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
`
`§¢§1 AN»
`
`*
`
`
`
`9
`
`‘-
`
`APPLICATION NO.
`
`F ING DATE
`
`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKET NO.
`
`CONFIRMATION NO.
`
`14/259,703
`
`04/23/2014
`
`Donald Andrew Burris
`
`H113—041
`
`7433
`
`come INCORPORATED
`INTELLECTUAL PROPERTY DEPARTMENT, SP—TI—3—1
`JEANCH/“LES, M AGROS
`CORNING, NY 14831
`
`ART UNIT
`
`PAPER NUIVIBER
`
`2833
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`02/02/2016
`
`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.
`
`Notice of the Office communication was sent electronically on aboVe—indicated "Notification Date" to the
`following e—mail address(es):
`
`usdocket @ c0rning.c0m
`
`PPC Exhibit 2027
`
`Coming v. PPC
`|PR2016—O1569
`
`PTOL—90A (Rev. 04/07)
`
`

`
`Application No.
`14/259,703
`
`App|icant(s)
`BURRIS, DONALD ANDREW
`
`Office Action Summary
`
`AIA (First lnventorto File)
`Art unit
`Examiner
`$*:‘S”S
`2833
`MILAGROS JEANCHARLES
`-- 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 CFR 1.136(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
`
`1)IXI Responsive to communication(s) filed on 9/24/2015.
`I:I A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
`
`2b)lXl This action is non—final.
`2a)I:l 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.
`
`4)I:I Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
`closed in accordance with the practice under Ex parte Quayle, 1935 C.D. 11, 453 O.G. 213.
`
`Disposition of Claims*
`
`5)IXI Claim(s) 12 and 4-11 is/are pending in the application.
`5a) Of the above claim(s) j is/are withdrawn from consideration.
`6 III Claim s) j is/are allowed.
`
`1 2 and 4-11 is/are rejected.
`
`is/are objected to.
`
`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
`
`participating intellectual property office for the corresponding application. For more information, please see
`
`
`
`:/:’vvww.usbto. ow atents/init events/'
`.l'r/indexfis or send an inquiry to PPI--lfeedbackf,<%usj;)togov.
`
`htt
`
`Application Papers
`
`10)IZI The specification is objected to by the Examiner.
`11)|Z| The drawing(s) filed on 4/23/2015 is/are: a)lZl accepted or b)|: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).
`
`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121 (d).
`
`Priority under 35 U.S.C. § 119
`12)I:l Acknowledgment is made of a claim for foreign priority under 35 U.S.C. §119(a)-(d) or (f).
`Certified copies:
`
`b)I:l Some** c)I:l None of the:
`a)|:l All
`1.|:l Certified copies of the priority documents have been received.
`2.|:l Certified copies of the priority documents have been received in Application No. j
`3.I:| Copies of the certified copies of the priority documents have been received in this National Stage
`
`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.
`
`Attach ment(s)
`
`1) E Notice of References Cited (PTO-892)
`3) D jntervjew summary (pTo-413)
`_
`_
`Paper No(s)/Mail Date. j
`2) E Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`Paper No(s)/Mail Date 4) I:I Other: j‘ .
`
`
`U.S. Patent and Trademark Office
`PTOL—326 (Rev. 11-13)
`
`Part of Paper No./Mail Date 025
`
`Office Action Summary
`
`

`
`Application/Control Number: 14/259,703
`
`Page 2
`
`Art Unit: 2833
`
`DETAILED ACTION
`
`Notice of Pre-AIA or AIA Status
`
`1.
`
`The present application, filed on or after March 16, 2013, is being examined
`
`under the first inventor to file provisions of the AIA.
`
`Specification
`
`2.
`
`The disclosure is objected to because of the following informalities: Description of
`
`Figures 5A, 5B, 5C, and 6A is missing. Appropriate correction is required.
`
`Claim Objections
`
`3.
`
`Claim 2 is objected to because of the following informalities: “a radially” is
`
`understood as — -radially — -. Appropriate correction is required.
`
`4.
`
`Claim 7 is objected to because of the following informalities: “biasing ring” is
`
`understood as — — the biasing ring — -. Appropriate correction is required.
`
`5.
`
`Claim 1
`
`is objected to because of the following informalities: “at least one of the
`
`coupler, the post, and the body” is understood as --at least one of the coupler, the post,
`
`or the body--. Appropriate correction is required.
`
`Claim Rejections - 35 USC § 102
`
`6.
`
`The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that
`
`form the basis for the rejections under this section made in this Office action:
`
`A person shall be entitled to a patent unless —
`
`(a)(1) the claimed invention was patented, described in a printed publication, or in public use,
`on sale or otherwise available to the public before the effective filing date of the claimed
`invention.
`
`(a)(2) the claimed invention was described in a patent issued under section 151, or in an application
`for patent published or deemed published under section 122(b), in which the patent or application, as
`the case may be, names another inventor and was effectively filed before the effective filing date of the
`claimed invention.
`
`

`
`Application/Control Number: 14/259,703
`
`Page 3
`
`Art Unit: 2833
`
`7.
`
`Claims 1, 2, 4, 6, 8-10 are rejected under 35 U.S.C. 102(a)(2) as being
`
`anticipated by Purdy et al. (US Patent 8323060).
`
`Regarding Claim 1: Purdy et al. (hereinafter Purdy) discloses a coaxial cable
`
`connector (100, Fig 1) for coupling an end of a coaxial cable (10) to a terminal (20), the
`
`coaxial cable (10) comprising an inner conductor (18), a dielectric (16) surrounding the
`
`inner conductor (18), an outer conductor (14) surrounding the dielectric (16), and a
`
`jacket (12) surrounding the outer conductor (14, Fig 1), the connector comprising: a
`
`coupler (30) adapted to couple the connector to the terminal (20); a body (50)
`
`assembled with the coupler (30); a post (40) assembled with the coupler (30) and the
`
`body (50), wherein the post (40) is adapted to receive (Fig 1) an end of a coaxial cable
`
`(10); and a biasing ring (80) positioned inside of (Fig 13) the coupler (30), wherein at
`
`least one of the coupler (30), the post (40), and the body (50) has a contacting portion
`
`(370) to establish electrical continuity (Col 11 Line 4) between at least two of the coupler
`
`(30), the body (50) and the post (40), and wherein the contacting portion (370) is formed
`
`monolithically (Fig 13) with the at least one of the coupler (30), the post (40), and the
`
`body (50), and wherein the biasing ring (80) biases the contacting portion such that
`
`electrical continuity is maintained regardless of the tightness of the coupling of the
`
`connector to the terminal (Claim 1) and the contacting portion (370) at least partially
`
`encloses(Fig 13) the biasing ring (80) when the coaxial cable connector (100) is
`
`assembled.
`
`

`
`Application/Control Number: 14/259,703
`
`Page 4
`
`Art Unit: 2833
`
`Regarding Claim 8: Purdy discloses a coaxial cable connector (100) for coupling an
`
`end of a coaxial cable (10) to an equipment connection port (20), the coaxial cable (10)
`
`comprising an inner conductor (18), a dielectric (16) surrounding the inner conductor
`
`(18), an outer conductor (14) surrounding the dielectric (16), and a jacket (12)
`
`surrounding the outer conductor (14, Fig 1), the connector comprising:
`
`a coupler (30) adapted to couple the connector to the equipment connection port (20); a
`
`body (50) assembled with the coupler (30), and a post (40) assembled with the coupler
`
`(30) and the body (50), wherein the post (40) is adapted to receive an end of a coaxial
`
`cable (10); a biasing ring (80), and a retainer (370) assembled with the coupler (30) and
`
`the body (50), wherein the retainer (370) extends into (Fig 12,13) the body (50) and the
`
`retainer (370) comprises a contacting portion (374), and wherein the contacting portion
`
`(374) is of monolithic construction (Fig 12) with the retainer (370), and wherein electrical
`
`continuity (Col 11 Line 4) is established between the retainer (370) and the coupler (30),
`
`and wherein the biasing ring (80) biases the contacting portion (374) to the coupler (30)
`
`such that electrical continuity is maintained regardless of the tightness of the coupling of
`
`the connector to the terminal (Claim 1).
`
`Regarding Claims 2 and 9: Purdy discloses wherein the contacting portion (370, 374)
`
`is a radially projecting (Fig 13, Purdy).
`
`

`
`Application/Control Number: 14/259,703
`
`Page 5
`
`Art Unit: 2833
`
`Regarding Claim 4: Purdy discloses wherein the contacting portion (370, 374) forms in
`
`a rearward facing manner (Fig 13) when the coaxial cable connector (100) is
`
`assembled.
`
`Regarding Claim 6: Purdy discloses wherein the contacting portion (370) provides for
`
`electrical continuity from the outer conductor of the coaxial cable to the terminal (Col 2
`
`Lines 31-45) regardless of the tightness or adequacy of the coupling of the coaxial cable
`
`connector to the terminal (Claim 1).
`
`Regarding Claim 10: Purdy discloses wherein the contacting portion (370) at least
`
`partially encloses (Fig 13) the biasing ring (80) when the coaxial cable connector (100)
`
`is assembled.
`
`Claim Rejections - 35 USC § 103
`
`8.
`
`The following is a quotation of 35 U.S.C. 103 which forms the basis for all
`
`obviousness rejections set forth in this Office action:
`
`A patent for a claimed invention may not be obtained, notwithstanding that the claimed
`invention is not identically disclosed as set forth in section 102 of this title, if the differences
`between the claimed invention and the prior art are such that the claimed invention as a whole
`would have been obvious before the effective filing date of the claimed invention to a person
`having ordinary skill in the art to which the claimed invention pertains. Patentability shall not
`be negated by the manner in which the invention was made.
`
`9.
`
`Claims 5, 7 and 11 are rejected under 35 U.S.C. 103 as being unpatentable
`
`over Purdy et al. (US Patent 8323060).
`
`

`
`Application/Control Number: 14/259,703
`
`Page 6
`
`Art Unit: 2833
`
`Regarding Claim 7: Purdy discloses the coaxial cable connector as disclosed above.
`
`Purdy does not disclose wherein biasing ring is constructed at least partially from
`
`conductive material, however, it would have been obvious to one of ordinary skill in the
`
`art at the time of filing to have the biasing ring constructed partially from conductive
`
`material since it has been held to be within the general skill of a worker in the art to
`
`select a known material on the basis of its suitability for the intended use as a matter of
`
`obvious design choice (In re Leshin 125 USPQ 416).
`
`Regarding Claims 5 and 11 : Purdy discloses the coaxial cable connector as disclosed
`
`above. Purdy does not disclose wherein the contacting portion forms in a forward facing
`
`manner when the coaxial cable connector is assembled. However, Purdy discloses an
`
`embodiment (Fig 10) where the contacting portion (at 274) is forward facing. It would
`
`have been obvious to one of ordinary skill in the art at the time of filing to try a forward
`
`facing contacting portion since continuity members may vary in shape and functionality
`
`(Col 13 Line 56).
`
`Response to Arguments
`
`10.
`
`Applicant's arguments filed 9/24/2015 have been fully considered but they are
`
`not persuasive. Applicant’s arguments with respect to claims 1, 3, and 8 have been
`
`considered but are moot because the arguments do not apply to any of the references
`
`being used in the current rejection.
`
`

`
`Application/Control Number: 14/259,703
`
`Page 7
`
`Art Unit: 2833
`
`Conclusion
`
`Any inquiry concerning this communication or earlier communications from the
`
`examiner should be directed to MILAGROS JEANCHARLES whose telephone number
`
`is (571)270-0643. The examiner can normally be reached on Mon-Fri 9:00am-6:00pm
`
`ET.
`
`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s
`
`supervisor, Amy Cohen Johnson can be reached on (571)272-2238. The fax phone
`
`number for the organization where this application or proceeding is assigned is 571 -
`
`273-8300.
`
`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.
`
`MJ 12/28/2015
`
`/Amy Cohen Johnson/
`Supervisory Patent Examiner,
`Art Unit 2833