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 .
The amendment of 1/16/26 has been entered. Claims 1-4, 8-17, 20, and 26 are pending.
Rejections
Double Patenting
1. 35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
2. The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
3. Claims 1, 2, 4, 8-9, 17, 20, and 26 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 7-17, and 19 of copending Application No. 17/630818. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the instant application and the copending application overlap to the extent that one practicing the instantly claimed invention would practice the copending claimed invention and vice versa. It is noted that copending claims 8-14 claims surface treated titanium dioxide. The compositions of copending claims 1, 2, 4, and 6-19 having the surface treated titanium dioxides of copending claims 8-14 and the volume content of filler of copending claim 2 gives the inventions of the instant claims 1, 2, 4, 8-9, 17, 20, and 26. Mixing of the above components of the copending claims gives the method of the instant claim 26.
The newly recited radio frequency lens of copending claim 1 shows that the copending claimed compositions are suitable for forming a radio frequency lens. The compositions of the copending claims contain the instantly claimed ingredients and amounts and are useful for making a radio frequency lens. The copending claims’ compositions therefore must necessarily and inherently have the instantly claimed dielectric constant and loss tangent. See MPEP 2112.
Though the copending claim 1 is now directed to the radio frequency lens per se, it continues to recite a composition which includes the instantly claimed ingredients, which makes the instantly claimed invention obvious from copending claim 1. Furthermore, the dependent claims of the copending application continue to be directed to the polymer composition per se, including the copending claims that recite the surface treated titanium dioxide.
The copending claims therefore encompass the instantly claimed inventions.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim Rejections - 35 USC § 103
4. 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.
5. Claims 1, 2, 4, 8-12, 17, and 26 are rejected under 35 U.S.C. 103 as being unpatentable over JP 2005-015652 Mabuchi et al., the machine English translation thereof provided by the examiner being referenced below unless otherwise noted, in view of WO 2007/060201 Zangara et al.
Regarding claims 1, 2, 4, and 8-12:
Mabuchi discloses polymer compositions containing polymer and surface treated metal oxide fillers. The surface treated metal oxides are present in amounts of at least about 5 vol% based on the total volume of the compositions. See Mabuchi, page 2, lines 4-9, noting the surface treated powders and resin. See Mabuchi, page 3, lines 17-19 noting that the metal oxides of Mabuchi are to be present in amounts of 10-70 vol% based on the total composition. Claim 8 of Mabuchi coupled with claims 3 and 4 of Mabuchi thereby discloses the inventions of the instant claims 1, 2, 8, noting that the calcium barium titanates of Mabuchi are calcium oxides, and 10-12, noting the metal titanates, e.g. barium titanate, of Mabuchi’s claim 3 and the zirconium titanates and strontium titanates of Mabuchi’s claim 4.
Mabuchi, page 12, lines 16-18 discloses the magnesium oxide, titanium dioxide, and barium oxide of the instant claims 8-12.
See Mabuchi, paragraphs [0006], [0007], [0011], [0016], [0019], [0020], [0026], and the remainder of the document.
Mabuchi, page 3, line 2 discloses using barium titanate powder, which falls within the scope of the instant claims 1, 2, 8, and 10-12.
Mabuchi, page 3, lines 4-5 discloses barium titanate powders containing calcium, tin, zirconium, and strontium, which falls within the scope of the instantly claimed metal oxides, including those of the instant claims 8 and 10-12. It is clear from this disclosure of Mabuchi that disclosures to a single metal titanate include mixtures of metals in the titanate in this art. Therefore, it is the examiner’s position that the instantly claimed references to metal titanates includes mixtures of metals.
Mabuchi, page 10, line 21, discloses using a fluorine resin in their compositions. “Fluorine resin” broadly encompasses the instantly claimed fluorinated ethylene propylene polymer.
Mabuchi does not disclose fluorinated ethylene propylene polymer.
Zangara discloses using fluorinated ethylene propylene polymer (FEP) in electrical insulation, which implies necessarily that the compositions of Zangara have high dielectric constants. See Zangara, the abstract, page 3, lines 26-31, page 4, lines 9-20, and page 25, lines 20-26, noting the Daikin NEOFLON NP-101 FEP.
The fluorinated ethylene propylene polymer of Zangara is thermoplastic which falls within the scope of the instant claim 4.
Regarding claim 26:
Mixing the components of Mabuchi gives the process of the instant claim 26.
Regarding claims 1, 2, 4, 8, 10-12, and 26:
It would have been obvious to one of ordinary skill in the art prior to the instantly claimed invention to use fluorinated ethylene propylene polymer as the polymer of Mabuchi because it is encompassed by the fluoropolymers of Mabuchi, Zangara teaches its use in insulation compositions which necessarily require high dielectric constants like the compositions of Mabuchi, and compositions of Mabuchi containing fluorinated ethylene propylene polymer as the fluoropolymer of Mabuchi would have been expected to have the properties of the compositions of Mabuchi, including the properties explicitly discussed by Mabuchi and the properties inherent to the compositions of Mabuchi, coupled with the properties that the fluorinated ethylene propylene polymer of Zangara, page 25, line 23, contribute to the insulation material of Zangara.
Regarding claim 17:
Mabuchi, page 9, lines 10-14, particularly noting the silane coupling agent which includes a vinyl group of line 11, discloses the vinyl silanes of the instant claim 17.
It would have been obvious to one of ordinary skill in the art prior to the instantly claimed inventions to make the inventions of Mabuchi in view of Zangara using the vinyl silanes of Mabuchi because they are encompassed by Mabuchi, as discussed above, and would have been expected to give inventions having the properties of the inventions of Mabuchi, including those properties explicitly discussed in Mabuchi and the properties inherent to the inventions of Mabuchi. This makes the instant claim 17 obvious over Mabuchi.
6. Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over JP 2005-015652 Mabuchi et al., the machine English translation thereof provided by the examiner being referenced below unless otherwise noted, in view of WO 2007/060201 Zangara et al., as applied to claims 1, 2, 4, 8-12, 17, and 26 in paragraph 5 above, further in view of CN 101401491 Onozuka et al., the machine English translation thereof provided by the examiner being referenced below unless otherwise noted.
The discussion of paragraph 5 above is repeated in its entirety here.
Regarding claim 3:
Mabuchi, page 9, lines 2-10, particularly lines 2-3 and 8, discloses using titanate and aluminum-based coupling agents which are necessarily aluminates. Mabuchi, page 9, line 8, particularly “even when a silane coupling agent is used, the dielectric constant can be further improved by using a combination of high dielectric constant powders treated with silane coupling agents having different terminal groups.” “[E]ven when” is taken as indicating that the other surface treatments are considered to be superior to the silane surface treatments.
Mabuchi does not disclose using titanate salt or aluminate salt surface treatments with sufficient specificity to anticipate their use. The titanate and aluminate coupling agents of Mabuchi encompass the salts thereof.
Onozuka, page 19, lines 3-7, particularly line 6, discloses titanate salt coupling agent, which is necessarily metal salt due to the titanium metal therein and possibly due to the cationic ion.
It would have been obvious to one of ordinary skill in the art prior to the instantly claimed inventions to make the inventions of Mabuchi using the metal salt of titanate coupling agent/surface treatments indicated by Mabuchi, page 9, lines 2-7, particularly line 3, because the titanate coupling agent of Mabuchi encompasses the metal salt titanate coupling agents of the instant claim 3 and Onozuka, Onozuka shows the use of titanate salt coupling agents for fillers in compositions which are similar to those of Mabuchi, and metal salt titanate coupling agents used in the compositions of Mabuchi in view of Zangara would have been expected to give the properties of Mabuchi, page 9, lines 4-7 to the inventions of Mabuchi in view of Zangara. This makes the instant claim 3 obvious over Mabuchi.
7. Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over JP 2005-015652 Mabuchi et al., the machine English translation thereof provided by the examiner being referenced below unless otherwise noted, in view of WO 2007/060201 Zangara et al., as applied to claims 1, 2, 4, 8-12, 17, and 26 in paragraph 5 above, further in view of JP 2003-060352 Yamada et al., the machine English translation provided by the examiner being referenced below unless otherwise noted.
The discussion of paragraph 5 above is repeated in its entirety here.
Mabuchi discloses using high dielectric constant fillers generally. See Mabuchi, claim 1 for example.
Mabuchi does not disclose the niobates of the instant claim 13.
Yamada discloses adding high dielectric constant dielectric powder, including barium niobate, to adhesive resins, i.e. polymers at page 15, lines 13-17, particularly line 15, noting the barium niobate.
It would have been obvious to one of ordinary skill in the art prior to the instantly claimed inventions to make the inventions of Mabuchi in view of Zangara using the barium niobate powder of Yamada in the inventions of Mabuchi because they are encompassed by Mabuchi’s high dielectric constant powders, as discussed above, and would have been expected to give inventions having the properties of the inventions of Mabuchi, including those properties explicitly discussed in Mabuchi and the properties inherent to the inventions of Mabuchi coupled with the dielectric properties of the barium niobate of Yamada. This makes the instant claim 13 obvious over Mabuchi in view of Yamada.
8. Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over JP 2005-015652 Mabuchi et al., the machine English translation thereof provided by the examiner being referenced below unless otherwise noted, in view of WO 2007/060201 Zangara et al., as applied to claims 1, 2, 4, 8-12, 17, and 26 in paragraph 5 above, further in view of JP 6546309 Kawakata et al., the machine English translation provided by the examiner being referenced below unless otherwise noted.
The discussion of paragraph 5 above is repeated in its entirety here.
Mabuchi discloses using high dielectric constant fillers generally. See Mabuchi, claim 1 for example.
Mabuchi does not disclose the zirconates of the instant claim 14.
Kawata discloses adding dielectric powder to pastes of conductive particles and polymer binder. See the entirety of Kawata, particularly paragraphs [0031] and [0032]. Kawata, paragraph [0032] discloses their dielectric powders to have high dielectric constants. Kawata, paragraph [0032] discloses their high dielectric constant dielectric powders as including calcium zirconate of the instant claim 14 at page 18, line 14.
It would have been obvious to one of ordinary skill in the art prior to the instantly claimed inventions to make the inventions of Mabuchi in view of Zangara using the calcium zirconate powder of Kawata in the inventions of Mabuchi because they are encompassed by Mabuchi’s high dielectric constant powders, as discussed above, and would have been expected to give inventions having the properties of the inventions of Mabuchi, including those properties explicitly discussed in Mabuchi and the properties inherent to the inventions of Mabuchi coupled with the dielectric properties of the calcium zirconate of Kawata. This makes the instant claim 14 obvious over Mabuchi in view of Kawata.
9. Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over JP 2005-015652 Mabuchi et al., the machine English translation thereof provided by the examiner being referenced below unless otherwise noted, in view of WO 2007/060201 Zangara et al., as applied to claims 1, 2, 4, 8-12, 17, and 26 in paragraph 5 above, further in view of JP 2007-084353 Shigeno et al., the machine English translation provided by the examiner being referenced below unless otherwise noted.
The discussion of paragraph 5 above is repeated in its entirety here.
Mabuchi discloses using high dielectric constant fillers generally. See Mabuchi, claim 1 for example.
Mabuchi does not disclose the tantalates of the instant claim 15.
Shigeno discloses making green sheets of polyvinyl alcohol (page 13, lines 20-21 and page 27, lines 5-9) and high dielectric constant powders, including silver tantalate (page 27, lines 18-19).
It would have been obvious to one of ordinary skill in the art prior to the instantly claimed inventions to make the inventions of Mabuchi in view of Zangara using the silver tantalate powder of Shigeno in the inventions of Mabuchi because they are encompassed by Mabuchi’s high dielectric constant powders, as discussed above, and would have been expected to give inventions having the properties of the inventions of Mabuchi, including those properties explicitly discussed in Mabuchi and the properties inherent to the inventions of Mabuchi coupled with the dielectric properties of the silver tantalate of Shigeno. This makes the instant claim 15 obvious over Mabuchi in view of Shigeno.
10. Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over JP 2005-015652 Mabuchi et al., the machine English translation thereof provided by the examiner being referenced below unless otherwise noted, in view of WO 2007/060201 Zangara et al., as applied to claims 1, 2, 4, 8-12, 17, and 26 in paragraph 5 above, further in view of WO 2018/173491 Kikkawa et al., the machine English translation provided by the examiner being referenced below unless otherwise noted.
The discussion of paragraph 5 above is repeated in its entirety here.
Mabuchi discloses using high dielectric constant fillers generally. See Mabuchi, claim 1 for example.
Mabuchi does not disclose the niobates of the instant claim 13.
Kikkawa discloses dielectric compositions containing metal oxynitrides at page 3, lines 10-12. To be a dielectric composition, its ingredients must have a relatively high dielectric constant. See Kikkawa, paragraphs [0019]-[0020]. Kikkawa discloses strontium tantalum oxynitride as their metal oxynitride at paragraphs [0030], particularly page 7, line 15, [0033], noting that the sintering aid is mixed with the metal oxynitride which necessitates that the metal oxynitride is also powder, [0034], of which the “excellent dielectric characteristics” are taken as indicating that the strontium tantalum oxynitride has a high dielectric constant, [0061], noting page 19, line 14, particularly “SrTaO2N particles” which shows that the strontium tantalum oxynitride of Kikkawa is in the form of particles, and the remainder of the document.
It would have been obvious to one of ordinary skill in the art prior to the instantly claimed inventions to make the inventions of Mabuchi using the strontium tantalum oxynitride powder of Kikkawa in the inventions of Mabuchi in view of Zangara because they are encompassed by Mabuchi’s high dielectric constant powders, as discussed above, and would have been expected to give inventions having the properties of the inventions of Mabuchi, including those properties explicitly discussed in Mabuchi and the properties inherent to the inventions of Mabuchi coupled with the dielectric properties of the strontium tantalum oxynitride of Kikkawa. This makes the instant claim 16 obvious over Mabuchi in view of Kikkawa.
11. Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over JP 2005-015652 Mabuchi et al., the machine English translation thereof provided by the examiner being referenced below unless otherwise noted, in view of WO 2007/060201 Zangara et al., as applied to claims 1, 2, 4, 8-12, 17, and 26 in paragraph 5 above, further in view of GB 2293826 Hughes et al.
The discussion of paragraph 5 above is repeated in its entirety here.
Mabuchi does not describe the amount of surface treatment of the instant claim 20.
Hughes, page 6, lines 8-14, discloses the amounts of surface treatment of the instant claim 20.
It would have been obvious to one of ordinary skill in the art prior to the instantly claimed inventions to make the inventions of Mabuchi in view of Zangara using the amounts of surface treatment of the instant claim 20 because Hughes teaches the use of such amounts of surface treatment in similar compositions as those of Mabuchi in view of Zangara, Mabuchi does not limit the amounts of surface treatment and therefore encompasses the amounts of the instant claim 20, and the compositions of Mabuchi in view of Zangara containing filler surface treated with the amounts of the instant claim 20 would have been expected to have the properties of the compositions of Mabuchi in view of Zangara coupled with the properties that the amounts of surface treatment of Hughes impart to the compositions of Hughes.
Response to Applicant’s Arguments
12. The following response is in reply to the applicant’s arguments regarding all of the above rejections in their response of 4/2/25:
The applicant argues “Applicant elects to address this ground of rejection upon notification that all other conditions for patentability have been met, and that the instant claims are otherwise in condition for allowance.” See MPEP 804, paragraph I. B. 1., particularly “As filing a terminal disclaimer, or filing a showing that the claims subject to the rejection are patentably distinct from the reference application’s claims, is necessary for further consideration of the rejection of the claims, such a filing should not be held in abeyance. Only compliance with objections or requirements as to form not necessary for further consideration of the claims may be held in abeyance until allowable subject matter is indicated.”
In their arguments of 1/16/26:
The applicant argues “Applicant elects to address this ground of rejection upon notification that all other conditions for patentability have been met, and that the instant claims are otherwise in condition for allowance.” See MPEP 804, paragraph I. B. 1., particularly “As filing a terminal disclaimer, or filing a showing that the claims subject to the rejection are patentably distinct from the reference application’s claims, is necessary for further consideration of the rejection of the claims, such a filing should not be held in abeyance. Only compliance with objections or requirements as to form not necessary for further consideration of the claims may be held in abeyance until allowable subject matter is indicated.”
Conclusion
13. 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.
14. Any inquiry concerning this communication or earlier communications from the examiner should be directed to PATRICK D NILAND whose telephone number is (571)272-1121. The examiner can normally be reached on Monday to Friday from 10 to 5.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Robert S Jones, can be reached at telephone number (571)272-1121. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/PATRICK D NILAND/Primary Examiner, Art Unit 1762
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