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 .
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 1-2 and 7-9 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1, 6, and 8-12 of co-pending Application No. 18/855735. Although the claims at issue are not identical, they are not patentably distinct from each other because of the following reasons:
Regarding Claims 1-2, Co-pending ‘735 recites a prepreg comprising a thermosetting resin composition and a fiber base material, wherein the prepreg has a first region containing a thermosetting resin composition and a second region containing a thermosetting resin composition different from the thermosetting resin composition contained in the first region (Claim 1). The thermosetting resin composition contained in the first region and the thermosetting resin composition contained in the second region contain an inorganic filler, and a volume-based content V(1) of the inorganic filler in the thermosetting resin composition contained in the first region is lower than a volume-based content V(2) of the inorganic filler in the thermosetting resin composition contained in the second region (Claim 6). The volume-based content V(1) of the inorganic filler in the thermosetting resin composition contained in the first region is 5% to 60% by volume (Claim 8), and the volume-based content V(2) of the inorganic filler in the thermosetting resin composition contained in the second region is 20% to 80% by volume (Claim 9).
In light of the overlap between the present claims and those recited by co-pending ‘735, the requirements of the present claims are considered met by co-pending ‘735.
Regarding Claim 7, co-pending ‘735 further recites a laminated plate comprising a cured product of the prepreg and a metal foil (Claim 10).
Regarding Claim 8, co-pending ‘735 further recites a printed wiring board comprising a cured product of the prepreg (Claim 11).
Regarding Claim 9, co-pending ‘735 further recites a semiconductor package comprising the printed wiring board and a semiconductor element (Claim 12).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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, 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.
Claims 1-9 are rejected under 35 U.S.C. 103 as being unpatentable over Tsurui et al. (JP 2022/090371 A).
Regarding Claims 1-3, Tsurui discloses a prepreg comprising a sheet-like fiber base material, a first resin composition impregnating the sheet-like fiber base material, and a resin composition layer on the surface of the prepreg comprising a second resin composition (para 0014). The first resin composition comprises a thermosetting resin (para 0017) and 30-80 vol% inorganic filler (paras 0050, 0061) (i.e. forming a high filled region layer). The second resin composition layer comprises thermosetting resin (paras 0094, 0017). The second resin composition may optionally contain an inorganic filler, but this is not required (para 0094); therefore the second resin composition may comprise no inorganic filler (i.e. forming a low filled region layer).
In light of the overlap between the claimed prepreg and that disclosed by Tsurui, it would have been obvious to one of ordinary skill in the art to produce a prepreg that is both disclosed by Tsurui and is encompassed within the scope of the present claims, and thereby arrive at the claimed invention.
Regarding Claim 4, Tsurui discloses all the limitations of the present invention according to Claim 3 above. Tsurui further discloses the prepreg may comprise two resin sheets made of the first resin composition (i.e. two high filled region layers) applied to opposite sides of the sheet-like fiber base (para 0127).
Alternatively, Tsurui further discloses the layers may be repeatedly formed to form a multilayer product (para 0178), which would have multiple layers of the first resin composition (i.e. two or more high filled region layer).
Regarding Claim 5, Tsurui discloses all the limitations of the present invention according to Claim 1 above. Tsurui further discloses the thermosetting resin may be epoxy resin, phenolic resin, benzoxazine resin, cyanate ester resin, or amine resin (para 0018).
Regarding Claim 6, Tsurui discloses all the limitations of the present invention according to Claim 1 above. Tsurui further discloses the inorganic filler may be silica, alumina, aluminosilicate, talc, clay, mica powder, magnesium hydroxide, calcium carbonate, boron nitride, aluminum borate, strontium titanate, calcium titanate, titanium oxide, or barium titanate (para 0050).
Regarding Claim 7, Tsurui discloses all the limitations of the present invention according to Claim 1 above. Tsurui further discloses a laminated sheet comprising the above prepreg with resin composition layer, and a metal foil (para 0110).
Regarding Claim 8, Tsurui discloses all the limitations of the present invention according to Claim 1 above. Tsurui further discloses a printed wiring board comprising a cured product of the above prepreg with resin composition layer (para 0133).
Regarding Claim 9, Tsurui discloses all the limitations of the present invention according to Claim 8 above. Tsurui further discloses a semiconductor device comprising the above printed wiring board and a semiconductor chip (para 0192).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BETHANY M MILLER whose telephone number is (571)272-2109. The examiner can normally be reached M-F 8:00-4:00.
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/BETHANY M MILLER/Examiner, Art Unit 1787
/CALLIE E SHOSHO/Supervisory Patent Examiner, Art Unit 1787