Ex Parte Kim et al

Patent Trial and Appeal Board

Mar 11, 2014

12218514 (P.T.A.B. Mar. 11, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte SEON-JUN KIM
and DONG-BEOM SEOL
____________

Appeal 2012-001774
Application 12/218,514
Technology Center 2800
____________

Before CHUNG K. PAK, GEORGE C. BEST, and
N. WHITNEY WILSON, Administrative Patent Judges.

BEST, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2012-001774
Application 12/218,514
2
On September 2, 2010, the Examiner finally rejected claims 1-20 of
Application 12/218,514 under 35 U.S.C. § 103(a) as obvious and rejected
claim 9 under 35 U.S.C. § 112, ¶ 2, as indefinite. Appellants1 seek reversal
of these rejections pursuant to 35 U.S.C. § 134(a). We have jurisdiction
under 35 U.S.C. § 6(b).
For the reasons set forth below, we AFFIRM. Because our reasons
for affirming rely upon factual determinations and reasoning that differ from
those expressed by the Examiner, we designate our affirmance as a new
ground of rejection pursuant to 37 C.F.R. § 41.50(b). See In re Stepan Co.,
660 F.3d 1341, 1344 (Fed. Cir. 2011).
BACKGROUND
The ’514 application describes an improved planar inverted F antenna
(“PIFA”). Spec. ¶ 002. Such antennas can be used in a variety of wireless
devices, including cellular telephones. Id. at ¶ 003. Appellants’ alleged
improvement comprises the addition of an auxiliary plate between a ground
surface and an antenna body in a PIFA. Id. at ¶ 002.
Claim 1 is representative of the ’514 application’s claims and is
reproduced below with the disputed limitation italicized:
1. A planar inverted F antenna comprising:
a ground surface having a finite plane and formed of a
conductive material;
an antenna body at a certain distance from the ground surface
and transmitting and receiving radio waves;

1 Samsung Electronics Corp. is identified as the real party in interest. (App.
Br. 3.)
Appeal 2012-001774
Application 12/218,514
3
a feed line for electrically connecting the ground surface and
the antenna body;
a ground pin for grounding the antenna body to the ground
surface; and
at least one auxiliary plate disposed between the antenna body
and the ground surface,
wherein a distance between the least one auxiliary plate and
the antenna body is constant.
(App. Br. Claims App’x A1 (emphasis added).)
REJECTION
On appeal, the Examiner maintains the following rejection:2
Claims 1-20 are rejected under 35 U.S.C. § 103(a) as obvious over the
combination of Rahola3 and Wang.4 (Ans. 4.)
DISCUSSION
Appellants divide their claims into three groups, each consisting of an
independent claim and the claims that depend from it. We address each of
these groups below.

2 Appellants filed a Response and Amendment to Final Office Action that
includes an argument against the rejection of claim 9 under 35 U.S.C. § 112,
¶ 2. Amendment 7-8 (Nov. 2, 2010). The Examiner neither mentioned
Appellants’ argument nor the § 112 rejection in the subsequent Advisory
Action. Advisory Action (Dec. 16, 2010). The Examiner’s Answer,
however, does not reassert the rejection. We, therefore, deem the rejection
of claim 9 under § 112, ¶ 2 to be withdrawn.
3 U.S. Patent Application Publication No. 2008/0001829 A1, published
Jan. 3, 2008.
4 U.S. Patent Application Publication No. 2005/0140554 A1, published June
30, 2005.
Appeal 2012-001774
Application 12/218,514
4
Claims 1-8. Appellants argue that the rejection of these claims should
be reversed because “the cited references fail to teach or suggest all the
claim elements of independent Claim 1.” (App. Br. 13.) We, therefore, only
address the rejection of claim 1. The remaining claims in this group stand or
fall with claim 1. 37 C.F.R. § 41.37(c)(1)(vii).
In rejecting claim 1, the Examiner relies upon Rahola. Rahola
describes antennas for use in mobile communication devices that can be
tuned to be operable in a variety of frequency bands. Rahola ¶ 0001. The
Examiner found that Rahola describes every limitation in claim 1 except for
the limitation requiring that a distance between the auxiliary plate and the
antenna body remains constant. (Ans. 4-5 (citing Rahola Fig. 8c).) Indeed,
the Examiner states that “Rahola does not explicitly disclose a state where
the distance between the auxiliary plate and the antenna body is constant.”
(Ans. 5.) To fill this supposed gap in Rahola’s description, the Examiner
relies upon Wang as describing a PIFA with a fixed auxiliary plate and, thus,
a constant distance between the antenna body and the auxiliary plate. (Id.)
Appellants argue that a person of ordinary skill in the art would not
modify Rahola to incorporate Wang’s fixed auxiliary plate because doing so
would (1) change Rahola’s principle of operation (App. Br. 13 (citing In re
Ratti, 270 F.2d 810 (CCPA 1959))) and (2) render the resulting antenna
unsatisfactory for its intended purpose (id. at 14 (citing In re Gordon, 733
F.2d 900 (Fed. Cir. 1984))).
We are not persuaded by Appellants’ arguments for the following
reasons:
First, contrary to the Examiner’s statement, Rahola does describe
multiple embodiments of a PIFA in which a distance between the auxiliary
Appeal 2012-001774
Application 12/218,514
5
plate and the antenna body is constant. For example, Rahola’s Figure 8c is
reproduced below:
Figure 8c is a schematic representation of a PIFA in which the antenna
element is electromagnetically coupled to a vertical strip which can be bent
by a mechanical device. Rahola ¶ 0022. As shown above, the antenna
comprises antenna element 10, ground plane 92, feed line 20, grounding pin
22, and a vertical strip whose shape and position can be adjusted by actuator
62. Id. at ¶ 0060.
In operation, the antenna shown in Figure 8c can be used in at least 3
states:
As shown in FIG. 8a, part of the actuator is located below the
antenna element 10 when the actuator 62 is in [state 1]. In
[state 2], the actuator is bent outward away from the antenna
element 10. In [state 3], the actuator is bent inward so that a
larger part of the actuator is located beneath the antenna
element.
Id.
As can be seen in Figure 8c, the vertical distance between actuator 62
and antenna element 10 does not change as the resonant frequency of the
antenna is adjusted by changing the shape of actuator 62.

Appeal 2012-001774
Application 12/218,514
6
Rahola also describes another embodiment which meets the disputed
claim limitation. Rahola’s Figure 6 is reproduced below:
Figure 6 is a schematic representation of a tunable inverted-L antenna
electromagnetically coupled to conductive plate 52 which can be shifted in a
lateral direction by a mechanical device. Rahola ¶ 0018. As can be seen,
the vertical separation between antenna element 10 and conductive plate 52
remains constant in this embodiment. Although Figure 6 shows an inverted-
L antenna, Rahola states that “[t]he antenna element 10 can be part of a
planar antenna with or without a grounding pin 22. . . . With the grounding
pin 22, the antenna element 10 is part of an inverted-F antenna (IFA), as
shown in FIG. 8c.” Id. at ¶ 0061. Although this description is directed to
the structures shown in Figures 8a-8c, it also applies to the antenna shown in
Figure 6.
Second, Appellants argue that Rahola does not describe an antenna
having “a distance between the at least one auxiliary plate and the antenna
body [that remains] constant” because Rahola describes shifting the position
of the auxiliary plate to change the resonant frequency of the antenna
assembly. (App. Br. 13-14.) This argument seems to assume that the claim
language in question requires the auxiliary plate to have a fixed position.
Such an assumption is incorrect. As the Examiner explains, Rahola
describes antenna assemblies in which the auxiliary plate maintains at least
one constant distance between the auxiliary plate and the antenna element
after the antenna is tuned to a particular set of frequencies. (Ans. 10.) We
Appeal 2012-001774
Application 12/218,514
7
agree with the Examiner that this description is sufficient to describe or
suggest the disputed claim limitation.
In view of the foregoing, the combination of Rahola and Wang would
have rendered the subject matter of claim 1 obvious to one of ordinary skill
in the art. We, therefore, affirm the Examiner’s rejection of claims 1-8 of
the ’514 application.
Claims 9-16. Appellants argue for reversal of the rejection of these
claims as a group based upon the limitations in claim 9. Claims 10-16,
therefore, stand or fall with claim 9. 37 C.F.R. § 41.37(c)(1)(vii).
Appellants present two arguments for reversal of this rejection. For the
reasons set forth below, we affirm the Examiner’s rejection of these claims
as obvious over the combination of Rahola and Wang. We also enter an
additional rejection of claims 9-16 under 35 U.S.C. § 112, ¶ 2.
We begin by noting that claim 9 is indefinite. We reproduce claim 9
below, with the claim language in question emphasized:
9. A planar inverted F antenna comprising:
a ground surface having a finite plane and formed of a
conductive material;
an antenna body at a certain distance from the ground surface
and transmitting and receiving radio waves;
a feed line for electrically connecting the ground surface and
the antenna body;
a ground pin for grounding the antenna body to the ground
surface; and
at least one auxiliary plate disposed between the antenna body
and the at least one auxiliary plate to be inclined with respect
to the ground surface,
wherein a distance between the least one auxiliary plate and the
antenna body is constant.
Appeal 2012-001774
Application 12/218,514
8
(App. Br. Claims App’x A-3 (emphasis added).)
The emphasized limitation is indefinite because it does not identify
the elements between which the auxiliary plate is located. We therefore
reject claims 9-16 under 35 U.S.C. § 112, ¶ 2 as indefinite. For the purpose
of the appeal of the obviousness rejection, we shall assume that Appellants
intended to specify that the auxiliary plate is between the antenna body and
the ground surface.
Appellants argue that the obviousness rejection should be reversed
because the cited prior art neither describes nor suggests an auxiliary plate
“disposed between the antenna body [and the ground surface] and the at
least one auxiliary plate to be inclined with respect to the ground surface.”
The Examiner relies upon Figure 3 of Rahola as describing an auxiliary plate
that is inclined with respect to the ground surface. (Ans. 6-7.) We agree
with Appellants that the Examiner erred in finding that end section 12 of
antenna body 10 depicted in Rahola’s Figure 3 is an auxiliary plate. Based
upon Figure 3 and Rahola’s description, we find that end section 12 is part
of antenna body 10. See Rahola ¶ 0055.
Notwithstanding this error, the combination of Rahola and Wang
would have suggested an auxiliary plate that is inclined with respect to the
ground surface to a person of ordinary skill in the art. Rahola describes
embodiments in which the auxiliary plate is parallel to the ground surface,
e.g., Fig. 6, ¶ 0059, and perpendicular to the ground surface, Figs. 8a-8c; ¶
0060. Rahola also describes two embodiments which vary the angle
between an auxiliary plate and the ground surface by bending the auxiliary
plate. See Rahola Figs. 5a, 5b; ¶ 0058. Finally, Rahola describes several
embodiments that change the angle between at a portion of the antenna
element and the ground surface. Rahola Figs. 2-4; ¶¶ 0054-0057.
Appeal 2012-001774
Application 12/218,514
9
Furthermore, Wang teaches that the resonant frequency of an antenna
assembly depends upon its geometry. Wang ¶ 0002-0003. Thus, a person of
ordinary skill in the art would understand that the auxiliary plate can be
inclined with respect to the ground surface.
Appellants also argue that the rejection of claims 9-16 should be
reversed because the combination of Rahola and Wang do not describe or
suggest an antenna assembly “wherein a distance between the at least one
auxiliary plate and the antenna body is constant.” (App. Br. 15-17.) We
have already explained why we are not persuaded by this argument. Supra.
In sum, we affirm the rejection of claims 9-16 as obvious over the
combination of Rahola and Wang. We also have newly rejected these
claims under 35 U.S.C. § 112, ¶ 2 as indefinite.
Claims 17-20. Appellants also argue that the rejection of claims 17-
20 should be reversed because the combination of Rahola and Wang do not
describe or suggest an antenna assembly “wherein a distance between the at
least one auxiliary plate and the antenna body is constant.” (App. Br. 17-
20.) We have already explained why we are not persuaded by this argument.
Supra.
CONCLUSION
For the reasons discussed above, we affirm the rejection of claims 1-
20 as obvious over the combination of Rahola and Wang. Because we rely
upon factual findings and reasoning that differ from the Examiner, we
designate our affirmance as a new ground of rejection. We also have newly
rejected claims 9-16 as indefinite.

Appeal 2012-001774
Application 12/218,514
10
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.”
37 C.F.R. § 41.50(b) also provides that the appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the proceeding
will be remanded to the examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record. . . .

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED, NEW GROUND OF REJECTION
PURSUANT TO 37 C.F.R. § 41.50(b)

cdc