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 .
DETAILED ACTION
Information Disclosure Statement
1. The references disclosed within the information disclosure statement (IDS) submitted on July 25, 2023, has been considered and initialed by the Examiner.
Claim Rejections – 35 USC 112
2. 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.
3. Claims 6 is rejected under 35 U.S.C. 112(b), as being indefinite for failing to particularly point out and distinctly claim the subject matter which applicant regards as the invention.
In claim 6, the phrase, “substantially uniform thickness” is indefinite. It is unclear if the adhesive layer has uniform thickness or not.
Double Patenting
4. 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 claims at issue 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); and 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 a nonstatutory double patenting ground provided the reference application or patent either is shown to be commonly owned with this 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 §§ 706.02(l)(1) - 706.02(l)(3) 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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/forms/. The 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 http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
5. Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7, 9, 12-14, 16, 21-26 of U.S. Patent Application No. 15/931,657. Although the claims at issue are not identical, they are not patentably distinct from each other because instant claim 1 recites similar subject matter as claim 1 of copending ‘657
All of the remaining instant claims recite similar subject matter as claims 2, 6-7, 9, 13 and 21-26 of copending '657.
Claim Rejections – 35 USC § 103
6. 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 may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.
7. Claims 1-2 are rejected under 35 U.S.C. 103 as being unpatentable over Endo (U.S. 2009/0188706).
Endo discloses a printed wiring board comprising a resin insulating layer ( paragraphs 13, 51) and conductive layers (paragraphs 28, 48). Endo discloses an adhesive layer (paragraph 53) and a conductor layer (layer forming element 3) formed on a surface of the resin insulating layer; an outermost insulating layer (5) formed on the resin insulating layer such that the outermost insulating layer is covering the conductor layer and has an opening extending to the conductor layer (Figure 1):
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Although Endo does not explicitly disclose the structure arrangement, as claimed, it would have been obvious to one of ordinary skill in the art to rearrange the layers, since it has been held that rearranging the layers of an invention involves only routine skill in the art. In re Japikse, 86 USPQ 70. Additionally, although Endo does not appear to explicitly teach the conductor layer unevenness root mean square roughness, substantially identical materials treated in a substantially identical manner are expected to have substantially identical properties. In the present case the printed wiring board is carried out using material and process conditions which are substantially identical to those disclosed by applicants. Therefore the printed wiring board discussed above would be expected to meet the claimed conductor layer unevenness root mean square roughness, as in claims 1-2.
Claim Rejections – 35 USC § 103
8. Claims 1-2 are rejected under 35 U.S.C. 103 as being unpatentable over Tamaki et al. (U.S. JP H06268339 A).
Tamaki discloses a multilayer printed wiring board comprising a resin insulting layer (2), conductor layer (4) (claim 1 of Tamaki and Figures 2-4).
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Tamaki discloses the multilayer wiring board as described above, can include conductor layers and resin insulating layers, which are different in material, alternately laminated, and the laminated structure is different depending on the part (paragraph 9) which is interpreted as the laminated structure being capable of having varying arrangements. Tamaki discloses an adhesive layer can be applied to the structure (paragraph 14). Although Tamaki does not explicitly disclose the structure arrangement, as claimed it would have been obvious to one of ordinary skill in the art to rearrange the layers, since it has been held that rearranging the layers of an invention involves only routine skill in the art. In re Japikse, 86 USPQ 70. Additionally, although Tamaki does not appear to explicitly teach the conductor layer unevenness root mean square roughness, substantially identical materials treated in a substantially identical manner are expected to have substantially identical properties. In the present case the printed wiring board is carried out using material and process conditions which are substantially identical to those disclosed by applicants. Therefore the printed wiring board discussed above would be expected to meet the claimed conductor layer unevenness root mean square roughness, as in claims 1-2.
Conclusion
9. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Lawrence Ferguson whose telephone number is 571-272-1522. The examiner can normally be reached on Monday through Friday 9:00 AM – 5:30PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Frank Vineis, can be reached on 571-270-1547. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LAWRENCE D FERGUSON/Examiner, Art Unit 1781