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 § 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.
Claim 1 rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kim 2004/0127632.
Kim exemplifies (#6) fluorine resin (F) of applicant’s structure with “X” being the remnants of pentafluorostyrene and “L” being -C(CF3)2-
Claims 1,3,4 and 6 rejected under 35 U.S.C. 102(a)(1) as being anticipated by Mercer 5179188.
Mercer exemplifies (#7) a fluorine oligomer corresponding to applicant’s structure according to:
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In regards to applicant’s dependent claims:
Mercer’s fluorinated oligomer can be used as a printed wiring board substrate reinforced with glass cloth (col 10 line 29-38) – meeting applicant’s claims 3,4 and 6.
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 2 rejected under 35 U.S.C. 103 as being unpatentable over Kim 2004/0127632.
Kim applies as explained above.
The cited example lacks a crosslinking agent.
However, Kim (paragraph 40) suggests including multi-functional acrylates can be added to increase crosslinking and would have been an obvious addition to Kim’s formula (F) resin.
Claim 5 rejected under 35 U.S.C. 103 as being unpatentable over Mercer 5179188 optionally in view of Del 4180608.
Mercer applies as explained above.
Mercer does not state the PCB contain copper.
As is well known in the electrical art, printed wiring boards usually contain layer(s) of copper. The mere mention of PCB by Mercer immediately leads one of ordinary skill to a PCB containing copper.
Del (abstract; col 1 line 50-57) can be cited to show copper in PCB’s.
Claims 3,4 and 6 rejected under 35 U.S.C. 103 as being unpatentable over Kim 2004/0127632 in combination with Mercer 5179188.
Kim depicts applicant’s preferred vinyl terminated fluorinated aromatic polyether as explained above. Kim does not teach his vinyl terminated fluorinated aromatic polyethers are useful in prepregs.
Mercer teaches similar vinyl terminated fluorinated aromatic polyethers are useful as a printed wiring board substrate reinforced with glass cloth (col 10 line 29-38).
It would have been obvious to utilize Kim’s vinyl terminated fluorinated aromatic polyether in any common end use known for vinyl terminated fluorinated aromatic polyethers.
Double Patenting
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.
Claims 1-6 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of copending Application No. 18-704957 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the copending application claims the same resin structure – albeit limited to cycloalkylidene “L” groups. The instant claims call for R1 and R2 to also form a ring.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVID J BUTTNER whose telephone number is (571)272-1084. The examiner can normally be reached M-F 9-3pm.
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/DAVID J BUTTNER/Primary Examiner, Art Unit 1765 12/10/25