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 .
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 1-11 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-21 of U.S. Patent No. 12,319,865. Although the claims at issue are not identical, they are not patentably distinct from each other because it is clear that all the elements of the application claims are found in the patent claims The difference between the application claims and the patent claims lies in the fact that the patent claim includes many more elements and is thus much more specific. Thus the invention of claims 1-21 of the patent is in effect a “species” of the “generic” invention of the application claims 1-11. It has been held that the generic invention is “anticipated” by the “species”. See In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993). Since the application claims are anticipated by claims 1-21 of the patent, it is not patentably distinct from claims 1-21 of the patent.
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.
Claims 1-2, 4, 7, and 9 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by WO-2021193376 to Kirikae et al.
As to claims 1-2, 7, and 9, Kirikae discloses a thermosetting resin composition comprising 10 to 50 parts of epoxy resin, 150 to 250 parts per 100 parts of the epoxy resin of an inorganic filler such as alumina (0020, thermally conductive), fused silica as a rheology modifier (0025) and BYK-110 as a wet dispersant (0038). Kirikae discloses a curing composition comprising the resin that has a thermal conductivity of 2.9 W/ml and a viscosity of 78 Pa*s (Tables 1-2 example 6). The resin composition is free of solvent.
Kirikae does not expressly disclose the thixotropic index or quantifies the material’s viscosity decreases under shear and recovery over time. However, the composition recited in the reference is substantially identical to that of the claims, therefore, the claimed properties or function are presumed inherent. MPEP 2112.01. Because the prior art exemplifies Applicant’s claimed composition in that the claimed components are present in the claimed amounts, the claimed physical properties relating to the compositions time-dependent shear-thinning behavior are inherently present in the prior art. Absent an objective showing to the contrary, the addition of the claimed physical properties to the claim language fails to provide patentable distinction over the prior art.
As to claim 4, Kirikae discloses BYK-110 used in amounts of 1.9 parts by weight (Table 1).
Claims 1-4 and 7-11 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by WO-2018181737 to Kuronushi et al.
As to claims 1-4, 7, and 9, Kuronushi discloses a thermosetting resin composition comprising an epoxy resin, a liquid curing agent (viscosity modifier, a heat conductive filler (preferably spherical alumina powder (Examples, 0152-0155), and 4 parts by weight of dispersant (preferably ED152 an alkylene oxide phosphate ester, 0156-0158) (Abstract). Kuronushi discloses a paste-like composition that does not contain solvent (0082). Kuronushi discloses a viscosity of 36 or 24 Pa.s (Table 2). Kuroniushi discloses cured films produced from the thermosetting resin compositions.
As to claim 8, Kuronushi discloses aluminum oxide as a thermally conductive filler (0043).
As to claims 10-11, Kuronushi discloses a method for producing a printed wiring board comprising curing the thermosetting resin composition (0087-0090).
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.
Claims 5-6 are rejected under 35 U.S.C. 103 as being unpatentable over WO-2018181737 to Kuronushi et al. in view of U.S. Patent Pub. No. 2021/0108092 to Hilton.
As to claims 5-6, Kuronushi discloses a thermosetting resin composition comprising an epoxy resin, a liquid curing agent (viscosity modifier, a heat conductive filler (preferably spherical alumina powder (Examples, 0152-0155), and 4 parts by weight of dispersant (preferably ED152 an alkylene oxide phosphate ester, 0156-0158) (Abstract). Kuronushi discloses a paste-like composition that does not contain solvent (0082). Kuronushi discloses a viscosity of 36 or 24 Pa.s (Table 2). Kuroniushi discloses cured films produced from the thermosetting resin compositions.
Kuronushi does not expressly disclose the preferred rheology modifiers.
However, Hilton discloses solvent free thermosetting epoxy resins compositions suitable for preparing films comprising 0.02 to 1 wt% of rheology modifiers such as bentonite clays or hectorite clays (0119).
At the time of filing it would have been obvious to include 0.02 to 1 wt% of the rheology modifiers taught in Hilton within the thermosetting resin compositions for films of Kuronushi in order to apply the film at high film thickness in a single coat (0119).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL L LEONARD whose telephone number is (571)270-7450. The examiner can normally be reached M - F 7:00-4:00.
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/MICHAEL L LEONARD/ Primary Examiner, Art Unit 1763
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