DETAILED ACTION
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 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 of U.S. Patent No. 12167543. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-20 of the present application would read on claims 1-13 of US Patent 12167543.
Claim Rejections - 35 USC § 102/103
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:
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
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.
Claims 1-6 and 11-20 are rejected under 35 U.S.C. 102(a1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Maa et al (US Publication 2004/0149681).
As to claims 1, 16, 17, Maa discloses a printed circuit board having a permanent solder mask on a substrate. The substrate (component carrier) has a first solder mask (top solder mask) on one face of the substrate and a second solder mask (base solder mask) on the other face of the substrate. As seen in the figures the two solder masks are formed on top of each other. The solder mask covers a target section of the substrate at predefined locations. The first solder mask is capable of being formed as a component alignment, identification mark or orientation mark. In the alternative it would have been obvious to one of ordinary skill in the art to have formed the claimed layer arrangement as it has been shown to be obvious to rearrange layers only involves routine skill in the art. See MPEP 2144.04c.
As to claim 2, Maa discloses that the solder mask is formed over the substrate having a first and second area which surrounds the first area and wherein the first area has a thickness greater than the second thickness.
As to claim 3, Maa discloses that the solder mask looks to be formed in a central area of the substrate as seen in the figures.
As to claims 4-6, these claims are being met since claim 1 is met since the component alignment is an alternative choice and the solder mask of Maa can be formed as an identification mark.
As to claims 11, 12, Maa discloses a patterned mask, however is silent to the thickness/shape of the solder mask. It would have been obvious to one of ordinary skill in the art to have modified Maa and formed the solder mask to have either a rounded/chamfered edge and have the base solder mask be thicker than the top solder mask as it’s a modification that is recognized as being within the level of ordinary skill within the art and obvious. See Gardner vs TEC systems 725.F. 2d 1338, 220 USPQ 777. See MPEP 2144.04.
As to claims 13 and 14, Maa discloses that the that the first solder mask is formed in a predefined pattern and as can be seen from figures 1 and 2, the mask is formed in stripes.
As to claim 15, Maa discloses that the solder mask can have a thickness of 2 to 200 microns and therefore would be obvious to have a thickness of 15 to 30 microns as it overlaps in scope.
As to claim 18, it would have been obvious to one of ordinary skill in the art to have modified Maa and duplicated the top solder mask as it has been held that "mere duplication of parts has no patentable significance unless a new and unexpected result is produced.” Please see MPEP 2144.04 and In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960).
As to claim 19 and 20, Maa discloses that the target section is a conductive path and that it is surrounded or partially surrounded.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTOPHER M POLLEY whose telephone number is (571)270-5734. The examiner can normally be reached Monday through Friday from 8am till 4:30 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Ruthkosky can be reached at 5712721291. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CHRISTOPHER M POLLEY/Primary Examiner, Art Unit 1785
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