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 .
Claim Rejections - 35 USC § 112
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 9-10 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.
Claim 9, the limitation “the housing comprises a first opening at one end of the housing and a second opening at another end of the housing” is unclear. The housing 110 cover the adapter insert 140. The housing does not have any first and second openings. Only the adapter insert 140 has the first and second openings.
The examiner interprets “the adapter insert comprises a first opening at one end of the housing and a second opening at another end of the housing” for examination.
Claim Rejections - 35 USC § 102
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 1-3, 6 are rejected under 35 U.S.C. 102(a1) as being anticipated by Copper (WO 2017/044831).
The recitation that “transitional cable adapter” has not been given patentable weight because it has been held that a preamble is denied the effect of a limitation where the claim is drawn to a structure and the portion of the claim following the preamble is a self-contained description of the structure not depending for completeness upon the introductory clause. Kropa v. Robie, 88 USPQ 478 (CCPA 1951).
Regarding claim 1, Copper discloses a transitional adapter, comprising:
an adapter insert (20), the adapter insert comprising a conductive aperture, the conductive aperture comprising:
a first aperture length (30a) for a first conductor (12),
a second aperture length (30b) for a second conductor (12), and
a transition between the first aperture length and the second aperture length; and
a housing (16) around the adapter insert, wherein:
the adapter insert includes a lining of conductive material (18) on a region of an outer surface (32) of the adapter insert (see Fig. 2).
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Regarding claim 2, Copper discloses the adapter insert comprises a dielectric insulating material; and the conductive aperture of the adapter insert comprises a lining of conductive material on an inner surface of the aperture within the adapter insert.
Regarding claim 3, Copper discloses the lining of conductive material comprises a lining of at least one layer of metal or metal alloy.
Regarding claim 6, Copper discloses the transition between the first aperture length of the conductive aperture and the second aperture length of the conductive aperture is positioned between a front surface of the adapter insert and a back surface of the adapter insert.
Claims 1, 4, 6 are rejected under 35 U.S.C. 102(a1) as being anticipated by Krabs et al. (US 7,767,909).
Regarding claim 1, Krabs et al. disclose a transitional cable adapter (Fig. 12), comprising:
an adapter insert (16’), the adapter insert comprising a conductive aperture, the conductive aperture comprising:
a first aperture length (20) for a first conductor,
a second aperture length (18’) for a second conductor, and
a transition between the first aperture length and the second aperture length; and
a housing (30) around the adapter insert, wherein:
the adapter insert includes a lining of conductive material (33) on a region of an outer surface of the adapter insert.
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Regarding claim 4, Krabs et al. disclose the first aperture length of the conductive aperture comprises a first diameter for a first gauge of the first conductor; and the second aperture length of the conductive aperture comprises a second diameter for a second gauge of the second conductor.
Regarding claim 6, Krabs et al. disclose the transition between the first aperture length of the conductive aperture and the second aperture length of the conductive aperture is positioned between a front surface of the adapter insert and a back surface of the adapter insert.
Claims 13-14, are rejected under 35 U.S.C. 102(a1) as being anticipated by Yang et al. (US 2009/0305521).
Regarding claim 13, The recitation that “a transitional cable adapter” has not been given patentable weight because it has been held that a preamble is denied the effect of a limitation where the claim is drawn to a structure and the portion of the claim following the preamble is a self-contained description of the structure not depending for completeness upon the introductory clause. Kropa v. Robie, 88 USPQ 478 (CCPA 1951).
Yang et al. disclose a transitional cable adapter, comprising:
an adapter insert, the adapter insert comprising a conductive transition, the conductive transition comprising a first conductive length (131) for a first conductor (141), a second conductive length (132) for a second conductor (121), and a transition between the first conductive length and the second conductive length; and
a housing around the adapter insert, wherein:
the adapter insert further comprises a printed circuit board (13); and
the first conductive length, the second conductive length, and the transition are formed as traces on a first side of the printed circuit board.
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Regarding claim 14, Yang et al. disclose the conductive transition comprises a plurality of conductive transitions, each conductive transition among the plurality of conductive transitions comprising a first conductive length, a second conductive length, and a transition between the first conductive length and the second conductive length.
Claim Rejections - 35 USC § 103
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.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Krabs et al. (US 7,767,909).
Krabs et al. substantially disclosed the claimed invention except the conductive aperture comprises a plurality of conductive apertures.
It would have been obvious to one having ordinary skill in the art at the time the invention was made to duplicate the conductive aperture, since it has been held that mere duplication of the essential working parts of a device involves only routine skill in the art. St. Regis Paper Co. v. Bemis Co., 193 USPQ 8.
Claims 15 and 17-18 are rejected under 35 U.S.C. 103 as being unpatentable over Yang et al. (US 20090305521).
Regarding claim 15, Yang et al. substantially disclosed the claimed invention except the shape of the transition between the first conductive length and the second conductive length comprises a tapering width, tapering from a first width of the first conductive length to a second width of the second conductive length.
It would have been obvious matter of design choice to change the transition shape to be a tapered shaped, since such a modification would have involved a mere change in the shape of a component. A change in shape is generally recognized as being within the level of ordinary skill in the art.
Regarding claim 17, an Official Notice is taken (see MPEP 2144.03). providing a ground plane on a second side of the printed circuit board for grounding is a well-known material before the effective filing date of the claimed invention was made.
It would have been obvious to one of ordinary skill in the art to include ceramic material into the carrier for insulating heat, in In re Ahlert, 424 F.2d 1088, 1091, 165 USPQ 418, 420 (CCPA 1970).
Regarding claim 18, Yang et al. disclose the adapter insert further comprises an air gap under the PCB.
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Allowable Subject Matter
Claims 7, 9-12 objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Response to Arguments
Applicant's arguments filed 11/5/2025 have been fully considered but they are not persuasive.
The applicant combined claim 8 into claim 1 to overcome the previous rejection. However, the limitation from the original claim 8 was already addressed by the examiner in the previous office action.
In response to the applicant’s argument:
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The examiner respectfully disagrees. The applicant never claimed “a lining of conductive material on an inner surface of the conductive aperture within the adapter insert.” in claims 1, 4, and 6.
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The examiner respectfully disagrees. The applicant never claimed “a PCB positioned in a seat of an adapter insert and a conductive transition extending from a front to a back of the adapter insert” in claims 13-14.
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 TRUC T NGUYEN whose telephone number is (571)272-2011. The examiner can normally be reached monday-friday (7-4).
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Christopher M. Koehler can be reached at 5712723560. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/TRUC T NGUYEN/Primary Examiner, Art Unit 2834
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