Ex Parte Reexamination of Patent No. 7,397,431
`Control No. 90/013,023
`
`Attorney Docket No.: 0690.0004L1
`PAGEl
`
`In The United States Patent & Trademark Office
`
`Control No.
`Filing Date
`Patent Under Reexamination
`Issue Date
`TCIA.U.
`Examiner
`Confirmation No.
`Customer No.
`Docket No.
`Title:
`
`901013,023
`October 9,2013
`7,397,431
`July 8, 2008
`Central Reexamination Unit 3992
`Linh M. Nguyen
`7843
`27896
`0690.0004Ll
`Multilevel Antennae
`
`Mail Stop Ex Parte Reexam
`Attn: Central Reexamination Unit
`Commissioner for Patents
`United States Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`Patent Owner's Response to First Office Action
`Under 37 C.F.R. § 1.530
`
`Sir:
`
`In response to the first Office Action mailed on October 17,2014 ("the Office Action"), the
`
`Patent Owner Fractus, S.A. (hereinafter referred to as "Owner"), presents
`
`the following
`
`amendments and remarks in the above-identified reexamination proceeding of U.S. Patent No.
`
`7,397 ,431 (hereinafter "the '431 patent").
`
`No fees are believed to be due in order for the timely consideration of this Response. In the
`
`event that the Commissioner determines that an additional fee is required for consideration of the
`
`present submission, the U.S. Patent and Trademark Office is hereby authorized to charge any
`
`LARGE ENTITY fee deficiency, or credit any overpayment, to Deposit Account No. 05-0460
`
`referencing docket number 0690.0004Ll.
`
`ZTE v Fractus
`IPR2018-01461
`
`ZTE
`Exhibit 1031.0001
`
`

`

`Ex Parte Reexamination of Patent No. 7,397,431
`Control No. 90/013,023
`
`Attorney Docket No.: 0690.0004L1
`PAGE 2
`
`Table of Contents
`
`LISTING OF THE CLAIMS ............................................................................................................ 3
`
`REMARKS ......................................................................................................................................... 6
`
`I.
`
`II.
`
`III.
`
`IV.
`v.
`
`VI.
`
`CLAIM STATUS ............................................................................................................ 6
`
`SUPPORT FOR NEW CLAIMS ................................................................................... 8
`
`EXECUTIVE SUMMARY ............................................................................................ 9
`
`CLAIM CONSTRUCTION AND DISCLAIMERS .................................................. 10
`
`SUMMARY OF THE CLAIMED SUBJECT MATTER ........................................ 10
`
`REJECTIONS OVER MISRA .................................................................................... 11
`
`VII.
`
`REJECTIONS OVER GUO ........................................................................................ 12
`
`VIII.
`
`REJECTIONS OVER YANAGISAWA ..................................................................... 12
`
`IX.
`
`REJECTIONS OVER JOHNSON .............................................................................. 16
`
`A.
`
`B.
`
`C.
`
`The Teachings of Johnson Would Not Have Rendered the Claims Obvious .......... 16
`
`The Requester has Proposed an Interpretation of Johnson that is Contrary to
`the Teachings of the Reference .................................................................................... 19
`
`The Requesters Interpretation of the Johnson Reference is Not Enabled .............. 20
`
`X.
`
`XI.
`
`PATENTABILITY OF NEW CLAIMS ..................................................................... 21
`
`CONCLUSION ............................................................................................................ 21
`
`ZTE v Fractus
`IPR2018-01461
`
`ZTE
`Exhibit 1031.0002
`
`

`

`Ex Parte Reexamination of Patent No. 7,397,431
`Control No. 90/013,023
`
`Attorney Docket No.: 0690.0004L1
`PAGE 3
`
`LISTING OF THE CLAIMS
`
`Owner requests that the Office amend the claims and enter new claims 38-43, as shown in
`
`the following listing of claims, which replace all prior versions, and listings, of claims.
`
`l. (Canceled) A multi-band antenna comprising:
`
`a conductive radiating element including at least one multilevel structure,
`
`said at least one multilevel structure comprising a plurality of electromagnetically coupled
`
`geometric elements,
`
`said plurality of geometric elements including at least two portions, a first portion being
`
`associated with a first selected frequency band and a second portion being associated with a second
`
`selected frequency band, said second portion being located substantially within the first portion,
`
`said first and second portions defining empty spaces in an overall structure of the conductive
`
`radiating element to provide a circuitous current path within the first portion and within the second
`
`portion, and
`
`the current within said first portion providing said first selected frequency band with radio
`
`electric behavior substantially similar to the radio electric behavior of said second selected
`
`frequency band and the current within the second portion providing said second selected frequency
`
`band with radio electric behavior substantially similar to the radio electric behavior of said first
`
`selected frequency band.
`
`12. (Canceled) The multi-band antenna set forth in claim 1, wherein said antenna is included
`
`in a portable communications device.
`
`l3. (Canceled) The multi-band antenna set forth III claim 12, wherein said portable
`
`communication device is a handset.
`
`ZTE v Fractus
`IPR2018-01461
`
`ZTE
`Exhibit 1031.0003
`
`

`

`Ex Parte Reexamination of Patent No. 7,397,431
`Control No. 90/013,023
`
`Attorney Docket No.: 0690.0004L1
`PAGE 4
`
`14. (Amended) The multi-band antenna set forth in claim 13, wherein said antenna operates
`
`at multiple frequency bands, and wherein at least one of said frequency bands is operating within
`
`the 800 MHz-3600 MHz frequency range[[.]], wherein:
`
`the first portion is a first level of structural detail comprising the overall structure and having
`
`a first geometry configured to operate at the first selected frequency band;
`
`the second portion is a second level of structural detail within the first level of structural
`
`detail, the second portion being smaller than the first portion and having a second geometry
`
`configured to operate at the second selected frequency band; and
`
`the perimeter of the multilevel structure has a different number of sides than each of the
`
`geometric elements that compose the multilevel structure.
`
`30. (Amended) A multi-band antenna according to claim 1, wherein the antenna operates at
`
`three or more frequency bands and the antenna is shared by three or more cellular services[[.]]~
`
`wherein:
`
`the first portion is a first level of structural detail comprising the overall structure and having
`
`a first geometry configured to operate at the first selected frequency band;
`
`the second portion is a second level of structural detail within the first level of structural
`
`detail, the second portion being smaller than the first portion and having a second geometry
`
`configured to operate at the second selected frequency band; and
`
`the perimeter of the multilevel structure has a different number of sides than each of the
`
`geometric elements that compose the multilevel structure.
`
`38. (New) The multiband antenna of claim 14, wherein the perimeter of the multilevel
`
`structure has a greater number of sides than each of the geometric elements that compose the
`
`multilevel structure.
`
`39. (New) The multiband antenna of claim 38, wherein the geometry of the first portion
`
`shapes the circuitous current path within the first portion to cause the first portion to operate at the
`
`first selected frequency band.
`
`ZTE v Fractus
`IPR2018-01461
`
`ZTE
`Exhibit 1031.0004
`
`

`

`Ex Parte Reexamination of Patent No. 7,397,431
`Control No. 90/013,023
`
`Attorney Docket No.: 0690.0004L1
`PAGES
`
`40. (New) The multiband antenna of claim 38, wherein the geometry of the second portion
`
`shapes the circuitous current path within the second portion to cause the second portion to operate at
`
`the second selected frequency band.
`
`4l. (New) The multiband antenna of claim 30, wherein the perimeter of the multilevel
`
`structure has a greater number of sides than each of the geometric elements that compose the
`
`multilevel structure.
`
`42. (New) The multiband antenna of claim 41 wherein the geometry of the first portion
`
`shapes the circuitous current path within the first portion to cause the first portion to operate at the
`
`first selected frequency band.
`
`43. (New) The multiband antenna of claim 41, wherein the geometry of the second portion
`
`shapes the circuitous current path within the second portion to cause the second portion to operate at
`
`the second selected frequency band.
`
`ZTE v Fractus
`IPR2018-01461
`
`ZTE
`Exhibit 1031.0005
`
`

`

`Ex Parte Reexamination of Patent No. 7,397,431
`Control No. 90/013,023
`
`Attorney Docket No.: 0690.0004L1
`PAGE 6
`
`REMARKS
`
`Owner respectfully requests reconsideration of the rejections raised in the Office Action in
`
`view of the foregoing amendments and the following remarks.
`
`I.
`
`CLAIM STATUS
`
`Claims 14 and 30 were pending in this ex parte reexamination proceeding. Owner requests
`
`that the Examiner enter new claims 38-43, as shown in the preceding listing of claims. Claims 2, 3,
`
`6, 9-11, 15, 16, 18-20, 23, 28 and 32-37 are not subject to reexamination and have been omitted
`
`from the preceding listing of claims. While claims 1,4, 5, 7, 8, 12, l3, 17,21,22,24-27,29 and 31
`
`were previously disclaimed, claims 1, 12 and l3 are listed above in the preceding listing of claims
`
`as
`
`they recite features which are included in claims 14 and 30 through their respective
`
`dependencies. Upon entry of the amendments, the status of the claims is as follows:
`
`Claim 1:
`
`Previously Disclaimed by Owner.
`
`Claims 2 and 3:
`
`Original Claims Not Subject to Reexamination.
`
`Claims 4 and 5:
`
`Previously Disclaimed by Owner.
`
`Claim 6:
`
`Original Claim Not Subject to Reexamination.
`
`Claims 7 and 8:
`
`Previously Disclaimed by Owner.
`
`Claims 9-11:
`
`Original Claims Not Subject to Reexamination.
`
`Claims 12 and l3:
`
`Previously Disclaimed by Owner.
`
`Claim 14:
`
`Pending, Amended and Currently Stands Rejected.
`
`Claims 15 and 16:
`
`Original Claims Not Subject to Reexamination.
`
`Claim 17:
`
`Previously Disclaimed by Owner.
`
`Claims 18-20:
`
`Original Claims Not Subject to Reexamination.
`
`Claims 21 and 22:
`
`Previously Disclaimed by Owner.
`
`Claim 23:
`
`Original Claim Not Subject to Reexamination.
`
`Claims 24-27:
`
`Previously Disclaimed by Owner.
`
`ZTE v Fractus
`IPR2018-01461
`
`ZTE
`Exhibit 1031.0006
`
`

`

`Ex Parte Reexamination of Patent No. 7,397,431
`Control No. 90/013,023
`
`Attorney Docket No.: 0690.0004L1
`PAGE 7
`
`Claim 28:
`
`Claim 29:
`
`Claim 30:
`
`Claim 31:
`
`Original Claim Not Subject to Reexamination.
`
`Previously Disclaimed by Owner.
`
`Pending, Amended and Currently Stands Rejected.
`
`Previously Disclaimed by Owner.
`
`Claims 32-37:
`
`Original Claims Not Subject to Reexamination.
`
`Claims 38-43:
`
`Pending and Newly Added.
`
`ZTE V Fractus
`IPR2018-01461
`
`ZTE
`Exhibit 1031.0007
`
`

`

`Ex Parte Reexamination of Patent No. 7,397,431
`Control No. 90/013,023
`
`II.
`
`SUPPORT FOR NEW CLAIMS
`
`Attorney Docket No.: 0690.0004L1
`PAGES
`
`Support for the amendments and new claims set forth herein may be found in the following
`
`portions of the '431 patent: Col. 2, lines 34-59; col. 3, lines 12-31; col. 4, lines 62-67; col. 5, lines
`
`4-7 and Figs. 2.5, 2.6,3.4-3.14,4-6, 11. All of the amendments made to the original claims add
`
`additional features to the previously pending claims, and therefore, the amendments do "not enlarge
`
`the scope of a claim of the patent." See, e.g., MPEP § 2666.01. Furthermore, no new matter has
`
`been introduced by the new claims. All of the new claims depend from the original claims of the
`
`'431 patent. Accordingly, the new claims also do "not enlarge the scope of a claim of the patent."
`
`[d.
`
`ZTE v Fractus
`IPR2018-01461
`
`ZTE
`Exhibit 1031.0008
`
`

`

`Ex Parte Reexamination of Patent No. 7,397,431
`Control No. 90/013,023
`
`Attorney Docket No.: 0690.0004L1
`PAGE 9
`
`III.
`
`EXECUTIVE SUMMARY
`
`Claims 14 and 30 are the claims subject to reexamination, and have been rejected over the
`
`following separate grounds of rejection:
`
`• Claims 14 and 30 have been rejected under 35 U.S.c. § 103(a) over U.S. Patent No.
`
`5,995,064 to Yanagisawa et al. (hereinafter "Yanagisawa").
`
`• Claims 14 and 30 have been rejected under 35 U.S.c. § 103(a) over Misra, Ita et aI.,
`
`"Experimental Investigations on the Impedance and Radiation Properties of a Three(cid:173)
`
`Element Concentric Microstrip Antenna," Microwave and Optical Technology
`
`Letters, Vol. 11, No.2, February 5, 1996 (hereinafter "Misra").
`
`• Claims 14 and 30 have been rejected under 35 U.S.c. § 103(a) over Y. X. Guo et aI.,
`
`"Double U-Slot Patch Antenna," Electronics Letters, Vol. 34, No. 19, September 17,
`
`1998 (hereinafter "Guo").
`
`• Claim 141 has been rejected under 35 U.S.c. § 103(a) over U.S. Patent No.
`
`6,239,765 to Johnson et al. (hereinafter "Johnson").
`
`As explained in the following sections, Misra and Guo fail to teach or suggest a multilevel
`
`structure whose perimeter has a different number of sides than each of the geometric elements that
`
`compose the multilevel structure. Yanagisawa and Johnson, on the other hand, fail to teach or
`
`suggest a first portion comprising an overall structure having a first geometry which is configured to
`
`operate at a first frequency band, and a second portion having a second geometry that is smaller
`
`than and within the first portion and is configured to operate at a second frequency band. As
`
`Owner has amended claims 14 and 30 to recite the above-described features absent from the cited
`
`art, Owner respectfully submits that the cited art fails to present a prima facie case of obvious for
`
`claims 14 and 30.
`
`1 Owner notes that the Non-Final Office Action of October 17, 2014, lists claim 30 as also being
`rejected under 35 U.S.c. § 103(a) as allegedly being obvious over Johnson, and adopts the proposed
`rejection from the Request for Ex Parte Reexamination of u.s. Patent No. 7,397,431. Yet, the
`Request for Ex Parte Reexamination of u.s. Patent No. 7,397,431 only proposes rejecting claims 1
`and 12-14 over Johnson. See, Requestfor Ex Parte Reexamination of u.s. Patent No. 7,397,431 at
`80. Accordingly, Owner assumes the rejection of claim 30 is a typographical error.
`
`ZTE v Fractus
`IPR2018-01461
`
`ZTE
`Exhibit 1031.0009
`
`

`

`Ex Parte Reexamination of Patent No. 7,397,431
`Control No. 90/013,023
`
`Attorney Docket No.: 0690.0004L1
`PAGE 10
`
`IV.
`
`CLAIM CONSTRUCTION AND DISCLAIMERS
`
`As indicated in the Non-Final Office Action of October 17, 2014, a previous inter partes
`
`reexamination (Reexamination Control No. 95/001,482) raised numerous claim constructions and
`
`disclaimer issues related to the term "multilevel structure" as used in the '431 Patent. While Owner
`
`does not concede or abandon any previous position taken on these issues, the amendments Owner
`
`has presented herein have rendered Owner's arguments regarding the construction of "multilevel
`
`structure" unnecessary to distinguish over the currently cited art. Accordingly, for the purposes of
`
`the present response, Owner does not explicitly contest the interpretation of "multilevel structure" as
`
`set forth on pages 3-8 of the Non-Final Office Action of October 17, 2014. Owner reserves the
`
`right to reassert Owner's desired interpretation of "multilevel structure" in this or any other
`
`proceeding before the Office or another judicial or administrative body.
`
`V.
`
`SUMMARY OF THE CLAIMED SUBJECT MATTER
`
`The present invention has its origin in the fractal approach to achieving multiband behavior
`
`from an antenna structure. Specifically, a multilevel structure achieves multiband behavior through
`
`multiple scales of structural detail, and does not achieve multiband behavior through groupings of
`
`single band antennas or through the inclusion of reactive elements to force new resonant
`
`frequencies. Instead, multilevel structures nest structural levels of details (e.g., the overall structure,
`
`and smaller structures within the overall structure) wherein these nested structural levels of detail
`
`give rise to frequency bands. Antennas utilizing multilevel structures improve over fractal antennas
`
`in that, for instance, they are not bound by the fractal requirement of self-similarity.
`
`Because levels of structural detail are nested within each other, the overall antenna structure
`
`corresponds to one of the bands. In other words, the overall antenna structure is designed to be as
`
`large as necessary to handle one of the bands. Levels of structural detail within the overall structure
`
`have smaller geometries that correspond to different frequency bands. As illustrated below in an
`
`annotated version of a simulation of FIG. 1 from the '431 Patent, the overall structure of the
`
`depicted multilevel structure is associated with a first frequency band, a smaller portion within the
`
`overall structure is associated with a second frequency band, and another smaller portion within the
`
`overall structure is associated with a third frequency band.
`
`ZTE v Fractus
`IPR2018-01461
`
`ZTE
`Exhibit 1031.0010
`
`

`

`Ex Parte Reexamination of Patent No. 7,397,431
`Control No. 90/013,023
`
`Attorney Docket No.: 0690.0004L1
`PAGE 11
`
`Portion of
`Multilevel
`Structure
`Associated
`with 1st
`Frequency
`Band
`
`Structure
`Associated
`with 2nd
`Frequency
`Band
`
`Portion of
`Multilevel
`Structure
`Associated
`with 3rd
`Frequency
`Band
`
`First
`Frequency
`band
`
`Second
`Frequency
`Band
`
`Third
`Frequency
`Band
`
`As illustrated, the successively smaller scales of these levels within the overall structure give
`
`nse to the different frequency bands (analogous to the fractal concept but with much greater
`
`flexibility in controlling frequency bands and radioelectric behavior).
`
`In some of the more
`
`sophisticated multilevel structures, even though all of the constituent geometric elements have the
`
`same number of sides, the perimeter of the overall structure typically has a different and greater
`
`number of sides. See, e.g., Figs. 2.5, 2.6, 3.4-3.14, 4-6, and 11.
`
`As set forth herein, the claims have been amended to explicitly recite these features through
`
`the following recitations:
`
`"wherein:
`the first portion is a first level of structural detail comprising
`the overall structure and having a first geometry configured to operate
`at the first selected frequency band;
`the second portion is a second level of structural detail within
`the first level of structural detail, the second portion being smaller
`than the first portion and having a second geometry configured to
`operate at the second selected frequency band; and
`the perimeter of the multilevel structure has a different number
`of sides than each of the geometric elements that compose the
`multilevel structure."
`
`VI.
`
`REJECTIONS OVER MISRA
`
`As set forth in the Examiner's Interview Summary of December 8, 2014, "It was agreed that
`
`Guo and Misra lack the feature of the perimeter of the multilevel structure having a different
`
`number of sides than each of the geometric elements that compose the multilevel structure."
`
`Interview Summary of December 8, 2014. As set forth above, all of the claims subject to
`
`ZTE v Fractus
`IPR2018-01461
`
`ZTE
`Exhibit 1031.0011
`
`

`

`Ex Parte Reexamination of Patent No. 7,397,431
`Control No. 90/013,023
`
`Attorney Docket No.: 0690.0004L1
`PAGE 12
`
`reexamination have been amended to recite that "the perimeter of the multilevel structure has a
`
`different number of sides than each of the geometric elements that compose the multilevel
`
`structure." Accordingly, as agreed to by the Examiner, the rejections over Misra fail to teach or
`
`suggest every element of the claims, and therefore, the rejections fail to present a prima facie case
`
`of obviousness. Owner respectfully requests that the rejections be withdrawn.
`
`VII. REJECTIONS OVER GUO
`
`As set forth in the Examiner's Interview Summary of December 8, 2014, "It was agreed that
`
`Guo and Misra lack the feature of the perimeter of the multilevel structure having a different
`
`number of sides than each of the geometric elements that compose the multilevel structure."
`
`Interview Summary of December 8, 2014. As set forth above, all of the claims subject to
`
`reexamination have been amended to recite that "the perimeter of the multilevel structure has a
`
`different number of sides than each of the geometric elements that compose the multilevel
`
`structure." Accordingly, as agreed to by the Examiner, the rejections over Guo fail to teach or
`
`suggest every element of the claims, and therefore, the rejections fail to present a prima facie case
`
`of obviousness. Owner respectfully requests that the rejections be withdrawn.
`
`VIII. REJECTIONS OVER YANAGISAWA
`In the Request for Ex Parte Reexamination of u.s. Patent No. 7,397,431 the Requester relies
`on a portion of the Yanagisawa disclosure that describes a linear antenna for a mobile device.
`Request for Ex Parte Reexamination of u.s. Patent No. 7,397,431 at 44. In particular, the Requester
`has relied on a portion of the Yanagisawa antenna which includes conductive trace 1 (see FIG. 1 of
`
`Yanagisawa, reproduced below) that is "formed to have a length of about 1;4 wavelength of a
`
`frequency band fl." Yanagisawa, col. 12, lines 38-55. The relied upon portion of Yanagisawa also
`
`resonates at an additional frequency f2 which is "twice higher than the frequency band fl."
`
`Yanagisawa, col. 13, lines 21-23. The Requester relies on these two frequencies as allegedly
`
`disclosing the first and second frequency bands recited in the claims of the '431 patent. See CC-A at
`
`2.
`
`ZTE v Fractus
`IPR2018-01461
`
`ZTE
`Exhibit 1031.0012
`
`

`

`Ex Parte Reexamination of Patent No. 7,397,431
`Control No. 90/013,023
`
`Attorney Docket No.: 0690.0004L1
`PAGE 13
`
`As discussed in section V above, the claims of the '431 patent, as amended herein, require
`
`that the claimed antenna includes an overall structure having a first geometry which is configured to
`
`operate at a first frequency band, and a second portion having a second geometry that is smaller
`
`than and within the first portion and is configured to operate at a second frequency band. Owner
`
`respectfully submits that no such feature is taught or suggested in Yanagisawa; therefore
`
`Yanagisawa would have failed to have rendered claims 14 and 30 obvious at the time of invention.
`
`In fact, even if Requester's interpretation of Yanagisawa is assumed arguendo, Yanagisawa would
`
`still fail teach or suggest the above-recited features of the claims of the '431 patent currently subject
`
`to reexamination.
`
`It is notoriously well known that the current on the surface of an antenna is what is
`
`responsible for an antenna's radiation of electromagnetic waves, and that a current density analysis
`
`of an antenna can be used to illustrate which portions of an antenna contribute to the radiation of
`
`waves and to the operation at a particular frequency and wavelength. See, e.g., Long Report at 21.
`
`Requester relied on this knowledge, and alleges that embodiments of the Yanagisawa antenna
`
`demonstrate current densities which indicate the following portions of the Yanagisawa antenna are
`
`associated with 800 MHz and 1.45 GHz, respectively:
`
`ZTE v Fractus
`IPR2018-01461
`
`ZTE
`Exhibit 1031.0013
`
`

`

`Ex Parte Reexamination of Patent No. 7,397,431
`Control No. 90/013,023
`
`Attorney Docket No.: 0690.0004L1
`PAGE 14
`
`~~wnd: F'>}mO-!l'A~;:.~
`~v~ij~ 1,4::5 -GH:>. $. .. , ... ~!
`
`)',mllgislIwlt 'Oil4 ~/JItJlHliffJefll, showiug lI~s"cilttetlllOl'lious
`
`}}
`
`Request for Ex Parte Reexamination of u.s. Patent No. 7,397,431 at 48.
`It is clear from this illustration that Requester's interpretation of the Yanagisawa antenna is
`that the entire antenna element 1 of FIG. 1 in Yanagisawa2 is configured to operate at both the 800
`
`MHz frequency band and the 1.45 GHz frequency band. Requester reinforces that the entire
`
`antenna element 1 is configured to operate at both frequency bands by illustrating the overlap
`
`between the operable portions of the antenna for the two frequency bands:
`
`Co.rrtbk~,&tkH'· of fh"s,t ~d se<Drld 9ort¥ons
`(",,,;eda., in.:i!eat;ea itt brcwni
`
`Request for Ex Parte Reexamination of u.s. Patent No. 7,397,432 at 50.
`Clearly it is the case that the Requester's interpretation of Yanagisawa is based upon an
`
`interpretation of the reference in which the entire conductive trace 1 is operative for both the 800
`
`MHz and 1.45 GHz frequency bands. This interpretation is contrary to the recitation of the claims
`of the '431 patent which now require "the second portion is a second level of structural detail
`
`2 For completeness, Owner notes that antenna element 1 in FIG. 1 serves as the "entire" antenna
`when the Yanagisawa antenna is in the "standby" position, and as a portion of the antenna when the
`antenna is in the "active" position. See, Yanagisawa at col. 16, lines 26-42. It is this "standby"
`antenna upon which the Requester based the rejections over Yanagisawa.
`
`ZTE v Fractus
`IPR2018-01461
`
`ZTE
`Exhibit 1031.0014
`
`

`

`Ex Parte Reexamination of Patent No. 7,397,431
`Control No. 90/013,023
`
`Attorney Docket No.: 0690.0004L1
`PAGElS
`
`within the first level of structural detail, the second portion being smaller than the first
`portion and having a second geometry configured to operate at the second frequency band."
`
`Instead, the proposed rejection set forth by the Requesters proposes a "second portion" that is the
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`same as (i.e., equal in size to) the proposed "first portion."
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`Furthermore, while the analysis and interpretation of Yanagisawa set forth by Requester
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`differ from the explicit disclosures of the reference, the teachings of the reference are consistent
`
`with the understanding that the entire antenna element 1 of Yanagisawa is configured to operate at
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`its disclosed frequencies f1 and f2. Yanagisawa explains that the antenna element 1 can resonate at
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`both of these frequencies because "the antenna can be used as about 1;4 wavelength antenna of the
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`first frequency band (as previously designed) [and] the antenna can be used as about % wavelength
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`antenna of the second frequency band." Yanagisawa, col. 3, line 59-66.
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`In other words,
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`Yanagisawa teaches that its antenna element resonates at a fundamental frequency f1 and at
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`harmonics of the fundamental frequency, particularly even number multiples of the fundamental
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`frequency. See, Yanagisawa at col. 12, line 48-col. 13, line 42; see also Long Dec. at <JI<JI [021](cid:173)
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`[023]. It is understood (and would have been understood at the time of invention of the '431 patent)
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`by one of ordinary skill in the art that the entire length of either a 1;4 wave resonator or a % wave
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`resonator (i.e., a harmonic of the 1;4 resonator) will be operable over the entire length of the
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`resonator at the desired frequency. Long Dec. at <JI<JI [021]-[023]. Furthermore, FIGs. 5c and 5d of
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`Yanagisawa illustrate the concept that the entire conductor is necessary, and therefore operable, for
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`resonance at Yanagisawa's frequencies f1 (as a 1;4 wave resonator) and f2 (as a % wave resonator).
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`See also Long Dec at<JI<JI [021]-[022].
`
`Accordingly, whether one relies on the interpretation of Yanagisawa set forth by the
`
`Requester, or whether one relies on the knowledge of one skilled in the art at that the time of
`
`ZTE v Fractus
`IPR2018-01461
`
`ZTE
`Exhibit 1031.0015
`
`

`

`Ex Parte Reexamination of Patent No. 7,397,431
`Control No. 90/013,023
`
`Attorney Docket No.: 0690.0004L1
`PAGE 16
`
`invention regarding 1;4 wave and % wave (i.e., harmonic) resonators, Yanagisawa would not have
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`disclosed an antenna having an overall structure having a first geometry which is configured to
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`operate at a first frequency band, and a second portion having a second geometry that is smaller
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`than and within the first portion and is configured to operate at a second frequency band, as is
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`now required by the claims. Therefore, Applicant respectfully request that the rejections over
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`Yanagisawa be withdrawn.
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`IX.
`
`REJECTIONS OVER JOHNSON
`In the Request for Ex Parte Reexamination of u.s. Patent No. 7,397,431, the Johnson
`reference is relied upon to reject claim 14 of the '431 patent using an interpretation of the reference
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`which is contrary to teachings of the Johnson reference. Related to the issue of the Requester's non(cid:173)
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`disclosed interpretations of Johnson is that the teachings of Johnson would not have enabled one of
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`ordinary skill
`
`in
`
`the art
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`to "make or carry out the claimed invention without undue
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`experimentation." Elan Pharmaceuticals v. Mayo Foundation, 346 F. 3d 1051, 1054 (Fed. Cir.
`
`2003). Therefore, the Johnson reference fails to present a prima facie case of obviousness, and is
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`also a non-enabling reference for the rejections proposed by the Requester.
`
`A.
`
`The Teachings of Johnson Would Not Have Rendered the Claims Obvious
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`The Johnson reference would have failed to have rendered the claims of the '431 Patent
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`obvious at the time of invention because Johnson does not teach or suggest an overall structure
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`having a first geometry which is configured to operate at a first frequency band, and a second
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`portion having a second geometry that is smaller than and within the first portion and is configured
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`to operate at a second frequency band. Specifically, the relied upon antenna in Johnson is a
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`grouping of single band antennas which are either combined into a single conductive trace which
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`share a feed point as illustrated in FIG. 6 of Johnson, or two antennas that are physically isolated
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`and have individual feed points as illustrated in FIG. 7. More particularly, the Requester has relied
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`on a specific embodiment of the antenna which utilizes a common feed point as illustrated in FIG. 9
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`of Johnson, and simulated using various values within the ranges defined by in Table 1 of Johnson.
`See, .e.g., Request for Ex Parte Reexamination of u.s. Patent No. 7,397,431 at 82.
`The Johnson reference explains that the radiating portions of its antenna are sized to have
`
`quarter wave resonance. Or, as stated in the reference:
`
`ZTE v Fractus
`IPR2018-01461
`
`ZTE
`Exhibit 1031.0016
`
`

`

`Ex Parte Reexamination of Patent No. 7,397,431
`Control No. 90/013,023
`
`Attorney Docket No.: 0690.0004L1
`PAGE 17
`
`The present invention provides an antenna assembly including
`a first planar element having a conductive trace, and at least one
`conductive rnember disposed near the first element to jointly form an
`asymmetrical dipole antenna. The resonant freguency range of the
`dinole
`is Qrimaril.Y determined bv the dimensions of the
`conductive trace on the first planar eiement1 which may be
`selected to exhibit 1/4 wave resonance.
`Johnson, col. 2, lines 32-42 (emphasis added).
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`As further clarified in claims 8 and 29 of Johnson, "separate portions of the first conductor
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`trace radiate within the different two frequency bands during operation." (emphasis added).
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`These 1;4 wave resonators are embodied in the high frequency band resonant portion 26d and
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`the low frequency resonant portion 26e of FIG. 6 of Johnson (reproduced below). Fig. 9 of Johnson
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`also exhibits these high and low frequency resonance portions, specifically a high frequency PCS
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`portion that resonates at 1710-1880 MHz, and a lower frequency cellular portion which resonates at
`880-960 MHz. Accordingly, just as in FIGs. 6 and 7, the pes portion of FIG, 9 would be sized to
`exhibit quarter wavelength resonance for a frequency within the pes band, and the cellular portion
`would be sized to exhibit quarter wavelength resonance in the cellular band,
`
`26d
`l
`
`26e
`
`FIG.
`
`{i
`
`34
`
`2B
`
`When the teachings of Johnson are followed, this is exactly how the Johnson antenna
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`operates, as evidenced by the simulations included in the declaration of Dr. Long. As shown
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`through the simulations, the Johnson antenna operates in the same way whether it is embodied as
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`two separate conductive traces (see, FIGs. 3 and 4 from the Long Dec., reproduced below), and the
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`Johnson antenna exhibits a first portion corresponding to the PCS band, and a second portion
`
`ZTE v Fractus
`IPR2018-01461
`
`ZTE
`Exhibit 1031.0017
`
`

`

`Ex Parte Reexamination of Patent No. 7,397,431
`Control No. 90/013,023
`
`Attorney Docket No.: 0690.0004L1
`PAGElS
`
`corresponding to the cellular band both of which exhibit quarter wave resonance and which only
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`overlap in the areas close to their shared feed point (see, FIGs. 3 and 4