DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
CROSS-REFERENCE TO RELATED APPLICATIONS
2. This application is a continuation of U.S. Patent Application Serial No. 17/725,627, filed on April 21, 2022, which, in turn, is a continuation of U.S. Patent Application Serial No. 16/936,519 (now U.S. Patent No. 11,362,028), filed on July 23, 2020, which, in turn, is a continuation of U.S. Patent Application Serial No. 16/743,145 (now U.S. Patent Application No. 10,790,221), filed on January 15, 2020, which, in turn, is a continuation of U.S. Patent Application Serial No. 16/266,203 (now U.S. Patent No. 10,580,727), filed on February 4, 2019, which, in turn, is a continuation of U.S. Patent Application Serial No. 15/159,323 (now U.S. Patent No. 10,256,176), filed on May 19, 2016, which in turn, is based upon and claims the benefit of priority from Japanese Patent Application No. 2013-241392, filed on November 21, 2013, and PCT Application No. PCT/JP2014/080649, filed on November 19, 2014, the entire contents of which are incorporated herein by reference.
Double Patenting
3. The non-statutory 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 non-statutory obviousness-type 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); and 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 a non-statutory double patenting ground provided the conflicting application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement.
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
4. Claim 1 is/are rejected on the ground of non-statutory obviousness-type double patenting as being unpatentable over claims 1-2 of U.S. Patent No. 12,080,637 B2 (here and after ‘637) in view of claim 1 or 2 of U.S. Patent No. 11,362,028-B2 (here and after ‘028). Although the conflicting claims are not identical, they are not patentably distinct from each other because the following rationale.
5. Claim 1 reads in claims 1-2, of U.S. Patent No. 12,080,637 B2 respectively with no non-obvious difference between the subject matter included in pending claim 1, and in claims 1-2, of ‘637. The only difference as a comprising claim being “a conductive layer arranged within the through-hole; and an insulating resin layer overlapping with the through-hole in a plan view” as disclosed in claim 1. As both references disclose a through-hole electrode substrate with similar structure, the differences between these claims and the claims of ‘637 in view of claims 1 or 2 of ‘028 are seen as obvious. Therefore, at the time of invention, it would have been obvious to a person having ordinary skill in the art having the teachings of the instant application and the claims of ‘637 in view of claims ‘028 to maintain electrical continuity between layers, and using the Insulating resin to protect the pad, seal the vias, improve mechanical strength, and support assembly and environmental reliability.
As per claims 2-13, these claims are at least rejected for their dependencies, directly or indirectly, on the rejected claim 1, above. Therefore, they are rejected for the same reason set forth in paragraph above.
6. The following table shows the corresponding conflicting claims between the instant application and U.S. Patent No. 12,080,637 B2.
Application 18/800278
U.S. Patent No. 12,080,637 B2
1. A through-hole electrode substrate comprising: a substrate including a through-hole extending from a first aperture of a first surface to a second aperture of a second surface; a conductive layer arranged within the through-hole; and an insulating resin layer overlapping with the through-hole in a plan view and contacting the conductive layer exposed to at least one of the first surface and the second surface, wherein the through-hole includes a minimum aperture part between the first aperture and the second aperture, an area of the minimum aperture part is the smallest among a plurality of areas of the through-hole in the plan view, and the insulating layer has a gas discharge function.
1. A through-hole electrode substrate comprising: a substrate including a through-hole extending from a first aperture of a first surface to a second aperture of a second surface, an area of the second aperture being larger than an area of the first aperture, the through-hole having a minimum aperture part between the first aperture and the second aperture, an area of the minimum aperture part being the smallest among a plurality of areas of the through-hole in a planar view; a first member arranged within the through-hole; and an insulating resin layer contacting the first member exposed to one of the first surface and the second surface.
2. The through-hole electrode substrate according to claim 1, wherein the insulating resin layer has a gas discharge function.
Allowable Subject Matter
7. Claims 1-13 would be allowable over the prior art of record upon a timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WILNER JEAN BAPTISTE whose telephone number is (571)270-7394. The examiner can normally be reached M-T 8:00-6:00.
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/W.J/Examiner, Art Unit 2899 /DALE E PAGE/Supervisory Patent Examiner, Art Unit 2899
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