`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`I'NITRD S'I‘A'I'F‘S DEPARTNTEN'I‘ 0F (‘OMIWERCE
`I'niled Slale‘ Patent and Trademark Office
`Address: COMNIISSIONHZ FOR PATENTS
`PO Box [450
`Alexandria. Virginia 22313-1450
`“WV“I IISPIO gm:
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`APPLICATION NO.
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`FILING DATE
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`FIRST NAMED INVENTOR
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`ATTORNEY DOCKET NO.
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`CONFIRMATION .\IO.
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`90/013.024
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`|0/09/2013
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`7,394,432 Bl
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`5974900003432
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`| 3 87
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`
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` ‘ EXAMINER759° ”mm” —t
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`EDELL.SHAPIRO&FINNAN.LL( —
`278%
`9801 Washingtonian Blvd.
`NGUYEN LINH M
`Suite 750
`PAPER NUMBER
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`ART UNIT
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`Gaithersburg, MD 20878
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`3991’
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`MAIL DATE
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`11/01/1013
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`DIlIVERY MODE
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`PAPER
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`Please find below and/or attached an Office communication concerning this application or proceeding.
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`The time period for reply, if any, is set in the attached communication.
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`PTOL—QOA (Rev. 04/07)
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`> UNITED STATES PATEN 1' AND. TRADEW OFFICE
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`
`
`
`Corrrntss loner for Patents
`United States Patent and Trademark Office
`PO BOX 1450
`Alexandria, VA 22313-1450
`mmmmo gov
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`DO NOT USE IN PALM PRINTER
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`(THIRD PARTY REQUESTER'S CORRESPONDENCE ADDRESS)
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`NOVAK, DRUCE & QUIGG. LLP
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`(NDQ REEXAMINATION GROUP)
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`1000 LOUISIANA STREET. FIFTY-THIRD FLOOR
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`HOUSTON, TX 77002
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`EX PARTE REEXAMINATION COMMUNICATION TRANSMI'ITAL FORM
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`REEXAMINATION CONTROL NO. 90/013024.
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`PATENT NO. 7394 432 B2 E.
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`ART UNIT 3992.
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`Enclosed is a copy of the latest communication from the United States Patent and Trademark
`Office in the above identified ex parte reexamination proceeding (37 CFR 1.550(f)).
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`Where this copy is supplied after the reply by requester, 37 CFR 1.535, or the time for filing a
`reply has passed, no submission on behalf of the ex parte reexamination requester will be
`acknowledged or considered (37 CFR 1.550(g)).
`
`PTOL—465 (Rev.O7-04)
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`Application/Control Number: 90/013,024
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`Art Unit: 3992
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`Page 2
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`DECISION ON REQUEST
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`A substantial new question of patcntability (“SNQ”) affccting claim 6 of United States
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`Patent Number 7,394,432 to Baliarda et al. (hereinafter “the ‘432 patent”). entitled
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`"MULTILEVEL ANTENNA". Reexamination was additionally requested of claim 1. Claim 1,
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`among others, was disclaimed by a statutory disclaimer filed 10/08/2013. Note that a statutory
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`disclaimer takes effect upon the time of its proper filing, and its effect is that the claims never
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`existed. Vectra Fitness Inc. v. TNWK Corp, 49 USPQ2d 1144, 1146-47 (Fed. Cir. 1998).
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`Accordingly, claim 1 cannot be subject to reexamination and no determination is made as to
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`claim 1.
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`Since requester did not request reexamination of claims 2-5 and did not assert the
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`existence of a substantial new question of patentability (SNQ) for such claims, such claims will
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`not be reexamined. See MPEP 2243.
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`References Cited in the Request
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`The Request asserts that the following documents raise SNQs of the ‘432 patent:
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`US. Patent No. 5,995,064 to Yanagisawa er al. issued on November 30, 1999
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`("Yanagisawa '064")
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`US. Patent N 0. 6,133,879 to Grangeat er al. issued on October 17, 2000 ("Grangeat")
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`US Patent No. 6,300,914 to Yang issued on October 9, 2001 ("Yang")
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`Application/Control Number: 90/013,024
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`Art Unit: 3992
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`Page 3
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`Misra, Ita et al., "Expeiimental Investigations on the Impedance and Radiation Properties
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`of a Three-Element Concentric Microstrip Antenna," Microwave and Optical Technology
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`Letters, Vol. 11, No. 2, February 5, 1996 ("Misra")
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`Y.X. Guo, et (11., Double U-Slot rectangular patch antenna, Electronic Letters Vol. 34,
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`No. 19 published September 17, 1998 ("Guo").
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`Declaration of Donald G. Bodnar filed with Request (“Bodnar Decl.”).
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`Of the above-mentioned references. Misra and Guo references were of record in the co-
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`pending reexamination proceedings having control numbers 95/001,483 (hereinafter "the '1483
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`proceeding”). Misra has been applied as anticipatory reference and the primary reference in
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`obviousness rejections of the ‘1483 proceeding. Guo has been applied as the primary reference in
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`an obviousness rejection of the ‘1483 proceeding.
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`In the present circumstance, Misra and Guo each was applied in rejections under 35
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`U.S.C. 103 along with the explanation from the Declaration of Dr. Bodnar. at ‘][50. and at ‘1]‘1l77
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`and 87, respectively. Request has successfully presented these references in a new light.
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`Applying “Old Art ”for a New Requestfor Reexamination
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`As stated above, the references Misra and Guo are considered “old art” for the
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`determination of whether a new substantial question of patentability exists in the instant request
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`for reexamination.
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`35 U.S.C. 303( a) provides for ex parte reexamination (emphasis added):
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`Application/Control Number: 90/013,024
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`Art Unit: 3992
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`Page 4
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`"Within three months following the filing of a request for reexamination under
`the provisions of section 302 of this title. the Director will determine whether a
`substantial new question of patentability affecting any claim of the patent
`concerned is raised by the request. with or without consideration of other
`patents or printed publications
`The existence of a substantial new
`question of patentability is not precluded by the fact that a patent or
`printed publication was previously cited by or to the Office or considered
`by the Office."
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`The reexamination statute makes it clear that a SNQ can be raised by patents and
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`printed publications "previously cited by or to the Office or considered by the Office."
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`This provision was added for both ex parte and inter partes reexamination via the
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`Patent and Trademark Office Authorization Act of 2002 (Act of 2002).
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`Therefore, for any reexamination ordered on or after November 2, 2002, the effective date of the
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`statutory revision, reliance on previously cited/considered art, i.e., “old art,” does not necessarily
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`preclude the existence of a substantial new question of patentability (SNQ) that is based
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`exclusively on that old art. Rather, determinations on whether a SNQ exists in such an instance
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`shall be based upon a fact—specific inquiry done on a case-by—case basis.
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`Prosecution History
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`The base patent stems from United States Patent Application No. 11/550,256 (hereinafter
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`“the ‘256 application”).
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`The ‘256 application filed on October 17, 2006 is a divisional of Application No.
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`11/179,257, filed on July 12, 2005, which is a continuation of Application No. 11/102,390, filed
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`on April 8, 2005, now Pat. No. 7,123,208, which is a continuation of Application No.
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`10/963,080, filed on Oct. 12, 2004, now Pat. No. 7,015,868, which is a continuation of
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`Application/Control Number: 90/013,024
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`Art Unit: 3992
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`Page 5
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`Application No. 10/102,568, filed on Mar. 18, 2002, now abandoned, which is a continuation of
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`Application No. PCT/ES99/OO296, filed on September 20. 1999.
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`Applicant filed a Preliminary Amendment in which claims 83 and 88-92 were presented.
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`In response to a first office action, which was an Ex paite Quayle action, Applicant argued that
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`the claimed features were included in the drawings and the examiner issued a Notice of
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`Allowance on 03/28/2008. The reasons for allowance were as follows:
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`Claim 83 (cu1Tent claim 1) is allowable over the art of record because the prior art does
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`not teach the current within the first portion providing the first selected frequency band with
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`radio electric behavior substantially similar to the radio electric behavior of the second and
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`third selected frequency bands, the current within the second portion providing the second
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`selectedfrequency band with radio electric behavior substantially similar to the radio electric
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`behavior of the first and third selected frequency bands, and the current within the third portion
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`providing the third selected frequency band with radio electric behavior substantially similar to
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`the radio electric behavior of the first and second selectedfrequency bands and in combination
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`with the remaining claimed limitations.
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`Thus, prior art showing an antenna having such indicated above allowable features would
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`therefore have been important to a reasonable examiner in considering the patentability of the
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`claims.
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`Application/Control Number: 90/013,024
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`Art Unit: 3992
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`Page 6
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`Related Reexamination Proceedings
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`The ‘432 patent is also the subject of a co-pending reexamination proceedings having a
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`control numbers 95/001,483 and examined by the undersigned examiner, in which claim 6 is
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`under rejection and is awaiting a decision by the Board on Patent Owner’s appeal. That
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`proceeding originated from a request by the current third party requester. Two later requests
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`were filed by different third parties and assigned control numbers 95/000,588 and 95/001,500.
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`The three were merged. though eventually the latter two were terminated under 35 U.S.C. 317.
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`95/001,483 remains pending. and all issues which were deemed to raise an SNQ in the three
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`proceedings are either cun‘ently under appeal as claim rejections or have been resolved due to
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`cancellation/statutory disclaimer of claims or findings of patentability which were not appealed.
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`Claim Construction — General
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`The examiner has construed the claims in the related proceeding, particularly the coined
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`term multilevel structure. See 95/001,483 RAN mailed 12/06/2012 pp. 9—18. The examiner is
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`aware that the Patent Owner disagrees with this construction, but as the issues have already been
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`fully developed in that proceeding the examiner will maintain the same position unless some new
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`evidence (or a related Board or Federal Circuit decision) persuades him otherwise.
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`It should also
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`be noted that the Patent Owner’s proposed definitions are much narrower than those it proposed
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`to the court (and also those definitions the court ultimately adopted) in the related litigation. See
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`Fractus, S.A. v. Samsung Elecs. Co., Memorandum Order and Opinion 12/ 17/2010 6:09cv203
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`Application/Control Number: 90/013,024
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`Art Unit: 3992
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`Page 7
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`(ED. Tex.).l
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`In other words, additional attorney argument is unlikely to change the examiner’s
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`mind. One issue which requires further explanation is “fractal” discussed next.
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`Claim Construction — Fracial
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`In the ‘1483 proceeding and as in the ACP mailed 8/2/2012, the examiner stated that
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`references should be looked at on a case by case basis to determine if the antenna was the type
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`excluded by the ‘432 patent. For example, it was clear to the examiner that fractal antennas from
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`the Cohen and Puente references were excluded, as the ‘432 patent specification specifically
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`referred to nearly identical antennas and distinguished them from multilevel.
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`It was likewise
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`clear that a “fractal” antenna from the Navarro reference was not excluded, because a nearly
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`identically shaped antenna was called multilevel in the '432 patent specification.
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`Now, a new reference is provided which is explicitly a “Fractal” antenna. Yang, Title.
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`This antenna, however, is not substantially similar to any shown in the “432 patent as either part
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`of the invention or not part of the invention. The examiner must therefore determine whether
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`this antenna can be included in the definition of multilevel antennas. as claimed. Note that much
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`of what follows is repeated from the '1483 proceeding, as obviously the ‘432 patent specification
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`has not changed.
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`The patent makes it abundantly clear that fractal antennas do not fall within the definition
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`of multilevel: "Although they are not fractal. multilevel antenna are characterized..." Col. 2 lines
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`36-37.
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`Any dlSCUSSlOI] 0t related litigation herein refers to this case unless stated otheIWise.
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`Application/Control Number: 90/013,024
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`Art Unit: 3992
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`Page 8
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`"Publication WO 97/06578 discloses a fractal antenna. which has nothing to do with a
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`multilevel antenna being both geometries are essentially different." Col. 4 lines 1-3.
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`"It becomes particularly relevant to differentiate multilevel antennae from fractal
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`antennae ...." Col. 6 lines 53 et seq.
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`It is clear and unmistakable that the inventors of the ‘432 patent, who coined and defined
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`the term "multilevel" in relation to antennas, defined the term as distinguishable from fractal
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`antennas. While "multilevel antenna" is not expressly recited in the claims, multilevel structure
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`is, and the same disclaimer applies as this is the structure that makes up a multilevel antenna.
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`The question becomes: if fractal antennas do not fall within the claims, what exactly are
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`fractal antennas? This is unclear, as the ‘432 patent does not explicitly define fractal antennas.
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`So, while fractal antennas are not multilevel, we must explore what exactly is distinguished.
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`The first discussion of fractal antennas is at col. 1 line 54 - col. 2 line 19. This section
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`tells us that fractal objects include an infinite number of objects, and strictly fractal antennae are
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`impossible. It goes on to say that "It is possible to generate antennae with a form based on said
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`fractal objects, incorporating a finite number of iterations." Col. 1 lines 61-63. The practical
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`problems of such antennas are then discussed, col. 1 line 63 - col. 2 line 19, and that such
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`problems were solved by moving away from fractal geometry to a multilevel structure. Col. 2
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`lines 30-31. It thus appears that fractal antennas. as used in the patent, mean those that are based
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`on fractal objects and incorporate a finite number of iterations. This is confirmed at col. 6 lines
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`53 — col. 7 line2, which again tells us that fractal objects, in a strict sense, only exist in the
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`abstract, but that antennas based on fractal geometry have been developed and widely described.
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`Application/Control Number: 90/013,024
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`Art Unit: 3992
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`Page 9
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`So, it becomes apparent that in saying that multilevel antennas are not fractal antennas,
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`the ‘432 patent is not simply referring to strict fractals; obviously multilevel antennas are not
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`strict fractals, as such are impossible in practice. but the patent also distinguishes from the class
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`known as fractal antennas. This class of antennas was well known at the time of the ‘432 patent
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`filing, and the patent specifically recognizes that such antennas are not strict fractals but are
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`based on fractal geometries. Col. 1 lines 54-57.
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`The examiner, just as in the ‘1483 proceeding, appreciates the fact that the district couit
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`did not include "non-fractal" within the definition of multilevel, and did not find any disclaimer.
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`ED. Tex. Claims pp. 10-1 1. The court found that fractal antennas were not defined in the
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`specification, except to say that strictly fractal antennae are a scientific impossibility. Without a
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`definition of fractal, there is no way of determining the parameters of a non-fractal antenna. And,
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`because stn'ctly fractal objects are practically impossible. the antennas of the patent are
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`necessarily non-fractal therefore adding this disclaimer adds nothing to the definition. The court
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`therefore declined to include "non-fractal" in the claim construction.
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`The examiner understands the court's hesitancy to find a disclaimer. But the examiner
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`respectfully believes that, as described above. we can ascertain something from the words of the
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`‘432 patent. That is, the ‘432 patent is not merely distinguishing the practically impossible pure
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`fractal shapes, but has specifically distinguished the class of fractal antennas. Such antennas are
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`not made of strict fractals and are not impossible to form, but are a known class of antennas,
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`which are capable of being built in the real world. At the very least. the patent indicates that “[i]t
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`is possible to generate antennae with a form based on said fractal objects. incorporating a finite
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`Application/Control Number: 90/013,024
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`Art Unit: 3992
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`Page 10
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`number of iterations.” Col. 1 lines 61-63. Such antennas are then clearly and explicitly
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`distinguished from the multilevel antennas later described. The examiner finds that the
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`multilevel antennas of the ‘432 patent, which are made of a multilevel structure, are defined in
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`the specification as being different from and not including fractal antennas.
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`There is still the problem of the Navarro reference, applied in the ‘1483 proceeding. The
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`reference described a “fractal” antenna, but the examiner found that the antenna could be
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`multilevel. The reason the Navarro antenna was not excluded from multilevel was because its
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`shape is substantially the same as the antenna of Fig. 11 of the ‘432 patent, which the patent calls
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`multilevel. The reason why this particular shape is considered fractal by Navarro and at the
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`same time multilevel by the ‘432 patent is not clear; perhaps they do not define fractal in
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`precisely the same way, which is possible given the relevant figures of Navan‘o are of
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`“perturbed" fractals.
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`So. the examiner finds that the definition of multilevel antennas made of a multilevel
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`structure generally excludes fractal antennas, those with a form based on fractal objects,
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`incorporating a finite number of iterations. If a reference refers to itself as fractal, or if it is
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`generally recognized in the art as fractal, it is not multilevel. However, even if the relevant
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`antenna is fractal, an exception would be if the antenna is substantially the same as one the '432
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`patent itself refers to as multilevel. This is the only way to give full effect to the specification -
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`the clear intent to distinguish fractal antennas, along with including any that the specification
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`itself says is multilevel.
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`Application/Control Number: 90/013,024
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`Art Unit: 3992
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`Claim Construction — Multilevel Structure
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`Page 1 1
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`As in the ‘ 1483 proceeding, the term "multilevel stiucture" is included in each claim in
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`this proceeding therefore it is important to determine what this term means. During
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`reexamination, claims are given their broadest reasonable interpretation consistent with the
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`specification. In re Yamamoto, 222 USPQ 934, 936—37 (Fed. Cir. 1984). This generally means
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`that words of the claims are given their plain meaning unless inconsistent with the specification.
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`See MPEP 2111.01 (1). However, an applicant [or patent owner] may be her own lexicographer,
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`and where a definition for a term is clearly set forth. that definition controls interpretation of the
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`term in the claims. See MPEP 2111.01 (IV). In performing this lexicography function, "[t]he
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`specification may reveal an intentional disclaimer, or disavowal, of claim scope by the inventor.
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`In that instance as well, the inventor has dictated the correct claim scope, and the inventor's
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`intention, as expressed in the specification, is regarded as dispositive." Phillips v. AWH Corp., 75
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`USPQ2d 1321, 1329 (Fed. Cir. 2005) (en banc) (citing SciMea' Life Sys., Inc. v. Advanced
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`Cardiovascular .S'ys.: lnc.. 58 US PQ2d 1059. 1062-63 (Fed.Cir.2001) ("Where the specification
`
`makes clear that the invention does not include a particular feature, that feature is deemed to be
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`outside the reach of the claims of the patent, even though the language of the claims, read
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`without reference to the specification, might be considered broad enough to encompass the
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`feature in question.")); see also In re Am. Acad. OfSci. Tech Ctr., 70 USPQ2d 1827. 1831 (Fed.
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`Cir. 2004) (acknowledging possibility of disavowal of claim scope during reexamination if clear
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`in the specification).
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`"Multilevel structure" was not a term used in the art at the time of the ‘432 patent, and
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`apparently was coined by the inventors. Thus. their lexicography govems, including any
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`Application/Control Number: 90/013,024
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`Art Unit: 3992
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`Page 12
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`disavowal of claim scope. But again, the definition must be clear from the specification. We will
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`therefore look to the specification to determine what is meant by the term. Many features of a
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`multilevel structure can be seen at col. 4 line 54 et seq., which starts with "A multilevel
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`structure is characterized in that..." From this, we gather several important characteristics:
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`- A plurality of polygons of the same type (i.e. same number of sides)
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`- The polygons are electromagnetically coupled, via direct contact or by close proximity
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`' At least 75% of the elements (polygons) have more than 50% of their perimeter not in
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`contact with other elements of the structure
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`- Due to the above, one can individually distinguish most of the component polygons,
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`presenting at least two levels of detail: that of the overall structure, and that of the polygons that
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`form it. To the extent this feature is not claimed, it appears essential to the definition as it is the
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`very reason behind the name multilevel. Col. 2 lines 44-55, 60-64.
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`- The construction materials and the configuration in an antenna (i.e. monopole, dipole,
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`patch, etc.) do not affect the definition; the geometry of the structure is what matters.
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`Col. 5 lines 49—64.
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`These characteristics appear to be the most basic definition of a multilevel structure and
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`come with the term when it is in the claims.
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`Thus, so far, we take the meaning of “multilevel structure" with regards to the present
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`claims to include the bulleted material above.
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`Claim Construction — Multi-band
`
`One issue is whether a "multilevel structure" inherently is multi-band. The only
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`Application/Control Number: 90/013,024
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`Art Unit: 3992
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`Page 13
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`independent claim in this proceeding, Claim 1, is drawn to "A multi-band antenna comprising a
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`conductive radiating element including at least one multilevel structure." The district court held
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`that to the extent "multi-band" is recited only in the preambles it is not limiting. but nevertheless
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`a "multilevel structure" necessarily is useable at multiple frequency bands. E.D. Tex. Claims pp.
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`1 1-13, 31-35. The examiner sees no need at this time to dispute what the district court has said;
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`therefore. it is agreed that the claims require the antenna to be multi-band via the multilevel
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`structure being multi-band. Additionally, one might consider the preamble to be limiting. Rather
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`than merely describing a function or intended use of the antenna, being "multi-band" might more
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`accurately be described as actually saying what the device is. That is, the radiation
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`characteristics, and whether the antenna operates in a single band or multi-band nature,
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`necessarily depends upon the stmcture of the antenna; therefore, in describing the antenna as
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`multi-band in the claim, the claim also implies and requires the stmcture enabling the antenna to
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`operate as such. It is not simply that any antenna can operate in either single or multiple bands,
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`thus the preamble statement would seem to be more than mere intended use, it would seem to
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`breathe life and meaning into the claim by stating what type of antenna is claimed. But again, in
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`any event, "multi-band" is a requirement of the claim, whether the preamble has meaning, or due
`
`to the multilevel structure as stated by the district court. This analysis is deemed sufficient at this
`
`time.
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`
`Disclaimers 0 Disclaimers
`
`The examiner is aware, as pointed out in the Request, that the Patent Owner has
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`ostensibly disclaimed any disclaimer that it might have made. See Request p. 24 n. 10 (citing
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`reexamination of child patent, where patent owner stated that it “rescinds any disclaimer of claim
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`Application/Control Number: 90/013,024
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`Art Unit: 3992
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`Page 14
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`scope made in” any predecessor patent (such as the ‘432 patent). The proposition that a patent
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`owner may rescind any disclaimer of claim scope merely by saying so. particularly a disclaimer
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`found in the specification, is quite dubious in the examiner’s opinion. At the very least, there is a
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`strong public policy notion that the public is entitled to rely upon what the patent owner says
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`about her invention, particularly clear and unmistakable disclaimers found in the specification.
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`Furthermore, we are looking here at disclaimers/definitions found in the specification at the time
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`of issuance of the patent. As patent owner has argued. multilevel structure/antenna is a coined
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`term, therefore we must use the definition found in the specification. Patent owner, in rescinding
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`disclaimers, is attempting to change the definition by removing disclaimers. i.e. removing
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`limitations on the definition. This would have the effect of broadening the definition, therefore
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`broadening the claims. which is explicitly not permitted during a reexamination proceeding. See
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`35 U.S.C. 314(a); 37 CFR 1.906(b). While 35 U.S.C. 314(a) prohibits amendments that broaden
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`the claims. 37 CFR 1.906(b) merely states that claims cannot enlarge the scope of the claims of
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`the patent, i.e. the claims cannot be broader than they were originally. If patent owner could
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`broaden its definition it could broaden the claims. The examiner does not accept that any
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`disclaimer/definition that “multilevel antenna” does not include fractal antennas has been
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`rescinded. because such disclaimer/definition comes from the specification.
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`Requester’s Proposed Rejections/SNQs
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`A.
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`B.
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`C.
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`Claims 1 and 6 are rendered obvious by Yanagisawa ‘064 under 35 U.S.C. § 103
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`Claims 1 and 6 are anticipated by Grangeat under 35 U.S.C. § 102
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`Claims 1 and 6 are anticipated by Yang under 35 U.S.C. § 102
`
`ZTE (USA), Inc. v. Fractus S.A.; |PR2018—O1461
`Page 15 of 23
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`Fractus S.A.
`
`Ex. 2029
`
`

`

`Application/Control Number: 90/013,024
`
`Art Unit: 3992
`
`Page 15
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`D.
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`E.
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`Claims 1 and 6 are rendered obvious by Misra under 35 U.S.C. § 103
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`Claims 1 and 6 are rendered obvious by Guo under 35 U.S.C. § 103.
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`Discussion of the References Permitting to the Alleged SNQs
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`As indicated at page 1 above, no determination is made as to claim 1, though the
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`discussion in the Request as to claim 1 remains relevant as they are parents of claims 6.
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`An SNQ is raised as to claim 6 based on Requester's proposals A, D and E. No SNQ is
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`raised based on proposals B and C.
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`Proposal A: Obviousness by Yanagisawa ‘064
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`It is agreed that Yanagisawa ‘064 raises SNQ for claim 6 of the '432 patent. Insofar as
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`the explanation at page 47 of the request and the item-matching in Appendix CC-A of the request
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`at least facially suggests that Yanagisawa ‘064 teaches the multi-band antenna. wherein said
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`antenna is included in a portable communications device. See Yanagisawa ‘064, col. 1, lines 8-
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`15. A reasonable examiner would consider that Yanagisawa ‘064 important in deciding whether
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`or not claim 6 of the '432 are patentable. Accordingly, Yanagisawa ‘064 raises a substantial new
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`question of patentability as to claim 6, which question has not been decided in a previous
`
`examination of the '432 patent.
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`Such teachings are not cumulative to any written discussion on the record of the
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`teachings of the prior art. were not previously considered nor addressed during a prior
`
`ZTE (USA), Inc. v. Fractus S.A.; |PR2018—O1461
`Page 16 of 23
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`Fractus S.A.
`
`Ex. 2029
`
`

`

`Application/Control Number: 90/0 13,024
`
`Art Unit: 3992
`
`Page 16
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`examination and the same question of patentability was not the subject of a final holding of
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`invalidity by Federal Courts.
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`Proposal B: Anticipation by Grangeat
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`It is not agreed that Grangeat raises an SNQ as to claim 6.
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`MPEP 2240(11) states:
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`If a second or subsequent request for ex parte reexamination is filed (by any party) while a first ex parte
`reexamination is pending. the presence of a substantial new question of patentability depends on the prior
`art (patents and printed publications) cited by the second or subsequent requester. If the requester includes
`in the second or subsequent request prior art which raised a substantial new question in the pending
`reexamination. reexamination should be ordered only if the prior art cited raises a substantial new question
`of patentability which is different front that raised in the pending reexamination proceeding. If the prior art
`cited raises the same substantial new question of patentability as that raised in the pending reexamination
`proceedings. the second or subsequent request should be denied.
`
`If the second or subsequent requester does not include the prior ml which raised a substantial new question
`of patentability in the pending reexamination. reexamination may or may not be ordered depending on
`whether the different prior art raises a substantial new question of patentability. The second or subsequent
`request should be determined on its own merits without reference to the pending reexamination.
`
`Furthermore. MPEP 2242(1) states:
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`If the prior art patents and printed publications raise a substantial question of patentability of at least one
`claim of the patent. then a substantial m question of patentability is present. unless the same question
`of patentability has already been decided .
`.
`. by the Office in a previous examination or pending
`reexamination of the patent. A “previous examination” of the patent is; (A) the original examination of the
`application which matured into the patent; (B) the examination of the patent in a reissue application that has
`resulted in a reissue of the patent; or (C) the examination of the patent in an earlier pending or concluded
`reexamination.
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`As to this requirement, the third party states that Grangeat discloses the technical feature
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`that was deemed missing during the on'ginal prosecution. Request pp. 18-20. Notably. Grangeat
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`is not in any way compared with the earlier pending reexamination, nor is it explained how
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`Grangeat raises a new question of patentability when compared with that proceeding.
`
`ZTE (USA), Inc. v. Fractus S.A.; |PR2018—O1461
`Page 17 of 23
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`Fractus S.A.
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`Ex. 2029
`
`

`

`Application/Control Number: 90/013,024
`
`Art Unit: 3992
`
`Page 17
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`As stated by the third party, “Grangeat discloses a multifrequency microstrip antenna that
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`enables two resonances to be established in two respective areas.” Request p. 19. The antenna is
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`made of numerous four sided polygons, and the overall structure is not four sided.
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`It is said to be
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`useable in a portable communication device. No particulars are given as to the radio—electric
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`behavior, impedance, or radiation pattems. The third party has not provided any explanation as
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`to its operation that might provide different technological teachings from the references of the
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`‘1483 proceeding, for example evidence of operation like it did for Yanagisawa, Misra and Guo.
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`It is not apparent then how the teachings of Grangeat differ from, for example, Chiba,
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`applied in the '1483 proceeding. Chiba describes a multiband antenna in Fig. 14 having first,
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`second, and third portions 142-1 to —3 defining empty spaces l42b in the overall structure, with
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`the second and third portions being located substantially within the first portion. See Request pp.
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`105-107. Chiba does not explicitly discuss the radio electric behavior of the portions of Fig. 14
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`but Figs. 6-11 are relied on for similar behaviors of the first, second. and third bands of the
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`respective portions of Fig. 14. As far as claim 6 is concerned. there does not appear to be
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`anything, relevant to claim 6, which is in Grangeat but is not in Chiba. That is, if the rejections
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`based on Chiba in the ‘1483 were to be reversed, any rejection based on Grangeat would be
`
`improper for the very same reasons. Likewise, if the rejections based on Chiba are upheld.
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`rejections based on Grangeat would also succeed. There is no question of patentability raised by
`
`Grangeat which is new and different from that raised by Chiba in the ‘ 1483 proceeding. As the
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`third party has not shown a new question of patentability different from that present in the ‘1483
`
`proceeding, there is no SNQ raised in this proposal. See 90/009,970, Petition Decision 8/14/20] 2
`
`ZTE (USA), Inc. v. Fractus S.A.; |PR2018—O1461
`Page 1