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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination (RCE) under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application on 9/17/2025 after final rejection of 3/18/2025 and advisory action of 9/2/2025. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 8/15/2025 has been entered. The Office action on currently pending claims 1-11 and 13-20 follows.
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, 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, 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, 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, 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 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. Claims, as amended, still read on the references of record as explained in the body of the rejection above.
Furthermore, regarding Applicant’s arguments pertained to the directionality of the heatsink and fins, the Office would like to direct the Applicant’s attention to the fact that said heatsink and fins are three-dimensional physical objects, which extend in three (3) dimensions (X, Y, Z), therefore their directionality may be interpreted in various ways, wherein at least one of the dimensions/directions would read on the claimed directionality.
Furthermore, regarding the Official notice used in the rejection of claim 7, Applicant just provided a conclusory statement, i.e., that allegedly, “Applicant submits that the Official Notice provided in the Office Action does not include facts that are capable of instant and unquestionable demonstration as to defy dispute. Specifically, Applicant submits that the assertions that optical fiber cables extending through a heatsink, underneath the plurality of fins are known or obvious is not a fact that is capable of instant and unquestionable demonstration as to defy dispute.”
The aforementioned conclusory statement does not constitute an adequate traversal. To adequately traverse a finding based on official notice, an Applicant must specifically point out the supposed errors in the examiner’s action, which would include stating why the noticed fact is not considered to be common knowledge or well-known in the art. A mere request by the Applicant that the examiner provide documentary evidence in support of an officially-noticed fact is not a proper traversal. See 37 CFR 1.111(b). MPEP 2144.03(C). See also Chevenard, 139 F.2d at 713, 60 USPQ at 241.
In this case the Applicant has failed to explain why such a routine task as routing of the optical fiber and/or electrical cables was not a trivial task for a practitioner in related arts before the effective filing date of the claimed invention. Accordingly, the official notice still stands.
In view of the above the reinjection is hereby maintained.
Conclusion
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.
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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 2835
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.