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 .
Election/Restriction
Applicant's election with traverse of Group I in the reply filed on 17 June 2026 is acknowledged. The traversal is on the ground(s) that the proposed combination teaches away. This is not found persuasive because Applicant is merely referring to an optional step in Nozaki to allege incompatibility with Tanaka.
Claims 3-6 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected Group II, there being no allowable generic or linking claim.
The requirement is still deemed proper and is therefore made FINAL.
Objection to the Specification
Formulae (1) and (2) are objected to, as they do not show a dianhydride.
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 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
Claim 1 and 2 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. 2021/0371594 A1 (“Kudo”).
Considering claim 1, Kudo discloses a laminate structure comprising a cured film and a copper foil, wherein the cured film exhibits high adhesion to the metal foil. (Kudo ¶¶ 0008-0010, 0030, 0108-0109, and 0143). Kudo is analogous art, for it is directed to the same field of endeavor as that of the instant application (adhesive resin based on polyimide and maleimide and used for wiring boards).
Kudo discloses that its cured film is formed from a composition having 15-85 mass% (A) a maleimide terminated compound represented by formula (1) and having multiple imide linkages and molecular mass of 3,000 to 50,000 (viz. a maleimide terminated polyimide), 15-85 mass% (C) a heat curable resin selected from, inter alia, a polyimide resin and various bismaleimides, and (B) a reaction promoter in the form of a radical initiator contained at 0.1 to 5 mass part per 100 part sum of (A) and (C). (Id. ¶¶ 0033, 0082, 0087, 0122, 0123, and 0127). Either (A) or (C) can read on the claimed polyimide resin, with the other ((C) or (A) respectively) reading on the claimed maleimide compound. Specifically, with the values m and n in formula (1) being independently 1 to 100, (A) is a polyimide at sufficiently high values of m and n. Furthermore, each of (A) and (C) contains multiple maleimide moieties.
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It is readily apparent that the mass% ratios overlap the various claimed proportions. It would have been obvious to one of ordinary skill in the art to have selected the overlapping portion of the ranges disclosed by the reference because overlapping ranges have been held to be a prima facie case of obviousness. (See In re Wertheim, 191 USPQ 90, In re Woodruff, 16 USPQ2d 1934, and In re Peterson, 65 USPQ2d 1379; MPEP § 2144.05). In specific instances, (A) is contained at 70 mass%, (C) is contained at 30 mass% (ratio of (A) to (C) at 2.33), and the radical initiator is contained at 2 mass% (6.7 parts by mass per 100 parts of (C)). Thus, it readily follows that the claimed mass ratios can be derived in a straightforward manner.
Lastly, Kudo discloses that the thickness of its cured film ranges from 3 to 80 µm. (Kudo ¶ 0108). This overlaps the claimed range.
Kudo renders obvious claim 1.
Considering claim 2, Kudo discloses that its invention is designed to be used with metal foils having low surface roughness, and that foils with low surface roughness exhibits lower transmission loss. (Kudo ¶¶ 0008-0010). With Kudo generally disclosing preference for metal foils having low surface roughness, the range recited in claim 2 is obvious as a workable range. Silence of a reference on a quantitative limitation when the reference discloses the general characteristic is not deemed to support patentability unless there is evidence indicating such quantitative limitation is critical. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation”; MPEP 2144.05 II.A.
Furthermore, in its discussion of prior art intended for 5G usage, Kudo mentions JP 2018/095815 A. (Kudo ¶¶ 0006-0008). This reference uses a copper foil by the trade name of Furukawa FV-WS, which is known to have Rz roughness of 1.2 µm. As such, Kudo also recognizes the roughness level for which its invention is intended, and given Kudo’s general aim at using a copper foil having low roughness, usage of a foil having Rz of 1.2 µm would have been obvious.
Double Patenting Rejection
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 and 2 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3 and 5 of U.S. Patent No. 18/835,000. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-3 and 5 of the ‘000 Application recites all subject matters recited in claims 1 and 2 of the Instant Application.
Concluding Remarks
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. WO 2022/021620 A1 (referenced using its English-language counterpart publication U.S. 2024/0191030 A1) renders obvious claims 1 and 2.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Zheren Jim Yang whose telephone number is (571)272-6604. The examiner can normally be reached M-F 10:30 - 7:30 ET.
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/Z. Jim Yang/Primary Examiner, Art Unit 1781
Prosecution Insights