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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`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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`CONF <MATION NO.
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`13/653,095
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`10/16/2012
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`Donald Andrew Burris
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`HI12—117
`
`3288
`
`7590
`21495
`CORNING INCORPORATED
`INTELLECTUAL PROPERTY DEPARTMENT, SP-TI-3-1
`CORNING, NY 14831
`
`02/28/2014
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`EXAMINER
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`DUVERNE, JEAN F
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`ART UNIT
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`2833
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`PAPER NUMBER
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`* ICATION DATE
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`DELIVERY MODE
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`02/28/2014
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`ELECTRONIC
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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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`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 @ corning.com
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`PTOL—90A (Rev. 04/07)
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`PPC Exhibit 2021
`
`Coming v. PPC
`|PR2016—O1569
`
`

`
`Application No.
`13/653,095
`
`App|icant(s)
`BU RRIS ET AL.
`
`0ffiCe ACtiOn Summary
`
`AIA (First Inventor to File)
`Art Unit
`Examiner
`[3\j3‘”S
`2333
`JEAN F. DUVERNE
`-- 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
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`Status
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`1)|Z| Responsive to communication(s) filed on 02/06/2014.
`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) i’ is/are pending in the application.
`5a) Of the above claim(s) j is/are withdrawn from consideration.
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`6)|:I Claim(s) j is/are allowed.
`7)|Z| Claim(s)1-:5’is/are rejected.
`8)|:I Claim(s) j is/are objected to.
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`are subject to restriction and/or election requirement.
`I
`* 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,<‘Bu3§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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`1) E Notice of References Cited (PTO-892)
`_
`_
`2) E Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`Paper No(s)/Mail Date 02/06/2014'04/24/2013.
`U.S. Patent and Trademark Office
`PTOL—326 (Rev. 11-13)
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`Office Action Summary
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`
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`3) D jme,-View summary (PTQ.413)
`Paper No(s)/Mail Date. j
`4) CI Owe" :-
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`Part of Paper No./Mail Date 20140222
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`

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`Application/Control Number: 13/653,095
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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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`DETAILED ACTION
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`Claim Rejections - 35 USC § 102
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`The following is a quotation of the appropriate paragraphs of pre-AIA 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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`A person shall be entitled to a patent unless —
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`(b) the invention was patented or described in a printed publication in this or a foreign country
`or in public use or on sale in this country, more than one year prior to the date of application
`for patent in the United States.
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`Claims 1, 4-9, 12-14, 17-20 are rejected under pre-AIA 35 U.S.C. 102 (b) as
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`being anticipated by Purdy (US 20100255719A1).
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`Regarding claims 1, 4-5, Purdy’s device discloses a coaxial cable connector
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`(100) for coupling an end of a coaxial cable (10) to a terminal (20), the coaxial cable
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`(10) comprising an inner conductor (18), a dielectric surrounding the inner conductor
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`(16), an outer conductor (14) surrounding the dielectric (16), and a jacket surrounding
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`the outer conductor (14), the connector comprising: a coupler (30) adapted to couple
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`the connector to the terminal; a body (50) assembled with the coupler, and a post (40)
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`assembled with the coupler and the body, wherein the post is adapted to receive an end
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`of a coaxial cable (10), and wherein the coupler and post provide RF shielding such that
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`RF signals external to the coaxial cable connector (100) are attenuated such that the
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`integrity of an electrical signal transmitted through coaxial cable connector (100) is
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`maintained regardless of the tightness of the coupling of the connector to the terminal
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`(20: paragraph 0035); wherein the RF signals external to the connector comprise RF
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`

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`Application/Control Number: 13/653,095
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`Page 3
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`Art Unit: 2833
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`signals that ingress into the connector; wherein the RF signals external to the
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`connector comprise RF signals that egress out from the connector (inherent limitations).
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`The term “adapted to” as recited in the claims is considered as intended use. It has
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`been held that a recitation with respect to the manner in which a claimed apparatus is
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`intended to be employed does not differentiate the claimed apparatus from a prior art
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`apparatus satisfying the claimed structural limitations. Ex parte Masham, 2 USPQ2d
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`1647(1987).
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`Regarding claims 6-8, Purdy’s device discloses the aforementioned including the
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`coupler (30) with a step, and a lip, and wherein the post comprises, a flange, a
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`contacting portion and a shoulder (see fig. 1); wherein a first circuitous path is
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`established by at least one of the step, the lip, the flange, the contacting portion and the
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`shoulder, and wherein the first circuitous path attenuates of RF signals external to the
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`connector; wherein the contacting portion is integral and monolithic with at least a
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`portion of the post at 41. It has been held that the term "integral" is sufficiently broad to
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`embrace constructions united by such means as fastening and welding. In re Hotte, 177
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`USPQ 326, 328 (CCPA 1973).
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`Regarding claims 9, 12, Purdy’s device discloses the aforementioned including
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`the terminal comprises an equipment connection port, and wherein the coupler at 30
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`comprises a threaded portion adapted to connect with a threaded portion of the
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`equipment connection port, and wherein at least one thread on the coupler has a pitch
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`

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`Application/Control Number: 13/653,095
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`Page 4
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`Art Unit: 2833
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`angle different than a pitch angle of at least one thread of the equipment connection
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`port (see fig. 1).
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`Regarding claims 13-14,17-20, Purdy’s device discloses the aforementioned
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`including the post at 41 providing a continuous path resulting in RF shielding such that
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`RF signals external to the coaxial cable connector are attenuated, such that the integrity
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`of an electrical signal transmitted through coaxial cable connector (10) is maintained
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`regardless of the tightness of the coupling of the connector to the terminal (20).
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`Claim Rejections - 35 USC § 103
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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 2-3, 10-11, 15-16, 21-23 are rejected under pre-AIA 35 U.S.C. 103(a) as
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`being unpatentable over Purdy (US 20100255719A1).
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`Regarding claims 2-3, 15-16, Purdy’s device discloses the aforementioned, but
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`fails to explicitly disclose the RF signal range or the resistance of the conductor. It would
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`have been obvious to one having ordinary skill in the art at the time the invention was
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`made to the RF signal range or the resistance of the conductor to have the RF signal
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`conductor with a certain range values, since it has been held that where the general
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`

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`Application/Control Number: 13/653,095
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`Page 5
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`Art Unit: 2833
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`conditions of a claim are disclosed in the prior art, discovering the optimum or workable
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`ranges involves only routine skill in the art. In re Aller, 105 USPQ 233. It would have
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`been obvious to one having ordinary skill in the art at the time the invention was made
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`to the RF signal range or the resistance of the conductor to have the RF signal
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`conductor with a certain range values in order to meet the system specification and
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`requirement.
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`Regarding claims 10-11, 21-23 Purdy’s device discloses the aforementioned, but
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`fails to explicitly disclose the coupler threading size. It would have been an obvious
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`matter of design choice to have the coupler threading being a certain angle dimension
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`or size, since such a modification would have involved a mere change in the size of a
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`component. A change in size is generally recognized as being within the level of
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`ordinary skill in the art. In re Dailey, 149 USPQ 47 (CCPA 1976). It would have been an
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`obvious matter of design choice to have the coupler threading being a certain angle
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`dimension or size in order to meet the system specification and requirement.
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`Conclusion
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`The prior art made of record and not relied upon is considered pertinent to
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`applicant's disclosure. See PTO-892 attached.
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`Any inquiry concerning this communication or earlier communications from the
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`examiner should be directed to Jean F. Duverne whose telephone number is (571) 272-
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`2091. The examiner can normally be reached on 9:00-5:30, Monday-Friday.
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`

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`Application/Control Number: 13/653,095
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`Page 6
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`Art Unit: 2833
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`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s
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`supervisor, Amy C. Johnson can be reached on (571)272-2238.
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`The fax phone number for the organization where this application or proceeding
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`is assigned is 571-273-8300.
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`Information regarding the status of an application may be obtained from the
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`Patent Application Information Retrieval (PAIR) system. Status information for
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`published applications may be obtained from either Private PAIR or Public PAIR.
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`Status information for unpublished applications is available through Private PAIR only.
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`For more information about the PAIR system, see http://pair-direct.uspto.gov. Should
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`you have questions on access to the Private PAIR system, contact the Electronic
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`Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a
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`USPTO Customer Service Representative or access to the automated information
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`system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
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`/Jean Frantz Duverne/
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`Primary Examiner, Art Unit 2833
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`02/22/2014