UNITED STATES PATENT AND TRADEMARK OFFICE
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`www.uspto.goV
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`§¢§1 AN»
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`*
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`9
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`‘-
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`APPLICATION NO.
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`F ING DATE
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`FIRST NAMED INVENTOR
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`ATTORNEY DOCKET NO.
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`CONFIRMATION NO.
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`13/652,969
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`10/16/2012
`
`Donald Andrew Burris
`
`H112-019
`
`7208
`
`come INCORPORATED
`INTELLECTUAL PROPERTY DEPARTMENT, SP—TI—3—1
`CHUNG TRANS, XUONG MY
`CORNING, NY 14831
`
`ART UNIT
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`PAPER NUIVIBER
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`2833
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`NOTIFICATION DATE
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`DELIVERY MODE
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`12/19/2014
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`ELECTRONIC
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`The time period for reply, if any, is set in the attached communication.
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`Notice of the Office communication was sent electronically on aboVe—indicated "Notification Date" to the
`following e—mail address(es):
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`usdocket @ c0rning.c0m
`
`PTOL—90A (Rev. 04/07)
`
`PPC Exhibit 2006
`
`Coming v. PPC
`|PR2016—O1569
`
`

`
`Application No.
`13/652,969
`
`App|icant(s)
`BURRIS, DONALD ANDREW
`
`0ffiCe ACtiOn Summary
`
`AIA (First Inventor to File)
`Art Unit
`Examiner
`iltgtus
`2833
`XUONG CHUNG TRANS
`-- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address --
`Period for Reply
`
`A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE § MONTHS FROM THE MAILING DATE OF
`THIS COMMUNICATION.
`Extensions of time may be available under the provisions of 37 CFR1.136(a).
`after SIX (6) MONTHS from the mailing date of this communication.
`If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHS from the mailing date of this communication.
`—
`— Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133).
`Any reply received by the Office later than three months after the mailing date of this communication, even if timely filed, may reduce any
`earned patent term adjustment. See 37 CFR 1 .704(b).
`
`In no event, however, may a reply be timely filed
`
`Status
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`1)|Z| Responsive to communication(s) filed on 10/1/14.
`El A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
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`2b)IXI This action is non—final.
`2a)I:I This action is FINAL.
`3)I:I An election was made by the applicant in response to a restriction requirement set forth during the interview on
`; the restriction requirement and election have been incorporated into this action.
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`4)|:I Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
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`closed in accordance with the practice under Exparte Quayle, 1935 C.D. 11, 453 O.G. 213.
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`Disposition of Claims*
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`5)|X| Claim(s) 1) is/are pending in the application.
`5a) Of the above claim(s) 6 and 18 is/are withdrawn from consideration.
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`6)|:I Claim(s) j is/are allowed.
`7)|Z| Claim(s) 7-17and 19-30is/are rejected.
`)
`'
`(
`) j is/are objected to.
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`)j are subject to restriction and/or election requirement.
`* If any claims have been determined allowable, you may be eligible to benefit from the Patent Prosecution Highway program at a
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`participating intellectual property office for the corresponding application. For more information, please see
`
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`h/indexfis or send an inquiry to PPl-ifeedbackf,<‘Bus§tc.Gov.
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`://www.us:>to. ow atents/init events/
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`htt
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`Application Papers
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`10)|:l The specification is objected to by the Examiner.
`11)I:l The drawing(s) filed on
`is/are: a)I:I accepted or b)I:I objected to by the Examiner.
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
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`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121 (d).
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`Priority under 35 U.S.C. § 119
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`12)I:I Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`Certified copies:
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`a)|:l All
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`b)|:| Some** c)|:l None of the:
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`1.I:I Certified copies of the priority documents have been received.
`2.I:| Certified copies of the priority documents have been received in Application No. j.
`3.|:| Copies of the certified copies of the priority documents have been received in this National Stage
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`application from the International Bureau (PCT Rule 17.2(a)).
`** See the attached detailed Office action for a list of the certified copies not received.
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`Attachment(s)
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`3) D jme,-View summary (PTQ.413)
`1) E Notice of References Cited (PTO-892)
`Paper No(s)/Mail Date. j
`_
`_
`2) E Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
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`Paper No(s)/Mail Date 12/5/14- 1o/s/14- 9/1s/14- s/29/14- 4/24/13. 4) CI Owe" :-
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`U.S. Patent and Trademark Office
`PTOL—326 (Rev. 11-13)
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`Part of Paper No./Mail Date 20141209
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`Office Action Summary
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`

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`Application/Control Number: 13/652,969
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`Page 2
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`Art Unit: 2833
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`The present application is being examined under the pre-AIA first to invent
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`provisions.
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`Election/Restrictions
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`Applicant’s election without traverse of species 1, claims 1-5, 7-17 and 19-30 in
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`the reply filed on September 30, 2014 is acknowledged.
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`in the amendment filed on October 1, 2014, claim 14 has been amended.
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`Therefore claims 1-30 are pending.
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`Claims 6 and 18 are withdrawn from further consideration pursuant to 37 CFR
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`1.142(b) as being drawn to a nonelected species, there being no allowable generic or
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`linking claim. Election was made without traverse in the reply filed on September 30,
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`2014.
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`Information Disclosure Statement
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`The Examiner would like to note the latest Information Disclosure Statement (IDS) subrnittals
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`are extremely long. The Examiner has considered all of the references submitted as part of the
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`Information Disclosure Statements, but has not found any to be particularly relevant. If
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`Applicant is aware of pertinent material in the references, s/he should so state in a response to
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`this Office action. Applicant is reminded of section 2004, paragraph 13, of the MPEP:
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`It is desirable to avoid the submission of long lists of documents if it can be
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`avoided. Eliminate clearly irrelevant and marginally pertinent cumulative
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`information. If a long list is submitted, highlight those documents which have
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`been specifically brought to app1icant’s attention and/or are known to be of most
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`

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`Application/Control Number: 13/652,969
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`Page 3
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`Art Unit: 2833
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`significance. Sec Penn Yan Boats, Inc. v. Sea Lark Boats, Inc., 359 F. Supp. 948,
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`175 USPQ 260 (S.D. Fla. 1972), afi’ ’d, 479 F.2d 1338, 178 USPQ 577 (5th Cir.
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`1973), cert. denied, 414 U.S. 874 (1974). But cf. Molins PLC v. Textron Inc., 48
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`F.3d 1172, 33 USPQ2d 1823 (Fed. Cir. 1995).
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`Double Patenting
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`The nonstatutory double patenting rejection is based on a judicially created
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`doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the
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`unjustified or improper timewise extension of the “right to exclude” granted by a patent
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`and to prevent possible harassment by multiple assignees. A nonstatutory double
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`patenting rejection is appropriate where the claims at issue are not identical, but at least
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`one examined application claim is not patentably distinct from the reference claim(s)
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`because the examined application claim is either anticipated by, or would have been
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`obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d
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`1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir.
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`1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum,
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`686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619
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`(CCPA 1970); and In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
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`A timely filed terminal disclaimer in compliance with 37 CFR 1.321 (c) or 1.321(d)
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`may be used to overcome an actual or provisional rejection based on a nonstatutory
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`double patenting ground provided the reference application or patent either is shown to
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`be commonly owned with this application, or claims an invention made as a result of
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`

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`Application/Control Number: 13/652,969
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`Page 4
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`Art Unit: 2833
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`activities undertaken within the scope of a joint research agreement. A terminal
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`disclaimer must be signed in compliance with 37 CFR 1.321 (b).
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`The USPTO internet Web site contains terminal disclaimer forms which may be
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`used. Please visit http://www.uspto.gov/forms/. The filing date of the application will
`
`determine what form should be used. A web—based eTerminal Disclaimer may be filled
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`out completely online using web-screens. An eTerminal Disclaimer that meets all
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`requirements is auto-processed and approved immediately upon submission. For more
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`information about eTerminal Disclaimers, refer to
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`http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-l.jsp.
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`Claims 1-5, 7-17 and 19-30 are provisionally rejected on the ground of
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`nonstatutory double patenting as being unpatentable over claims 1- 24 of copending
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`Application No. 13/833793. Although the claims at issue are not identical, they are not
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`patentably distinct from each other because the claimed limitations recited in the
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`present application are transparently found in the copending application 13/833793 with
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`obvious wording variations. The slight differences are either encompassed by the '793
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`claims or are obvious variation especially in light of the '793 disclosure.
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`This is a provisional nonstatutory double patenting rejection because the
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`patentably indistinct claims have not in fact been patented.
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`Claims 1-5, 7-17 and 19-30 are provisionally rejected on the ground of
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`nonstatutory double patenting as being unpatentable over claims 1-4, 15, 16 of
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`

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`Application/Control Number: 13/652,969
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`Page 5
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`Art Unit: 2833
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`copending Application No. 13/605498. Although the claims at issue are not identical,
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`they are not patentably distinct from each other because the claimed limitations recited
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`in the present application are transparently found in the copending application
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`13/605498 with obvious wording variations. The slight differences are either
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`encompassed by the '498 claims or are obvious variation especially in light of the '498
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`disclosure.
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`This is a provisional nonstatutory double patenting rejection because the
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`patentably indistinct claims have not in fact been patented.
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`Claims 1-5, 7-17 and 19-30 are provisionally rejected on the ground of
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`nonstatutory double patenting as being unpatentable over claims 1- 8, 13-18, and 21
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`of copending Application No. 13/653095. Although the claims at issue are not identical,
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`they are not patentably distinct from each other because the claimed limitations recited
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`in the present application are transparently found in the copending application
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`13/653095 with obvious wording variations. The slight differences are either
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`encompassed by the '095 claims or are obvious variation especially in light of the '095
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`disclosure.
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`This is a provisional nonstatutory double patenting rejection because the
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`patentably indistinct claims have not in fact been patented.
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`Claim Rejections - 35 USC § 102 & 103
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`The following is a quotation of the appropriate paragraphs of pre-AlA 35 U.S.C.
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`102 that form the basis for the rejections under this section made in this Office action:
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`

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`Application/Control Number: 13/652,969
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`Page 6
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`Art Unit: 2833
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`A person shall be entitled to a patent unless —
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`(a) the invention was known or used by others in this country, or patented or described in a
`printed publication in this or a foreign country, before the invention thereof by the applicant for
`a patent.
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`The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis
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`for all obviousness rejections set forth in this Office action:
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`(a) A patent may not be obtained though the invention is not identically disclosed or described
`as set forth in section 102 of this title, if the differences between the subject matter sought to
`be patented and the prior art are such that the subject matter as a whole would have been
`obvious at the time the invention was made to a person having ordinary skill in the art to which
`said subject matter pertains. Patentability shall not be negatived by the manner in which the
`invention was made.
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`Claims 1-4, 9-11 and 19-23 are rejected under pre-AIA 35 U.S.C. 102a as being
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`anticipated by Montena (8,075,338) and/or Montena (8,323,053).
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`Montena discloses a coaxial cable connector for coupling an end of a coaxial
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`cable to a terminal, the coaxial cable comprising an inner conductor, a dielectric
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`surrounding the inner conductor, an outer conductor surrounding the dielectric, and a
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`jacket surrounding the outer conductor, the connector comprising: a coupler 30 adapted
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`to couple the connector to a terminal; a body 50 assembled with the coupler, and a post
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`40 assembled with the coupler and the body, wherein the post is adapted to receive an
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`end of a coaxial cable, and wherein at least one of the coupler, the body and the post
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`comprises an integral contacting portion 44, 145, wherein the contacting portion is
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`monolithic with at least a portion of the at least one of the coupler, the body and the
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`post, and wherein when the connector is coupled to the terminal and a coaxial cable is
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`received by the body, the contacting portion provides for electrical continuity from an
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`outer conductor of the coaxial cable through the connector to the terminal regardless of
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`the tightness of the coupling of the connector to the terminal (figs. 1-3), wherein
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`

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`Application/Control Number: 13/652,969
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`Page 7
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`Art Unit: 2833
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`electrical continuity from an outer conductor of the coaxial cable through the connector
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`to the terminal is provided other than by a separate continuity component, wherein the
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`contacting portion is constructed of a material having an elastic/plastic property allowing
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`it to maintain electrical and mechanical contact notwithstanding any interstice between
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`components of the connector when assembled; wherein the contacting portion is
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`formable.
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`As per claims 9-11, Montena discloses a coaxial cable connector for coupling an end of
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`a coaxial cable to a terminal, the coaxial cable comprising an inner conductor, a
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`dielectric surrounding the inner conductor, an outer conductor surrounding the dielectric,
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`and a jacket surrounding the outer conductor, the connector comprising: a coupler 30
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`having a central bore and adapted to couple the connector to a terminal; and a body 50
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`having a central passage assembled with the coupler, and a post 40 assembled with the
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`coupler and the body, wherein the post is disposed at least partially within the central
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`passage of the body and at least partially within the central bore of the coupler, and
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`wherein the body and the post are adapted to receive an end of a coaxial cable, and
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`wherein the post comprises an integral contacting portion that provides for electrical
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`continuity from an outer conductor of the coaxial cable received by the body and the
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`post through the connector to the terminal coupled by the coupler regardless of the
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`tightness of the coupling of the connector to the terminal, and wherein the contacting
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`portion is constructed from a single piece of material with at least a portion of the post
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`40 (figs. 1-3), wherein the contacting portion is constructed of a material having an
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`elastic/plastic property allowing it to maintain electrical and mechanical contact
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`

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`Application/Control Number: 13/652,969
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`Page 8
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`Art Unit: 2833
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`notwithstanding any interstice between components of the connector when assembled,
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`wherein the contacting portion is formable.
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`As per claims 19-23, Montena discloses a method of providing electrical continuity in a
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`coaxial cable connector, comprising: providing components of a coaxial cable
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`connector, wherein at least one of the components has an integral, formable contacting
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`portion, wherein the contacting portion is monolithic with the at least one of the
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`components; and assembling the components to provide a coaxial cable connector,
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`wherein the assembling forms the contacting portion to a contour to at least one of the
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`components, wherein the components are composed from the group consisting of a
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`coupler, a body, and a post, further comprising: receiving by one of the components a
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`coaxial cable, and coupling by one of the components the coaxial cable connector to a
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`terminal, wherein the contacting portion provides for electrical continuity from an outer
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`conductor of the coaxial cable through the connector to the terminal other than by a
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`separate component and regardless of the adequacy of the coupling of the connector to
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`the terminal, wherein is the contacting portion is constructed of a material having an
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`elastic/plastic property allowing it to maintain electrical and mechanical contact
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`notwithstanding any interstice between components when assembled.
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`As per claims 24-26 and 29, Montena discloses a coaxial cable connector for coupling
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`an end of a coaxial cable to a terminal, the coaxial cable comprising an inner conductor,
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`a dielectric surrounding the inner conductor, an outer conductor surrounding the
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`dielectric, and a jacket surrounding the outer conductor, the connector, comprising: a
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`coupler 30 adapted to couple the connector to a terminal; and a body assembled with
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`

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`Application/Control Number: 13/652,969
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`Page 9
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`Art Unit: 2833
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`the coupler, wherein the body 50 is adapted to receive an end of a coaxial cable, and
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`wherein at least one of the coupler and the body comprises an integral contacting
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`portion, and wherein the contacting portion is monolithic with at least a portion of the at
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`least one of the coupler and the body, and wherein when the connector is coupled to
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`the terminal and a coaxial cable is received by the body, the contacting portion
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`provides for electrical continuity from an outer conductor of the coaxial cable through
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`the connector to the terminal other than by a separate component and regardless of the
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`tightness of the coupling of the connector to the terminal, wherein the contacting portion
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`is constructed of a material having an elastic/plastic property allowing it to maintain
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`electrical and mechanical contact notwithstanding any interstice between components
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`of the connector when assembled, wherein the contacting portion is formable, further
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`comprising a post assembled with the coupler and the body.
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`Claims 5, 7, 12-17 and 27-28 are rejected under pre-AIA 35 U.S.C. 103(a) as
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`being unpatentable over Montena (8,075,338) and/or Montena (8,323,053).
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`Montena discloses the invention substantially as claimed except for the form,
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`configuration or shape of contacting portion as claimed. Montena discloses that the
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`contact portion can be separated by webbing, spacers, meshing, flexible material,
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`netting and the like (col. 6, 43-50). Therefore, it would have been obvious to one having
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`ordinary skill in the art at the time the invention was made to form the contact portion to
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`have such form, configuration or shape as claimed, since such a modification would
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`have involved a change in the form, shape or size of a component. A change in form,
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`

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`Application/Control Number: 13/652,969
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`Page 10
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`Art Unit: 2833
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`shape or size is generally recognized as being within the level of ordinary skill in the art.
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`In re Dailey, 149 USPQ 47 (CCPA 1976), In re Rose, 105 USPQ 237 (CCPA 1955).
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`Claim 8 and 30 are rejected under pre-AlA 35 U.S.C. 103(a) as being
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`unpatentable over Montena (8,075,338) and/or Montena (8,323,053).
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`Montena discloses the invention substantially as claimed except that the
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`electrical continuity means a DC contact resistance from the outer conductor of the
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`coaxial cable to the equipment port through the connector of less than about 3000
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`milliohms. It would have been obvious to one having ordinary skill in the art at the time
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`the invention was made to have the electrical continuity means a DC contact resistance
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`from the outer conductor of the coaxial cable to the equipment port through the
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`connector of less than about 3000 milliohms, since it has been held that where the
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`general conditions of a claim are disclosed in the prior art, discovering the optimum or
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`workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
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`Any inquiry concerning this communication or earlier communications from the
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`examiner should be directed to XUONG CHUNG TRANS whose telephone number is
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`(571)272-2002. The examiner can normally be reached on Monday — Friday.
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`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s
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`supervisor, Amy Johnson can be reached on (571) 272-2238. The fax phone number
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`for the organization where this application or proceeding is assigned is 571-273-8300.
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`

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`Application/Control Number: 13/652,969
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`Page 11
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`Art Unit: 2833
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`Information regarding the status of an application may be obtained from the
`
`Patent Application Information Retrieval (PAIR) system. Status information for
`
`published applications may be obtained from either Private PAIR or Public PAIR.
`
`Status information for unpublished applications is available through Private PAIR only.
`
`For more information about the PAIR system, see http://pair-direct.uspto.gov. Should
`
`you have questions on access to the Private PAIR system, contact the Electronic
`
`Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a
`
`USPTO Customer Service Representative or access to the automated information
`
`system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
`
`/XUONG CHUNG TRANS/
`
`Primary Examiner, Art Unit 2833