DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Specification
The abstract of the disclosure is objected to because the applicant does not recognize a difference between powder and particles. A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
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 1-10 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. It is not clear what the difference between the powder and particles is.
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 1-3, 5 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 14-15 of U.S. Patent No. 10219418. Although the claims at issue are not identical, they are not patentably distinct from each other because CTMA is a surfactant, butanol is organic solvent, nano-powder is guest material.
Claims 4, and 6-10 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 10219418 in view of U.S. Patent No.11778794.
Claim 4 is rejected. Although 418 does not teach functionalizing guest shielding materials, however 794 teaches shielding guest material is functionalized by surface modification; surface modification comprising conjugation of chemicals or biomolecules onto a surface of the shielding guest material [claim 1]. Therefore, it would have been obvious to one of ordinary skill in the art at the time of the invention was made to have a method of making EMI shielding as 418 teaches where guest materials (nanoparticles or nanopowder) functionalized by surface modification, because it is suitable to functionalize the powder or particles in making EMI shielding.
Claims 6 and 9 are rejected. Although 418 does not teach before producing the EMI shielding material film, a layer of insulating material deposited, however 794 teaches providing EMI shielding between chips and wires on the circuit board itself be accomplished by depositing a thin layer of an insulating material including on top of the circuit board and then depositing the EMI shielding layer directly on top of it [column 11 3rd paragraph]. Therefore, it would have been obvious to one of ordinary skill in the art at the time of the invention was made to have a method of making EMI shielding as 418 teaches where an insulating layer is under the EMI shielding, because it is suitable to have insulating material under EMI shielding in making EMI shielding.
Claims 7 and 10 are rejected as 794 teaches the insulating material is patterned and the layer of EMI shielding material film is disposed on areas of a pattern [column 11 3rd paragraph].
Claim 8 is rejected as 418 teaches the film is made by casting [claim 15].
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TABASSOM TADAYYON ESLAMI whose telephone number is (571)270-1885. The examiner can normally be reached M-F 9:30-6.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Gordon Baldwin can be reached at 5712725166. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/TABASSOM TADAYYON ESLAMI/Primary Examiner, Art Unit 1718