,.#lt.. t • . , t
`I
`
`Patent owner may once file a submission under 37 CFR 1.951 (ay'wlthin-1 month(s) from the mailing date of this
`Office action. Where a submission is filed, third party requester may file responsive comments under 37 CFR
`1.951 (b) within 30-days (not extendabte- 35 U.S.C. § 314(b)(2)) from the date of service of the initial
`submission on the requester. Appeal cannot be taken from ttlis action. Appeal can only be taken from a
`Righ.t of Appeal Notice under 37 CFR 1.953.
`
`All correspondence relating to this inter partes reexamination proceeding should be directed to the Central
`Reexamination Unit at the mail, FAX, or hand-carry addresses given at the end of this Office action.
`
`PART I. THE FOLLOWING ATTACHMENT(S) ARE PART OF THIS ACTION:
`1. D Notice of References Cited by Examiner, PT0-892
`2. 1:8J Information Disclosure Citation, PTO/SB/08
`3. 0 __
`
`·--·-.-
`
`·-
`
`PART II. SUMMARY OF ACTION:
`1 a.~ Claims 1,4,5,7,8, 12-14.17,21,22,24-27 and 29-31 are subject to reexamination.
`1 b.18] Claims 2.3,6.9-11 , 15, 16, 18-20.23.28 and 32-37 are not subject to reexamination.
`2. D Claims
`have been canceled .
`3. D Claims __ are confirmed. [Unamended patent claims]
`4. D Claims __ are patentable. [Amended or new claims]
`5. ~ Claims 1.4,5, 7,8, 12-14, 17,21,22,24-27 and 29-31 are rejected.
`6. D Claims _ _ are objected to.
`D are acceptable D ar~ not acceptable.
`7. D The drawings filed on __
`8 D The drawing correction request filed on __ is: D approved. D disapproved.
`9 D Acknowledgment is made of the claim for priority under 35 U.S.C. 119 (a)-{d). The certified copy has:
`0 been received. D not been received.
`0 been filed in Application/Control No _ _
`10. 0 Other __
`
`U.S. Palent and Trademarl( Office
`PTOL-2065 (08/06)
`
`Paper No. 20111109
`
`1
`
`'I,
`
`1
`
`ZTE v Fractus
`IPR2018-01461
`
`ZTE
`Exhibit 1022.0003
`
`

`

`Application/Control Number:
`95/000,586+95/001,482+95/001 ,497.
`Art Unit: 3992
`
`.. ~ .
`
`Page 2 . .
`. --
`
`ACTION CLOSING PROSECUTION (ACP)
`
`- --
`
`· -- --·- ---
`
`Preliminary Matters
`
`. ~ -This.office action is responsive to Patent' Owner's response submitted on 08/15/2011 and
`. ·- -·
`.
`~-:
`-
`Third Party Requester's Comments submitted on 09/14/2011 for Patent No. 7,397,431
`
`(hereinafter "the '431 patent"), which is a merger of 95/001,482, 95/001,497 and 95/000,586. A
`
`substantial new question of patentability was fowid to be raised for claims I, 4-5, 7-8, 12-14, 17,
`
`21-22, 24-27, and 29-31 of the '431 of the '431 patent. Toe above claims will be ree~_aipined.
`
`Reexamination was not requested of claims 2-3, 6, 9-11, 15-16, 18-20, 23, 28, and 32-37,
`
`therefore they will not be reexamined. See MPEP 2643.
`
`It is noted that Petitions 10 Terminate Inter Partes Reexamination (specifically for
`
`95/000,586) and Petitions to Expunge Information have been received by the Office; however,
`
`until decisions are made by the Office these proceedings, 95/001,482, 95/001,497 and
`
`95/000,586, remain merged.
`
`Information Disclosure Statement
`
`The examiner has considered Information Disclosure Statements (IDS) submitted
`
`09/06/2011 as indicated on the attached signed sbeets. However, it is noted that where patents,
`
`publications, and other such items of information are submitted by a patent owner in compliance
`
`with the requirements of the rules, the requisite degree of consideration to be given to such
`
`information will be limited by the degree to which the patent owner has explained the content
`
`and relevance of the information. In instances where no explanation of citations (items of
`
`ZTE v Fractus
`IPR2018-01461
`
`ZTE
`Exhibit 1022.0004
`
`

`

`Application/Control Number:
`95/000,586+95/00) ,482+95/001,497-- ·
`Art Unit: 3992 _:
`information) is required and none is provided for an information citation, oriJy a cursory review
`
`. -~ -- .--:
`
`Page 3
`
`of that information is required. The examiner need only perform a cursory evaluation of each
`
`unexplained item of information, to the extent that he/she needs in order to determine whether
`
`·. : ,. l
`
`he/she will evaluate the item further. If the cursory evaluation reveals the item not to be useful,
`
`the examiner may simply stop looking at it This review may often talce the fonn of considering
`
`the documents in the same manner as other documents in Office search files are considered by
`
`the examiner while conducting a search of the prior art in a proper field of search. The initials of
`
`the examiner in this proceeding, without an. indication in the record to the contrary in the record,
`
`do not signify that the inf onnation has been considered by the examiner any further than to the
`
`extent noted above. See MPEP 609, 7m ,r.
`
`References Cited in Request
`
`U.S. Patent No. 6, I 95,048 to Chiba et al. ("Chiba").
`
`U.S. Patcrit No. 6, I 40,975 to Cohen ("Cohen").
`
`U.S. Patent No. 6,130,651 to Yanagisawaetal. ("Yanagisawa").
`
`U.S. Patent No. 3,079,602 to Du Hamel et al. ("Du Hamel").
`
`U.K. Patent No. GB 2317994 to Kitchener ("Kitchener").
`
`JP 11-27042 to Serizawa ("Serizawa").
`
`WO 99/27608 to Cohen ("Cohen-PCT").
`
`ZTE v Fractus
`IPR2018-01461
`
`ZTE
`Exhibit 1022.0005
`
`

`

`Application/Control Number:
`95/000,586+95/00l,482+95/001,497 =-: ::-~-:_-- ·.
`Art Unit: 3992
`
`Page4
`
`Puente, Fractal Antennae, Ph.D. dissertation, Dept. Signal Theory and Communications,
`
`• . -. •.·• • !
`
`Universitat Politecnica de Catalunya, May-1997 ("Puente'l
`
`· · -
`
`Puente et al., On the Behavior of the Sierpinski Multiband Fractal Antenna, IEEE
`
`: ~;:-.
`
`.
`
`.!, ··-. ; :- ..:..a .. .
`
`Transactions on Antennas and PropagratiOn~ vol. 46 n~. 4 (April 1998) ("Puente-IEEE" or
`
`"Puente-Baliarda'').
`
`Misra et al., "Experimental Investigations on the Impedance and Radiation ... "
`
`Microwave & Opt Tech. Lett .• vol. 11 no. 2 (Feb. 5, 1996) ("Misra").
`
`.
`
`Misra et al., "Study of Impedance and Radiation Properties of a Concentric Microstrip
`
`Triangular-Ring Antenna and Its Modeling Techniques Using FDTD Method," IEEE
`
`Transactions on Antennas and Propagation, vol. 46 no. 4 (April 1998) ("Misra-Chowdhury").
`
`Double U-Slot Rectangular Patch Antenna by Y.X Guo et al., published September
`
`17, 1998 ("Guo").
`
`Diverse Modifications Applied to the Sierpinski Antenna, A Multi-Band Fractal
`
`Antenna by Monica Navarro Rodero, published October 1997 ("11.Javarro").
`
`ZTE v Fractus
`IPR2018-01461
`
`ZTE
`Exhibit 1022.0006
`
`

`

`Application/Control Number:
`95/000,586+95/00 l ,482+95/001,497
`Art Unit: 3992
`.
`··
`
`Page5
`
`Proposed Rejections/SNQs :. -··,. ~fo:..:·
`
`~
`
`J
`
`..,_,_;!·_
`
`The following rejections are proposed in the '1482 Requ_est:
`
`A.
`
`Claims l, 4-5, 7-8, 12-14, 17, 21-22, 27, and 29-30 are ol;,vious over Puente in view
`
`of Puente-IEEE. Request pp. 54-72.
`
`B.
`
`Claims4-5, 12-14, l7,2I,24-27,and 30-31 areobviousoverPuenteinviewof
`
`Puente-IEEE, and further in view of Cohen. Request pp. 72-86.
`
`C.
`
`Claims l , 12-14, 17, 21, 24, and 29 are anticipated by Misra. Request pp. 86-93.
`
`D.
`
`Claims4-5, 12-14, 17,21, 24-27, and 29-31 are obvious over Misra in view of Cohen.
`
`Request pp. 93-104.
`
`E.
`
`Claims 4-5, 12-14, 17, 21, 24-25, 27, and 29 are obvious over Misra in view of
`
`Cohen-PCT. Request pp. 104-1 14.
`
`F.
`
`Claims 1, 12-14, 21, 24, 27, and 29 are anticipated by Misra-Chowdhury. Request pp.
`
`114-122.
`
`G.
`
`Claims 4-5, 12-14, 17, 2~, 24-27, and 29-3 l are obvious over Misra-Chowdhury in
`
`view of Cohen. Request pp. 123-133.
`
`H.
`
`Claims 4-5, 12-14, 17, 21, 24-25, 27, and 29 are obvious over Misra-Chowdhury in
`
`view of Cohen-PCT. Request pp. J 33- J 42.
`
`I.
`
`Claims 1, 21-22, and 29 are anticipated by Serizawa. Request pp. 142-148.
`
`ZTE v Fractus
`IPR2018-01461
`
`ZTE
`Exhibit 1022.0007
`
`

`

`.
`,
`Application/Control Number:
`95/000,586+95/001,482+95/00I .497_
`Art Unit: 3992
`:,-_ . :,.,;,:..: :-· 0 :::-_
`
`Page 6
`
`J.
`
`Claims 4-S, 12-14, 17, 21, 24-25, and 29-31 are obvious o.ver Seriz.awa in view of
`
`Cohen. Request pp. 149-157.
`
`K.
`
`Claims 4-5, 12-14, 17, 21, 24-25, and 29 are obvious over Serizawa in view of
`
`Cohen-PCT. Request PP- 157-L64.
`
`L.
`
`Claims 1,4, 12-14, 17,21,and 29are anticipatedbyChiba. Requestpp.l64-171.
`
`Tlzefollowing rejections are proposed in the '1497 Request
`
`A.
`
`B.
`
`C.
`
`Claims I, 4-5, 7-8, 12, 14, 17, 21-22, 24-27, and 29-31 are anticipated by Serizawa.
`
`Claims l, 4-5, 7-8, 12-14, 17, 21-22, 24-27, and 29-31 are anticipated by Yanagisawa.
`
`Claims 1, 4-5, 7-8, L2-14, 17, 21-22, 24-27, and 29-31 are anticipated by Chiba.
`
`D.
`
`Claims l, 4-5, 7-8, 12-14, 17, 21-22, 24-27, and 29-31 are obvious under Guo in view of
`
`Chiba.
`
`E.
`
`Claims 1, 7-8, 14! 21-22, 27, and 29 are anticipated by N{]\larro.
`
`The following rejeclwns are proposed in the '586 Request:
`
`A.
`
`Claims 1, 7, 12, 13, 14, 17, 22 and 29 of the '43 1 Patent are Anticipated by Kitchener
`
`under 35 U.S.C. §102(b).
`
`B.
`
`Claim 1, 4, 5, 7, 8 and 22 of the '431 Patent are Anticipated by Du Hamel under 35
`
`u.s.c. §l02(b).
`
`C.
`
`Claim 1, 4, 5, 7, 8, 12, 13, 14, 17 and 22 of the '431 Patent are Anticipated by
`
`Yanagisawa under 35 U.S.C. §102(e).
`
`ZTE v Fractus
`IPR2018-01461
`
`ZTE
`Exhibit 1022.0008
`
`

`

`-
`
`· ·· ·
`
`D.
`
`Application/Control Number:
`95/000,586+95/00l,482+95/001, 497
`Art Unit: 3992 · ~ · ~ ·=· ;~
`Claims 1, 4, 5, 1;8, 12, 13, 14, 27 and 31 ofthe '431 Patent are.Obvious under 35 U.S.C.
`
`-·
`
`Page 7
`
`§103(a) based on Puente-Baliarda in view of Cohen.
`
`E.
`
`Claims 4 and 5 of the '431 Patent are Obvious under 3~ .lJ.S.C. § 103(a) based on
`. .
`.·~ .
`. .
`- ·
`
`Kitchener in view of Du Hamel.
`. .,~ -
`Claims 4 and 5 of the '43 1 Patent are Obvious under 35 U.S.C. §103(a) based on
`
`F.
`
`Y anagisawa in view of Du Hamel.
`
`Claim Rejections-JS USC§§ 102 & 103
`
`The following is a quotation of the appropriate paragraphs of35 U.S.C. 102 that fonn the
`
`basis for the rejections under this section made in this Office action:
`
`A person shall be entitled to a patent unless·
`
`(b) the invention was patented or described i.n a printed publication in this or a foreign country or in public use or
`on sale in this country, more than one yc.ir prior to the date of application for patent in the United States.
`
`(e) the invention was described in ( I) an applicalion for patent, published under sect.ion 122(b), by another filed
`ln the United States before the invention by the applicant for patent or (2) a patent granted on an application for
`patent by another filed in the United States before the invention by the applicant for patent, except that an
`international .qiplication filed under the treaty defined in section JS J(a) shall have the effects for purposes of this
`subsection of an application filed in the United St.ates only if the international application designated the United
`Sta!CS and was published under Article 21 (2) of such treaty in the English language.
`•
`
`The following is a quotation of35 U.S.C. 103(a) which fonns the basis for all
`
`obviousness rejections set forth in this Office action:
`
`(a) A pate.nt may not be obtained though the invention is not identically disclosed or descnl>cd as set fonh in
`section I 02 of this title, if the differences between the subject matter sought to be patented and the prior art arc
`such that the subject matter as a whole would have been Obvious at the time the invention was made to a person
`having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the
`manner in which the invention was made.
`
`ZTE v Fractus
`IPR2018-01461
`
`ZTE
`Exhibit 1022.0009
`
`

`

`Application/Control Number:
`,95/000,586+95/001,482+95/001,497- ·.:_ -
`Art Unit 3992
`-
`- -··- · .-:-
`
`... - ...
`- --· ...
`
`Page 8
`
`,. •Rejections from tJie :11482 Re quest:
`-
`.
`Claims 1,4-5, 7-8, 12-14, 17,21-22,27,~~"d29~30·~~ ~bviousover Puenteinview
`
`A.
`
`of Puente: IEEE.
`
`- ·
`
`This rejection has been withdrawn due to the reasons set forth in the Remarks
`
`section below.
`
`C.
`
`Claims 1, 12-14, 1 7, 21, 24, and 29 are anticipated by Misra.
`
`Th.is rejection was proposed by the third party and is adopted as proposed. See
`
`Request pp. 86-93, which is hereby incorporated by reference.
`
`F.
`
`Claims 1, 12-14, 21, 24, 27, and 29 are anticipated by Misra-Chowdhury.
`
`This rejection was proposed by the third party and is adopted as proposed. See
`
`Request pp. 114-122, which is hereby incorporated by reference.
`
`I.
`
`Claims l , 21-22, and 29 are anticipated by Serizawa.
`
`This rejection was proposed by the third party and is adopted as proposed. See
`
`Request pp.142-148, which is hereby incorporated by reference.
`
`L.
`
`Claims 1,4, 12- 14, 17,21,and29areanticipatedbyChiba.
`
`This rejection was proposed by the third party and is adopted as proposed. See
`
`Request pp.164-171, which is hereby incorporated by referen~e.
`
`ZTE v Fractus
`IPR2018-01461
`
`ZTE
`Exhibit 1022.0010
`
`

`

`Appiication/Control Number:
`95/000.586+95/001,482+95/001,497
`Art Unit: 3992
`. _ : :_' ---: -.. :=
`
`. --.=-----
`
`Page 9
`
`The following proposals B, D, E, G, H; J and K add one of Cohen or-Gohen-PCT to the
`
`above ref~rences, in Proposals A, C, F and 1, to 111eet the dependent daim~Qiyen_tbat the.
`
`-
`
`•
`
`-
`
`._.
`
`-
`
`•
`
`..
`
`-
`
`l
`
`. ....
`
`•
`
`above proposals were withdrawn as to as to at least claim I above; as such, the noted
`
`dependent claims are also withdrawn_
`
`8-
`
`Claims 4-5, 12-14> 17, 2 1, 24-27, and 30-31 are obvious over Puente in view of
`
`Puente-IEEE, and further in view of Cohen.
`
`This rejection has been withdrawn due to the reasons set forth in the Remarks
`
`section below.
`
`D.
`
`Claims 4-5, 12-14, 17,21, 24-27, and 29-31 are obvious over Misra in v iew of
`
`Cohen.
`
`This rejection has been withdrawn due to the reasons set forth in the Remarks
`
`section below.
`
`E.
`
`Claims 4-5, 12-14, 17, 21, 24-25, 27, and 29 are obvious over Misra in view of
`
`Coh~ PCT.
`
`This rejection bas been withdrawn due to the reasons set forth in the Remarks
`
`section below.
`
`G.
`
`Claims 4-5, 12- 14, 17, 21 , 24-27, and 29-31 are obvious over Misra-Chowdhury
`
`in view of Cohen.
`
`ZTE v Fractus
`IPR2018-01461
`
`ZTE
`Exhibit 1022.0011
`
`

`

`Application/Control Number:
`95/000,586+95/00l,482+95/001-,497- ----. --
`Art Unit: 3992
`
`.. ~ - . . . ~
`
`- .
`
`Page 10
`
`This rejection bas been withdrawn due to the reasons set forth in the Remarks.
`
`section below.
`
`... . .. .
`. - (cid:173)
`
`H.
`
`Claims 4-5, 12-14, 17, 21, 24-25, 27; and 29 are obvious over Misra-Chowdhury
`-- ....
`.... -
`
`in view of Cohen-PCT.
`
`- . : ~ ... '.
`
`This rejection bas been withdrawn due to the reasons set forth in the Remarks
`
`section below.
`
`J.
`
`Claims 4-5, 12-14, 17, 21, 24-25, and 29-31 are obvious over Serizawa in view of
`
`-Cohen.
`
`Th.is rejection has been withdrawn due to the reasons set forth in the Remarks
`
`section below.
`
`K.
`
`Claims 4-5, 12-14, 17, 21, 24-25, and 29 are obvious over Serizawa in view of
`
`Cohen-PCT.
`
`This rejection has been withdrawn due to the reasons set forth in the Remarks
`
`secnon below.
`
`Rejections from the '1497 Request:
`
`A.
`
`Claims 1, 4-5, 7-8, 12, 14, 17,21-22,24-27,and29-31 areanticipatedbySerizawa.
`
`As indicated in the order granted on 01/20/2011 of the '1497 proceeding, no SNQ was
`
`found as to claims I, 21-22 and 29; therefore, the rejection for these claims is not
`\
`
`ZTE v Fractus
`IPR2018-01461
`
`ZTE
`Exhibit 1022.0012.
`
`

`

`Application/Control Nwnber:
`95/000,586+95/00l,482+95/001,497
`Art Un.it: 3992
`
`· Page 11
`
`. adopted (which has already been addressed in the' 1482 proceeding);·an· SNQ was· found · · .?· 7 · · .:
`
`as to claims 4-5, 7-8, 12, 14, 17, 24-27, and 30-3 1, which the rejection for these claims is
`
`adopted and hereby incorporated-by ·reference . .
`
`I,., -
`
`.... .....
`
`B.
`
`C laims I, 4-5, 7-8, 12-14; 17, 21-22, 24-27, and 29-31 are anticipated by Yanagisawa.
`
`This rejection was proposed by the third party and is adopted as proposed except
`
`for Claim 26, which the rejection bas been withdrawn as explained in the Remarks
`
`section below. See Request pp. 19-22 and 46-61 and the item-matching in Appendix C2
`
`of the request, which is hereby incorporated by reference.
`
`C.
`
`Claims 1, 4-5, 7-8, 12-14, 17, 21-22, 24-27, and 29-31 are anticipated by Chiba.
`
`As indicated in the order granted on of the '1497 proceeding 01/20/2011, no SNQ was
`
`found as to claims l, 4, 12-14, 17, 21 and 29; therefore, the rejection for these claims is
`
`not adopted (which bas already been addressed in the '1482 proceeding); an SNQ was
`
`found as to claims 5, 7-8, 22, 24-27, and 30-31, which the rejection for these claims is
`
`adopted and hereby incorporated by reference except for Claims 8 and 31. which the
`
`rejection has been withdrawn as explained in ~e Remarks section below.
`
`D.
`
`Claims 1, 4-5, 7-8, 12-14, 17, 21-22, 24-27. and 29-31 are obvious under Guo in view of
`
`Chiba.
`
`This rejection was proposed by the third party and is adopted as proposed except
`
`for Claim 31, which the rejection has been withdrawn as explained in the Remarks
`
`.
`
`section below. See Request pp. 25-27 and 75-92 and the ~tern-matching in Appendix C4
`
`of the request, which is hereby incorporated by reference.
`
`ZTE v Fractus
`IPR2018-01461
`
`ZTE
`Exhibit 1022.0013
`
`

`

`Application/Control Nwnber:
`95/000,586+95/001,482+95/001,49'.7- --
`Art Un.it: 3992
`
`-
`
`-,-
`
`Page 12
`
`E.
`
`Claims I, 7-8, 14, 21-22, 27, and 29 are anticipated by Navarro.:-,,..~
`
`· b ·. · ·
`
`. • • . :-:'-J-0 •.-. ..;
`
`·This rejection was proposed by the third party and ii adopted as proposed. See
`
`,_: . . ··- -
`
`Request pp .. 27-30 and 92-102 and the item-matching in Appendix C5 of the request,
`
`which is hereby incorporated by reference.
`
`... :"
`
`Rejectio,,sfrom the '586 Request:
`
`A.
`
`Claims 1, 7, 12, 13, 14, 17, 22 and 29 of the '431 Patent are· .Anticipated by Kitchener
`
`under 35 U.S.C. § 102(b).
`
`This rejection has been withdrawn due to the reasons set forth in tbe Remarks
`
`section below.
`
`B.
`
`Claim 1, 4, 5, 7, 8 and 22 of the '431 Paten,t are Anticipated by Du Hamel under 35
`u.s.c. §102(b).
`
`Th.is rejection has been withdrawn due to the reasons set forth in the Remarks
`
`section below.
`
`C.
`
`Claim l, 4, 5, 7, 8, 12, 13, 14, 17 and 22 of the '43 l Patent are Anticipated by
`
`Yanagisawa under 35 U.S.C. §102(e).
`
`As indicated in the order granted on of the '586 proceeding 02/04/2011, this
`
`proposal was not found to raise an SNQ in the order, which has already been addressed in
`
`the ' 14 97 proceeding.
`
`ZTE v Fractus
`IPR2018-01461
`
`ZTE
`Exhibit 1022.0014
`
`

`

`Application/Control Number:
`95/000,586+95/001-;482+95/00t49'J-- -
`.
`- ... .
`-· . ··-··· .... .
`Art Unit: 3992
`
`Page 13
`
`D.
`
`Claims 1, 4, 5, 7, 8, 12, 13, 14, 27 and 31 of the '43 1· Pateot are Obvious under 35 U.S.C.
`
`§103(a) based on Puente-Bali!1fda in view of Cohen.
`
`. .... ·:--
`
`This rejection has been withdrawn due to the reasons set forth in the Remarks •< -::;..:
`
`section below.
`
`E.
`
`Claims 4 and 5 of the '43 1 Patent are Obvious under 35 U.S.C. §I03(a) based on
`
`Kitchener in view of Du Hamel.
`
`This rejection has been withdrawn due to the reasons set forth in the Remarks section
`
`below.
`
`F.
`
`Claims 4 and 5 of the '431 Patent are Obvious under 35 U.S.C. §103(a) based on
`
`Y anagisawa in view of Du Hamel.
`This rejection has been withdrawn ~ue to the reasons set forth in the Remarks
`section below.
`
`91 . . .
`
`-·.
`
`.. ~
`
`ZTE v Fractus
`IPR2018-01461
`
`ZTE
`Exhibit 1022.0015
`
`

`

`Application/Control Nwnber: · - -
`95/000,586+95/001.482t95/001,497 . _
`Art Unit: 3992
`
`Page 14
`
`Claim Construcuon . ,. ·
`
`. . . .
`
`.
`
`t • ~
`
`Multilevel Struaure
`
`. . .. . ..
`
`-
`
`-
`
`~
`
`..a.~.
`
`The term "multilevel structure" is included in each claim in this proceeding therefore it is
`
`important to determine what this term means. During reexamination, claims are given their
`
`broadest reasonable interpretation consistent with the specification. In re Yamamoto, 222 USPQ
`
`934, 936-37 (Fed. Cir. 1984). This generally means that words of the claims are given their plain
`
`meaning unJess inconsistent with the specification. See MPEP 211 l.01 (I). However, an
`
`applicant [ or patent owner] may be her own lexicographer, and where a defutltion for a tenn is
`
`clearly set forth, that definition controls interpretation of the term in the claims. See MPEP
`
`2111.01 (IV). In perfonning this lexicography function, "[t)he specification may reveal an
`
`intentional disclaimer, or disavowal, of claim scope by the inventor. In that instance as well, the
`
`inventor has dictated the correct claim scope, and the inventor's intention, as e~pressed in the
`
`specification, is regarded as dispositive." Phillips v. AWH Corp., 75 USPQ2d 1321 , 1329 (Fed.
`
`Cir. 2005) (en bane) (citing SciMed Life Sys., Inc. v. Advanced Cardiovascular Sys.; Inc. , 58 US
`
`PQ2d 1059. I 062-63 (Fed.Cir.2001) ("Where the specification makes clear that the invention
`
`does not include a particular feature, that feature is deemed to be outside the reach of the claims
`
`of the patent, even though the language of the claims, read without reference to the specification.
`
`might be considered broad enough to encompass the feature in question.")); see also In re Am.
`
`Acad. OjSci. Tech Ctr., 70 USPQ2d 1827, 1831 (Fed. Cir. 2004) (acknowledging possibility of
`
`disavowal of claim scope during reexamination if clear in the specification).
`
`"multilevel structure" was not a tenn used in the art at the time of the '431 patent, and
`
`ZTE v Fractus
`IPR2018-01461
`
`ZTE
`Exhibit 1022.0016
`
`

`

`Application/Control N wnber:
`95/000,586+95/001,482+95/001,497 . .:.- ---...:.,.. ..... -=--
`Art Unit: 3992
`.,. . -::-:- ·. ----
`
`Page 15
`
`apparently was coined by the inventors. Thus, their Jexfoography governs, including any
`
`disavowal of claim scope. But again, the definition must be clear from the specification. We will
`
`therefore look to the specification to determine what is meant by the term. Many features of a
`
`multilevel structure can be seen at col. 4 line 51 et seq., which starts with "A multilevel
`
`structure is characterized in that... n From this, we gather several important characteristics:
`
`• A plwality of polygons of the same type (i.e. same number of sides)
`
`• The polygons are electromagnetically coupled, via direct contact or by close proximity
`
`• At least 75% of the elements (polygons) have more than 50% of their perimeter not in
`
`contact with other elements of the structure
`
`• Due to the above, one can individually distinguish most of the component polygons,
`
`presenting at least two levels of detail: that of the overall structure, and that of the polygons that
`
`form it To the extent this feature is not claimed, it appears essential to the definition as it is the
`
`very reason behind the name multilevel. Col. 2 Lines 34-38, 55-59.
`
`• The construction materials and the configuration in an antenna (i.e. monopole, dipole,
`
`patch, etc.) do not affect the definition; the geometry of the structure is what matters.
`
`Col. 5 line 62 - col. 6 line 22.
`
`These characteristics appear to be the most basic definition of a multilevel structure and
`
`come with the term when it is in the claims.
`
`Thus, so far, we take the meaning of "multilevel structure" with regards to the present
`
`claims to include the bu.lleted material above.
`
`ZTE v Fractus
`IPR2018-01461
`
`ZTE
`Exhibit 1022.0017
`
`

`

`Application/Control Number:
`95/000,586+95/00-1;482+95/001;497 · ~
`..
`... .
`Art Unit: 3992
`
`~ · .J.! •.
`
`--
`~-~ --- -
`.
`-
`
`Mu/Ji-band:..:_-::(cid:173)
`
`Page 16
`
`Another issue is whether a "multilevel structure" inherently is multi-band:· Claim I, is
`
`drawn to "A multi-band antenna comprising a conductive radiating element including at least one
`
`multilevel structure." The district court held that to the extent "multi-band" is recited only in the
`
`preambles it is not limiting, but nevertheless a "multilevel structure'.' necessarily is useable at
`
`multiple frequency bands. The examiner sees no need at this time to dispute what the district
`
`court bas said; therefore, it is agreed that the claims require the antenna to be multi-band via the
`
`multilevel structure being multi-band. Additionally, one might consider the preamble to be
`
`limiting. Rather than merely describing a function or intended use of the antenna, being "multi(cid:173)
`
`band" might more accurately be described as actually saying what the device is. That is, the
`
`radiation characteristics, and whether the antenna operates in a single band or multi-band nature,
`
`necessarily depends upon the structure of the antenna; therefore, in describing the antenna as
`
`multi-band in the claim, the claim also implies and requires the structure enabling the antenna to
`
`operate as such. It is not simply that any antenna can operate in either single or multiple bands,
`
`thus the preamble s1atement would seem to be more than mere intended use, it would seem to
`
`breathe life and meaning into the claim by stating what type of antenna is claimed. But again, in
`
`any event, "multi-band" is a requirement of the claim, whether the preamble bas meaning, or due
`
`to the multilevel structure as stated by the district court. This analysis is deemed sufficient at this
`
`time.
`
`·
`
`Disclaimers
`
`ZTE v Fractus
`IPR2018-01461
`
`ZTE
`Exhibit 1022.0018
`
`

`

`Application/Control Number:
`95/000,586+95/001.4.82-t95/001,497 - _
`Art Unit: 3992
`- =. .. • _. ·
`
`.· · -:-=,;;-.-;
`
`Page 17
`
`..:,1
`
`As stated above, if the specification reveals an intentional disclaimer or disavowal of
`
`claim scope, such disavowal is dispositive as a part of applicant being his own lexicographer. -
`
`Phillips, supra. The disavowal, however, must be clear. See SciMed Life Sys.; Inc., supra; In re ·
`
`··
`
`"" . ....
`
`....
`
`Am. A cad. of Sci. Tech Ctr., supra. General statements indicating that the device is intended to
`
`improve on prior art is not taken as a disclaimer, under Phillips, of such prior art. VenJana Med.
`
`Sys., Inc. v. Biogenex Labs., Inc., 81 USPQ2d 1314, 1319 (Fed. Cir. 2006).
`
`Fractal
`
`The patent makes it abundantly clear that fractal antennas do not fall within the definition
`
`of multilevel: "Although they are not fractal, multilevel antennas a.re characterized ... " Col. 2 lines
`
`31-32. "Publication WO 97/06578 discloses a fractal antenna, which has nothing to do with a
`
`multilevel antenna being both geometries are essentially different" Col. 4 lines 1-3.
`
`~It becomes particularly relevant to differentiate multilevel antennae fiom fractal antennae .... "
`
`Col. 6 lines 53 et seq. This section also discusses Sierpinski's antenna and distinguishes it from
`
`the invention. It is clear and unmistakable that the inventors of the '431 patent, wbo coined and
`
`defined the term "multilevel" in relation to antennas, defined the term as distinguishable from
`
`fractal antennas. While "multilevel antenna" is not expressly recited in the claims, multilevel
`
`structure is, and the same disclaimer applies as this is the stnacture that makes up a multilevel
`
`antenna.
`
`The question becomes: if fractal antennas do not fall within the claims, what exactly are
`
`fractal antennas? This is unclear, as the '431 patent does not explicitly define fractal antennas.
`
`ZTE v Fractus
`IPR2018-01461
`
`ZTE
`Exhibit 1022.0019
`
`

`

`Application/Control Number:
`95/000,586+95/00] ,482+95/001,497
`Art Unit: 3992
`
`Page 18
`
`So, while fractal antermas are oot multilevel, we must explore what exactly is distinguished.
`
`The first discussion of fractal antermas is at col. 1 line 50 - col.· 2 line 15. This section
`
`tells us that fractal objects include an infinite number of objects, and strictly fractal antennae are ·
`
`impossible. It goes on to say that "It is possible to generate antennae with a form based on said
`
`fractal objects, incorporating a finite nwnber ofiterations." Col. l lines 57-59. The practical
`
`problems of such antennas are then discussed, col. 1 line 59 - col. 2 line 15, and that such
`
`problems were solved by moving away from fractal geometry to a multilevel structure. Col. 2
`
`lines 26-27. It thus appears that fractal antennas, as used in the patent, mean those that are based
`
`on fractal objects and incorporate a finite number of iterations. This is confinned at col. 6 lines
`
`53 - 65, which again tells us that fractal objects, in a strict sense, only exist in the abstract, but ·
`
`that antennas based on fractal geometry have been developed and widely described.
`
`The patent also refers to particular fractal antennas. It states "WO 97/06578 discloses
`
`a fractal antenna, which has nothing to do with a multilevel antenna being both geometries are
`
`essentially different." Col. 4 lines 1-3. The patent later discusses how the Sierpinski antenna,
`
`which is based on fractal geometry, is problematic, and that the problems are apparently
`
`corrected by moving away from a fractal geometry. Col. 7 lines 2-17.
`
`So, it becomes apparent that in saying that multilevel antennas are not fractal antennas,
`
`the c431 patent is not simply referring to strict fractals; obviously multilevel antennas are not
`
`strict fractals, as such are impossible in practice, but the patent also distinguishes from the class
`
`known as fractal antennas, those like the Sierpinski antenna or those in WO 97/06578 that are
`
`not strict fractals but are based on.fractal geometry. So far, we see that multilevel antennas, and
`
`ZTE v Fractus
`IPR2018-01461
`
`ZTE
`Exhibit 1022.0020
`
`

`

`Application/Control Number:
`95/000,586+95/001,482+95/001.497
`Art Unit: 3992
`
`- - -· -·- - ·
`
`Page 19
`
`their corresponding multilevel structure, are distinguished at least from Sierpinski's antenna and -;-· ·· -+-·--~ ·.:
`
`from the WO 97/06578 antennas. Regardless of what else we determine, those structures are
`clearly disclaimed. as the patent exp