DETAILED ACTION
Applicant’s reply, filed 6 August 2026 in response to the non-final Office action mailed 20 May 2026, has been fully considered. As per Applicant’s filed claim amendments claims 1 and 6-10 are pending under examination, wherein: claims 1 and 6 have been amended, claims 7-10 are as originally filed, and claims 2-5 have been cancelled by this and/or prior amendment(s).
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.
A) Claims 1 and 6-10 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 of U.S. Patent No. 12,516,139. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of both the instant and granted patent are directed substantially similar resin compositions comprising a maleimide compound (A) of substantially the same structure and a photo initiator compound (B), wherein the compounds (B) are selected from oxime ester compounds of substantially the same structure (instant (14) and (15); granted patent (B1)(2) and (B2)(3)), and wherein the resin composition further comprises compounds having one or more carboxy groups (instant (C), (4)/(5); granted patent (D), (6)/(7)) of substantially the same structure, and maleimide compounds (instant (D), (6) and (7); granted patent (E), (8) and (9), further (10)-(13)) of substantially the same structure. The instant claims and granted patent claims are further directed to substantially similar resin sheets, multilayer printed wiring boards and semiconductor devices thereof.
Response to Arguments/Amendments
The objection to the abstract of the disclosure of the specification is withdrawn as a result of Applicant’s filed amendment to the abstract.
The 35 U.S.C. 102(a)(1) rejection of claims 1-2, 4 and 6-10 as anticipated by Kumazawa et al. (WO 2020/262577 A1) and the 35 U.S.C. 103 rejections of claim 3 as unpatentable over Kumazawa in view of Nishimae et al. (US PGPub 2013/0188270) and of claim 5 as unpatentable over Kumazawa in view of Nakanishi et al. (WO 2012/002404 A1) are withdrawn as a result of Applicant’s filed claim amendments.
The nonprovisional nonstatutory double patenting rejection of the instant claims as unpatentable over the claims of B) 12,221,523 is withdrawn as a result of Applicant’s filed claim amendments.
The nonprovisional nonstatutory double patenting rejection of the instant claims as unpatentable over the claims of A) 12,516,139 is maintained (see above). Applicant’s amendments to the instant claims fails to overcome the double patenting rejection.
Conclusion
THIS ACTION IS MADE FINAL. 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.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JANE L STANLEY whose telephone number is (571)270-3870. The examiner can normally be reached M-F 7:30 AM to 3:30 PM.
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, Mark Eashoo can be reached at 571-272-1197. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JANE L STANLEY/ Primary Examiner, Art Unit 1767
Prosecution Insights