DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application is being examined under the pre-AIA first to invent provisions.
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.
2. Claims 1 and 2 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.
Claim 1 recites “a multilayer substrate package comprising: (a) a first substrate, which is a substantially flat, having a first and a second side; (6) a second substrate, which is a substantially flat, having a first and a second side; and (c) a set adhesive composition, sandwiched between the first substrate and the second substrate, comprising (i) an emulsion-based polymer selected from the group consisting of vinyl acetate ethylene dispersion, polyvinyl acetate, polyvinyl acetate polyvinyl alcohol, dextrin stabilized polyvinyl acetate, polyvinyl acetate copolymers, vinyl acetate-ethylene copolymers, vinylacrylic, styrene acrylic, acrylic, styrene butyl rubber, polyurethane and mixtures thereof; (ii) a plurality of expanded microspheres, wherein the microspheres is present in the adhesive composition in a volume of about 10 V/V% to about 50 V/V%; wherein the set adhesive composition contacts the first and the second substrates in a pattern of dots, stripes, waves, checkerboards, or a polyhedron shape that have substantially a flat base.”
The term “substantially flat” in claim 1 is a relative term which renders the claim indefinite. The term “flat” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
Claim 2 recites that the “adhesive composition has greater than 10% moisture content” however it is unclear, from both the claims and the Specification, whether the percentage refers to a weight percent, a volume percent, or a mol percent?
Appropriate correction or clarification is required.
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.
3. Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over Claims 1-13 of U.S. Patent No. 9,657,200 B2.
Instant claim 1 recites a multilayer substrate package comprising: (a) a first substrate, which is a substantially flat, having a first and a second side; (6) a second substrate, which is a substantially flat, having a first and a second side; and (c) a set adhesive composition, sandwiched between the first substrate and the second substrate, comprising (i) an emulsion-based polymer selected from the group consisting of vinyl acetate ethylene dispersion, polyvinyl acetate, polyvinyl acetate polyvinyl alcohol, dextrin stabilized polyvinyl acetate, polyvinyl acetate copolymers, vinyl acetate-ethylene copolymers, vinylacrylic, styrene acrylic, acrylic, styrene butyl rubber, polyurethane and mixtures thereof; (ii) a plurality of expanded microspheres, wherein the microspheres is present in the adhesive composition in a volume of about 10 V/V% to about 50 V/V%; wherein the set adhesive composition contacts the first and the second substrates in a pattern of dots, stripes, waves, checkerboards, or a polyhedron shape that have substantially a flat base.
Claims 1-13 of U.S. Patent No. 9,657,200 B2 recite an article comprising a first substrate, a second substrate, and an adhesive interposed between the two substrates comprising: (a) an emulsion-based polymer selected from the group consisting of vinyl acetate ethylene dispersion, polyvinyl acetate, polyvinyl acetate polyvinyl alcohol, dextrin stabilized polyvinyl acetate, polyvinyl acetate copolymers, vinyl acetate-ethylene copolymers, styrene butyl rubber, polyurethane and mixtures thereof; (b) about a plurality of microspheres, wherein the microspheres have a volume of about 10 to about 40 V/V % in the adhesive.
The claims of U.S. Patent No. 9,657,200 B2 do not teach that the adhesive composition contacts the first and the second substrates in a pattern of dots, stripes, waves, checkerboards, or a polyhedron shape that have substantially a flat base.
However, with regards to the pattern in which the adhesive composition is applied, it would have obvious to one having ordinary skill in the art to modify the pattern in which adhesive composition is applied given that a particular shape of a product cannot be relied upon to patentably distinguish the claimed invention from the prior art unless it results in a product which is distinct from the reference product. Furthermore, although the claims at issue are not identical, they are not patentably distinct from each other because the entire scope of the reference claims falls within the scope of the instant claims and a patent to the claimed invention would improperly extend the right to exclude granted by the already issued patent. As a result, the claims are rejected under obviousness-type double patenting.
4. Claims 1 and 2 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3 of U.S. Patent No. 11,970,634 B2.
Instant claim 1 recites a multilayer substrate package comprising: (a) a first substrate, which is a substantially flat, having a first and a second side; (6) a second substrate, which is a substantially flat, having a first and a second side; and (c) a set adhesive composition, sandwiched between the first substrate and the second substrate, comprising (i) an emulsion-based polymer selected from the group consisting of vinyl acetate ethylene dispersion, polyvinyl acetate, polyvinyl acetate polyvinyl alcohol, dextrin stabilized polyvinyl acetate, polyvinyl acetate copolymers, vinyl acetate-ethylene copolymers, vinylacrylic, styrene acrylic, acrylic, styrene butyl rubber, polyurethane and mixtures thereof; (ii) a plurality of expanded microspheres, wherein the microspheres is present in the adhesive composition in a volume of about 10 V/V% to about 50 V/V%; wherein the set adhesive composition contacts the first and the second substrates in a pattern of dots, stripes, waves, checkerboards, or a polyhedron shape that have substantially a flat base.
The claims of U.S. Patent No. 11,970,634 B2 recite a multilayer substrate package comprising: (a) a first substrate, which is a substantially flat, having a first and a second side; (b) a second substrate, which is a substantially flat, having a first and a second side; and (c) an adhesive composition, sandwiched between the first substrate and the second substrate, comprising (i) an emulsion-based polymer selected from the group consisting of vinyl acetate ethylene dispersion, polyvinyl acetate, polyvinyl acetate polyvinyl alcohol, dextrin stabilized polyvinyl acetate, polyvinyl acetate copolymers, vinyl acetate—ethylene copolymers, vinylacrylic, styrene acrylic, acrylic, styrene butyl rubber, polyurethane and mixtures thereof; (ii) a plurality of expandable microspheres, wherein the microspheres is present in the adhesive composition in a volume of about 10 V/V % to about 50 V/V %; wherein the adhesive composition is partially set, coalesced onto the first and the second substrates, and contains greater than 10% moisture content; and wherein the expandable microspheres in the adhesive composition expand upon exposure to heat and/or radiation and the adhesive composition fully sets upon exposure to heat and/or radiation.
The claims of U.S. Patent No. 11,970,634 B2 do not teach that the adhesive composition contacts the first and the second substrates in a pattern of dots, stripes, waves, checkerboards, or a polyhedron shape that have substantially a flat base.
However, with regards to the pattern in which the adhesive composition is applied, it would have obvious to one having ordinary skill in the art to modify the pattern in which adhesive composition is applied given that a particular shape of a product cannot be relied upon to patentably distinguish the claimed invention from the prior art unless it results in a product which is distinct from the reference product. Furthermore, although the claims at issue are not identical, they are not patentably distinct from each other because the entire scope of the reference claims falls within the scope of the instant claims and a patent to the claimed invention would improperly extend the right to exclude granted by the already issued patent. As a result, the claims are rejected under obviousness-type double patenting.
Conclusion
5. Any inquiry concerning this communication or earlier communications from the examiner should be directed to SHEEBA AHMED whose telephone number is (571)272-1504. The examiner can normally be reached Monday-Thursday 7am-6pm.
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.
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.
/SHEEBA AHMED/ Primary Examiner, Art Unit 1787