DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Reply Under 37 CFR 1.111
The submission of the reply filed on 4/20/2026 to the non-final Office action of 10/20/2025 is acknowledged. The Office action on currently pending claims 1-11 and 13-20 follows.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the “first side of the heatsink”, the “heat shield”, and the “first side” (of the heat shield) must be shown and reference characters provided therefor on the drawings and in the specification, or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-11 and 13-20, are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Independent claims 1, 13, and 20 recite limitations “the heat shield first side” and “first side of the heatsink”. There is no support in the original disclosure for any “first side of the heatsink”, the “heat shield” or its “first side”.
The remaining dependent claims have been also rejected since they inherit the aforementioned problem(s) of the independent claims 1, 13, and 20.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-11 and 13-20, are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Independent claims 1, 13, and 20 recite limitations “the heat shield first side”. There is insufficient antecedent basis for this limitation in the claims. It’s not clear what said “heat shield” or its “first side” actually are.
Furthermore, said claims 1, 13, and 20 also recite the limitation the “first side of the heatsink”. Since neither specification nor drawings teach what said “first side of the heatsink”
actually is, the scope of the independent claims 1, 13, and 20 are not clear and indefinite.
The remaining dependent claims have been also rejected since they inherit the aforementioned problem(s) of the independent claims 1, 13, and 20.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
Claims 1-4, 10, 13, 14, and 20, as best understood, are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 5,671,120 to Kikinisi (cited in IDS)1.
Regarding claims 1-4 and 20, Kikinisi discloses (Fig. 1, 2, 3A) an assembly comprising: a connector board (25) having a front side and a back side (inherently); a connector (24) mounted to, and embedded in, the connector board, the connector comprises an electrical contact (inherently) and having a mating end extending outwardly from the front side of the connector board (for mating with an active device (27)); and a heatsink (13) forming an integral piece with the connector and extending in a first direction from and substantially perpendicular to the back side of the connector board (i.e., in a horizontal direction on Fig. 3A) and aligned with the connector, the heatsink comprising a plurality of fins (15) extending substantially perpendicular to the first direction and substantially parallel to the connector board (see annotated Fig. 2 below. Alternatively, the plurality of fins (15), as a group, also extends parallel to the connector board (25) in a horizontal direction on Fig. 2) for (inherently) drawing heat through the connector from the front side to the back side of the connector board (Fig. 3A).
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Regarding claim 10, Kikinisi discloses (Fig. 1, 2, 3A) a device board (27) having a surface (inherently); and an active device mounted to the top surface of the device board (the active device is inherently present, since the device board (27) is a raiser card, col. 4, ll. 49-57) and mated with the mating end of the connector (24) (Fig. 3A).
Regarding claims 13 and 14, Kikinisi discloses (Fig. 1, 2, 3A): a connector (24) for mounting to a connector board (25), the connector comprising: a mating end configured for mating with an active device (27); and a back end opposite the mating end, the back end comprising a heatsink (13) formed integrally with the backend of the connector and aligned with the mating end and having a plurality of fins (15) extending parallel to the connector board (i.e., in a depth direction on Fig. 3A the fins (15) extend parallel to the connector board (25), also see Fig. 1; col. 3, ll, 62-67; Fig. 1) for (inherently) releasing heat drawn through the mating end, wherein the heatsink (13) extends in a first direction from and substantially perpendicular to a back side of the connector board (25), the plurality of fins extending from the heatsink substantially perpendicular to the first direction (see explanation in relation to claims 1 and 20 and the annotated Fig. 2 above)
Claims 13-18, as best understood, are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 5,037,313 to Linden et al. (hereafter “Linden”, cited in IDS).
Regarding claims 13 and 14, Linden discloses: a connector (Fig. 2, 3) for mounting to a connector board (A/B), the connector comprising: a mating end (3) configured for mating with an active device (A, B, C); and a back end opposite the mating end, the back end comprising a heatsink (2) formed integrally with the back end of the connector and aligned with the mating end and having a plurality of fins (6) extending parallel to the connector board (A/B) (i.e., in a vertical or horizontal direction on Fig. 3) for (inherently) releasing heat drawn through the mating end, wherein the heatsink (2) extends in a first direction from and substantially perpendicular to a back side of the connector board (A/B), the plurality of fins extending from the heatsink substantially perpendicular to the first direction (see annotated Fig. 3 below).
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Regarding claims 15-18, Linden discloses (Fig. 2, 3): that the connector is an optical connector, an optical contact (inherently present), an optical fiber cable (10) extending outwardly from the back end through the heat sink (2) under the plurality of fins (6) (col. 3, ll. 21-23).
Claims 1-6, 10, 11, 13-17, and 20, as best understood, are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 2015/0016783 to Leigh et al. (hereafter “Leigh”, cited in IDS)2.
Regarding claim 1-6, and 20, Leigh discloses: an assembly (Fig. 1D) comprising: a connector board (120) having a front side and a back side; an optical connector (122, 124, 126, 127) mounted to, and embedded in, the connector board, the connector having an optical contact / mating end (122) extending outwardly from the front side of the connector board; an optical fiber cable (107) extending outwardly from the back side of the connector board, and a heatsink (126) forming an integral piece with the connector and extending in a first direction from and substantially perpendicular to the back side of the connector board (i.e., in a horizontal direction, see annotated Fig. 1D below) and aligned with the connector, the heatsink comprising a plurality of fins extending substantially perpendicular to the first direction and substantially parallel to the connector board (i.e., in a depth direction on Fig. 1D; alternatively, the plurality of fins, as a group, also extends parallel to the connection board (120) in a vertical direction on Fig. 1D) for (inherently) drawing heat through the connector from the front side to the back side of the connector board.
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Regarding claims 10 and 11, Leigh discloses a device board (120) having a surface (inherently); and an active device (124) mounted to the top surface of the device board and mated with the mating end (122) of the connector (122, 124, 126, 127), wherein the device (124) is an optical transceiver and wherein the connector is an optical to electrical connector (par. [0028]).
Regarding claims 13 and 14, Leigh discloses (Fig. 1D): a connector (122, 124, 126, 127) for mounting to a connector board (120), the connector comprising: a mating end (122) configured for mating with an active device; and a back end opposite the mating end, the back end comprising a heatsink (126) formed integrally with the back end of the connector and aligned with the mating end and having a plurality of fins (126) extending parallel to the connector board (i.e., in a depth direction on Fig. 1D; alternatively, the plurality of fins, as a group, also extends parallel to the connection board (120) in a vertical direction on Fig. 1D) for (inherently) releasing heat drawn through the mating end, wherein the heatsink (126) extends in a first direction from and substantially perpendicular to a back side of the connector board (i.e., in a horizontal direction, see annotated Fig. 1D above), the plurality of fins (126) extending from the heatsink substantially perpendicular to the first direction (i.e., in a depth direction through the page on Fig. 1D; alternatively, the plurality of fins, as a group, also extends in a vertical direction which perpendicular to the first direction on Fig. 1D).
Regarding claims 15-17, Leigh discloses: that the connector is an optical connector (par. [0028]), an optical contact (122), an optical fiber cable (107) extending outwardly from the back end under the plurality of fins (Fig. 1D).
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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, 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.
Claims 7 and 9, as best understood, are rejected under 35 U.S.C. 103 as being unpatentable over either Kikinisi or Leigh, each taken alone.
Regarding claim 9, Kikinisi or Leigh do not explicitly teach a plurality of connectors mounted to the connector board and a plurality of heatsinks aligned with the plurality of connectors.
It would have been obvious to a person of the ordinary skill in related arts before the effective filing date of the claimed invention to have provided a plurality of heatsinks aligned with the plurality of connectors in either Kikinisi or Leigh, in order to achieve desired functionality of the device, since it has been held that mere duplication of the essential working parts of a device involves only routine skill in the art. See In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960); St. Regis Paper Co. v. Bemis Co., 193 USPQ 8.
Regarding claim 7, the official notice is taken of the facts outside of the current record that appropriate routing of the optical fiber and/or electrical cables was a trivial task for a practitioner in related arts before the effective filing date of the claimed invention. Therefore, it would have been obvious to a person of the ordinary skill in related arts before the effective filing date of the claimed invention to have routed the optical fiber cable in Leigh in any suitable optimal way, including as claimed (i.e., so the optical fiber cable would extend through the heatsink, underneath the plurality of fins), in order to predictably and efficiently interconnect relevant components of the device while not exceeding targeted production costs thereof, since it has been held that rearranging parts of an invention involves only routine skill in the art. See In re Japikse, 86 USPQ 70; In re Kuhle, 526 F.2d 553, 188 USPQ 7 (CCPA 1975). Also, all claimed elements were known in the prior art and one skilled in the art could have combined / modified the elements as claimed by known methods with no change in their respective functions, and the combination / modification would have yielded predictable results to one of ordinary skill in the art before the effective filing date of the claimed invention. See KSR International Co. v. Teleflex Inc., 550 U.S.___, 82 USPQ2d 1385 (2007).
Claims 8 and 19, as best understood, are rejected under 35 U.S.C. 103 as being unpatentable over either Kikinisi or Leigh, each taken with US 5,597,035 to Smith et al. (Smith).
Regarding claims 8 and 19, Kikinisi or Leigh do not explicitly teach that the plurality of fins comprise a matrix of at least two by two fins.
The matrix heatsink fins disposition has been notoriously known and widely used in related arts before the effective filing date of the claimed invention.
For example, Smith discloses (Fig. 1) the heatsink with matrix fins (18), wherein the plurality of fins (18) comprise a matrix of at least two by two fins (18).
It would have been obvious to a person of the ordinary skill in related arts before the effective filing date of the claimed invention to have provided the heatsink in either Kikinisi or Leigh with the plurality of fins comprising a matrix of at least two by two fins, as taught by Smith, in order to achieve desired heat dissipation, while not exceeding targeted production costs of the device. Also, it appears that the invention would have performed at least equally well with such a design. Also, all claimed elements were known in the prior art and one skilled in the art could have combined / modified the elements as claimed by known methods with no change in their respective functions, and the combination / modification would have yielded predictable results to one of ordinary skill in the art before the effective filing date of the claimed invention. See KSR International Co. v. Teleflex Inc., 550 U.S.___, 82 USPQ2d 1385 (2007).
Response to Arguments
Applicant's arguments have been fully considered but they are not persuasive. Amended independent claims 1, 13, and 20 introduced 112 problems and, as best understood, still read on the references of record as explained in the body of the rejection above.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Anatoly Vortman whose telephone number is (571)272-2047. The examiner can normally be reached Monday-Thursday, between 10 am and 8:30 pm. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jayprakash N. Gandhi can be reached at 571-272-3740. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANATOLY VORTMAN/
Primary Examiner, Art Unit 2841
1 Examiner’s Note: regarding the method claim 20, since there are no specific method steps being claimed, but just a general process of assembling and using of the device (i.e., mating, creating, drawing, etc.), wherein the claim essentially repeats the structure of the device recited in the apparatus claim 1, the fact that the structure of the device of the present invention is anticipated by Kikinisi means that the general method for providing and using such a structure is also anticipated by the same reference. The method steps recited in the claim are inherently necessitated by the structure of the device of Kikinisi.
2 Examiner’s Note: regarding the method claim 20, since there are no specific method steps being claimed, but just a general process of assembling and using of the device (i.e., mating, creating, drawing, etc.), wherein the claim essentially repeats the structure of the device recited in the apparatus claim 1, the fact that the structure of the device of the present invention is anticipated by Leigh means that the general method for providing and using such a structure is also anticipated by the same reference. The method steps recited in the claim are inherently necessitated by the structure of the device of Leigh.
Prosecution Insights