DETAILED ACTION
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 .
Priority
Acknowledgment is made of applicant's claim for foreign priority based on an application filed in the EPO on 07/20/2023. It is noted, however, that applicant has not filed a certified copy of the EPO application as required by 37 CFR 1.55.
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.
Claims 1-7 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 “one or more different acidic oligoesters” in line 2. Based on the specification, there can be one acidic oligoester or more than one of acidic oligoesters [0016]. However, this claim reads on “one different acidic oligoester” and “more different acidic oligoesters.” The description of one or more than one acidic oligoester is unclear. Correction is required.
Claim 3 recites “one or more different low-molecular-weight polyols in lines 1 and 2. Based on the specification, there can be one low-molecular-weight polyol or more than one low-molecular-weight polyols [0018]. However, this claim reads on “one different low-molecular-weight polyol” and “more different low-molecular-weight polyols.” The description of one or more than one low-molecular-weight polyol is unclear. Correction is required.
Claim 3 recites “one or more different low-molecular-weight polycarboxylic acids” in lines 2 and 3. Based on the specification as much can be surmised, there can be one low-molecular-weight dicarboxylic acid or more than one low-molecular-weight polycarboxylic acids [0017-0018]. However, this claim reads on “one different low-molecular-weight polycarboxylic acid” and “more different low-molecular-weight polycarboxylic acids.” The description of one or more than one polycarboxylic acid is unclear. Correction is required.
Claim 5 recites “one or more different low-molecular-weight diols” in line 2. Based on the specification, there can be one low-molecular-weight diol or more than one low-molecular-weight diol [0018]. However, this claim reads on “one different low-molecular-weight diol” and “more different low-molecular-weight diols.” The description of one or more than one low-molecular-weight diol is unclear. Correction is required.
Claim 5 recites “one or more different low-molecular-weight dicarboxylic acids” in line 2. Based on the specification, there can be one low-molecular-weight dicarboxylic acid or more than one low-molecular-weight dicarboxylic acids [0018]. However, this claim reads on “one different low-molecular-weight dicarboxylic acid” and “more different low-molecular-weight dicarboxylic acids.” The description of one or more than one low-molecular-weight dicarboxylic acids is unclear. Correction is required.
Claim 6 recites “one or more different solders” in line 1. Based on the specification, there can be one solder or more than one solder [0031]. However, this claim reads on “one different solder” and “more different solders.” The description of one or more than one solder is unclear. Correction is required.
Claims dependent on any of the rejected claims are likewise rejected under this statute.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) 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 1-7 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-13 of copending Application No. 18/772,915 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the percentages of the organic solvent and other components for US ‘969 and the instant claims are obvious differences. However, one carrying out the product in accord with the 18/772,915 claims would in fact carry out product fully within the scope of the instant claims. Thus, no patentable distinction is seen between the product as presently claimed and the product as defined in the claims of 18/772,915.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Allowable Subject Matter
Claims 1-7 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
The following is a statement of reasons for the indication of allowable subject matter:
EP 4144476 A1 does not suggest an acidic oligoester as claimed. WO 98/21264 teaches a flux comprising acid substances that can be oligomeric with an acid. The resin described as 1(b) is 60% of the flux, solvent is 35%, and “other component” is 5% (page 21, lines 1-8). The resin from 1(b) is an equimolar mixture of tri-isopropanolamine (TIPA) and malonic acid (MAn) with an acid value of 188-192 (page 15, line 31). The MW of 30 g TIPA (191.271) and 15 g MAn (98.057) is 160.2, which is less than 300-600 as claimed.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. SU 1764913 teaches a flux for bonding powder Cu-based compositions with 40% ethyl alcohol and a 60% terpene-maleic resin modified with carbamide, a simple oligoester and ammonium bromide (abstract). SU 1668082 A1 teaches a flux that contains the following components, in wt% tripropylamine hydrochloride 1 - 3.31, diethylene glycol 15 - 23.97, polyethylene glycol (100 or 115) 25 - 33.06, and hydroxyl-containing oligoesters of molecular weight 800 – 2500 (abstract).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Tima M. McGuthry-Banks whose telephone number is (571)272-2744. The examiner can normally be reached Monday through Friday, 7:30 am to 4:00 pm.
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Tima M. McGuthry-Banks
Primary Examiner
Art Unit 1733
/Tima M. McGuthry-Banks/Primary Examiner, Art Unit 1733
Prosecution Insights