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 .
Claim Status
Claims 1-8 are pending.
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 1-8 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 of U.S. Patent No. 11,884,815 (corresponding PG-Pub, US 2023/0134682 A1, is cited on the IDS filed 04/30/2024). Although the claims at issue are not identical, they are not patentably distinct from each other because:
Claims 1, 4, and 5 are anticipated by patented claim 1 of ‘815;
Claim 2 is anticipated by patented claim 2 of ‘815;
Claim 3 is anticipated by patented claim 3 of ‘815;
Claim 6 is anticipated by patented claim 6 of ‘815;
Claim 7 is anticipated by patented claim 7 of ‘815; and
Claim 8 is anticipated by patented claim 8 of ‘815.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1-8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Matsuzawa (JP 2010143981 A; all citations are directed towards the English machine translation), and further in view of Bieber (US 2013/0255879 A1). Both references are cited on the IDS filed 04/30/2024.
Regarding claims 1 and 2; Matsuzawa is directed toward a thermosetting resin composition comprising:
A solid epoxy resin that has a softening point of 100 °C or higher (B2) [p. 0044-0045];
A non-solid epoxy resin that is non-solid at 25 °C. Specifically, liquid epoxy resins are disclosed (B1) [p. 0042-0043];
A curing agent [p. 0053];
An inorganic filler [p. 0051];
A polycarbonate diol derived polyurethane [p. 0020, 0023], wherein the weight average molecular weight of the polycarbonate diol derived polyurethane is from 5000-100,000 [p. 0041]. In example 2, Matsuzawa demonstrates a composition prepared with a polycarbonate diol derived polyurethane having an acid value of 10 mg/KOH/g (A-2 or C-2) [p. 0076]. According to the translations of the tables of Matsuzawa, (A-2)/(C-2) is the only polycarbonate diol derived polyurethane utilized in the inventive examples of Matsuzawa.
Matsuzawa teaches the composition may comprise further additives, including fillers, however Matsuzawa is silent with respect towards fine particulate rubbers.
Bieber is directed to a curable adhesive composition, wherein the composition comprises a toughening agent of a core shell polymer particulate rubber dispersed in a non-solid epoxy resin. Specifically, KANE ACE MX153 particulate rubber dispersed in a non-solid at 25 °C, which is also used in the present invention, as well as Bieber [p. 0044-0049]. Bieber teaches the composition may include 5-15 weight percent of the toughening agent [p. 0051]
One skilled in the art would have been motivated to have included a core shell polymer particulate rubber dispersed in a non-solid epoxy resin toughening agent in the composition of Matsuzawa to enhance the toughness of the cured adhesive composition ([0044] Bieber). Therefore, it would have been obvious to one skilled in the art at the time the invention was filed to have included a 5-15 weight percent of a core shell polymer particulate rubber dispersed in a non-solid epoxy resin toughening agent in the composition of Matsuzawa to arrive at claim 1 of the present invention.
Regarding claim 3: The epoxy resin of the non-solid epoxy resin (B1) is present in an amount of 3-200 parts by weight, and the solid epoxy resin (B2) is present in an amount of 5-100 parts by weight based on 100 parts by weight of the polyurethane resin (A) ([0009] Matsuzawa).
The toughening agent is present in an amount of 5-15 weight percent with respect to a total part by mass of the composition comprising epoxy resin(s) ([0051] Bieber).
Hence, a composition comprising 10 parts B1, 90 parts B2, and 15 parts of the particulate rubber roughening agent results in a composition comprising 25 parts by mass of the non-solid epoxy resin and particular rubber with respect to 100 parts B1 and B2. Given that such a composition is well within the scope of both Matsuzawa in view of Bieber as well as claim 3, it is clear the amounts at least overlap.
A prima facie case of obviousness typically exists when the ranges of a claimed composition overlap the ranges disclosed in the prior art. In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003).
Regarding claim 4: The epoxy resin of the non-solid epoxy resin (B1) is present in an amount of 3-200 parts by weight, and the solid epoxy resin (B2) is present in an amount of 5-100 parts by weight based on 100 parts by weight of the polyurethane resin (A) ([0009] Matsuzawa).
It follows a composition comprising 50 parts B1, 50 parts B2, and 50 parts of the polycarbonate diol derived polyurethane is within the scope of both Matsuzawa in view of Bieber as well as claim 4, and therefore the amounts at least overlap.
A prima facie case of obviousness typically exists when the ranges of a claimed composition overlap the ranges disclosed in the prior art. In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003).
Regarding claim 5: The inorganic filler is present in an amount of 10-700 parts by mass relative to 100 parts polyurethane (A), epoxy resins B1 and B2 ([0052] Matsuzawa).
It follows a composition comprising 50 parts B1, 50 parts B2, and 100 parts inorganic filler is well within the scope of both Matsuzawa in view of Bieber and claim 5 of the present invention.
A prima facie case of obviousness typically exists when the ranges of a claimed composition overlap the ranges disclosed in the prior art. In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003).
Regarding claims 6-8; Matsuzawa teaches the curable composition is used as an adhesive film that is laminated to one surface of a release film [p. 0012, 0065]. Matsuzawa teaches that the adhesive film can be adhered to a flexible printed wiring board [p. 0018, 0065, 0049, 0072]. Therefore, it would have been obvious to one having ordinary skill in the art at the time the invention was filed to use the composition of Matsuzawa in view of Bieber to prepare the coverlay film, adhesive sheet, and printed wiring board of claims 6-8 of the present invention.
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Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HOLLEY GRACE HESTER whose telephone number is (703)756-5435. The examiner can normally be reached Monday - Friday 9:00AM -5:00PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Randy Gulakowski can be reached at (571) 272-1302. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/HOLLEY GRACE HESTER/ Examiner, Art Unit 1766
/RANDY P GULAKOWSKI/ Supervisory Patent Examiner, Art Unit 1766
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