DETAILED ACTION
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 1-4, 6-10, 12-13, and 15-19 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 and 6-10 of copending Application No. 18/566,488. Although the claims at issue are not identical, they are not patentably distinct from each other because both disclose a laminate as explained below.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Regarding claim 1:
Copending claim 1 discloses a laminate comprising a heat-resistant polyimide film, an adhesive layer, and a metal base material, wherein the adhesive layer is silane coupling agent-derived. The adhesive strength F0 is 0.05-20 N/cm, which overlaps with the presently claimed range. The adhesive strength Ft (corresponds to presently claimed F1) is greater than F0. The metal base material has an arithmetic mean roughness Ra of more than 0.05 µm and a thickness of the adhesive layer is 0.05 times or more of a surface roughness (Ra) of the metal base material. (P-V roughness values are larger than Ra values.) As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
The copending claim is silent with regard to an area of a peeled off part as described in feature (B) of the present claim. Given that the copending claimed laminate otherwise discloses the same materials having the same features as presently (including those specified in present dependent claims as discussed below), the examiner submits the copending claimed laminate inherently has the claimed properties as presently claimed.
Additionally, before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to select a metal base material, including one omitting copper as presently claimed, to provide a metal base material according to the copending claim and thereby arrive at the claimed invention. Furthermore, copending claim 3 discloses non-copper material (e.g., SUS).
Regarding claim 2:
Copending claim 1 discloses a thickness of the adhesive layer is 0.05 times or more of a surface roughness (Ra) of the base material. This provides an overlapping range with the presently claimed range.
Regarding claims 3-4 and 12-13:
Copending claims 2-3 disclose the present metals.
Regarding claims 6-10 and 15-19:
Copending claims 6-10 disclose the claimed articles comprising the laminate.
Allowable Subject Matter
Claim 11 is allowed.
The reasons for the indication of allowable subject matter remain as described in paragraphs 48-57 of the Non-Final Rejection mailed 11/14/2025, which are incorporated herein by reference.
Response to Arguments
Applicant’s arguments, see pages 8-9 of Remarks, filed 1/13/2026, with respect to the new requirement that the inorganic substrate does not include copper have been fully considered and are persuasive. The rejections based on Iinuma et al. (JP 2006-147662) in view of Uchida et al. (US 2010/0233476) have been withdrawn. The examiner agrees with Applicant that Iinuma is directed toward a copper-clad laminate, and does not disclose or suggest an inorganic substrate that does not include copper having the other claimed requirements (e.g., surface roughness).
Provisional double patenting rejections based on Application No. 18/569,909 have been withdrawn because the application is no longer copending with the present application.
Provisional double patenting rejections based on Application No. 18/566,488 have been maintained as discussed above.
Conclusion
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN D FREEMAN whose telephone number is (571)270-3469. The examiner can normally be reached Monday-Friday 11-8PM EST.
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, Callie Shosho can be reached at 571-272-1123. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOHN D FREEMAN/Primary Examiner, Art Unit 1787