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 .
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.
Claims 1-2, 11-12, and 14-18 are rejected under 35 U.S.C. 103 as being unpatentable over Yamamoto et al., U.S. Patent Application Publication No. 2007/0015884 in view of Kang et al., JP 2019- 167407 and Chen et al., TW 201416383 for the reasons outlined in the March 18, 2025 Office communication.
Allowable Subject Matter
Claim 19 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Response to Arguments/Declaration
Ostensibly to address the Examiner’s observation that,
“… 10 wt.% of the resin does not at the present time clearly represent a critical threshold. Indeed, Applicant has only demonstrated that the appearance worsens when the amount of siloxane is half this floor value, and for a single combination of a structurally-conforming siloxane and curable resin”
Applicant has summarized the results of a single additional comparative trial, comparative example 2-3 where 9% of the silicone component first disclosed in Example 1-2 of the Specification relative to 100 parts of the base resin was added. This was the distinguishing compositional feature as compared to Example 2-3 where 10% of the silicone component first disclosed in Example 1-2 of the Specification relative to 100 parts of the base resin was added. Applicant remarked that whereas both exemplary composition 2-3 and comparative composition 2-3 exhibited uniform experience, the latter had a sticky tactile feel whereas the former did not, thus illustrating an unexpectedly beneficial improvement.
The problem with Applicants’ showing, and the Examiner alluded to this in the analysis emphasized above, is that Applicant has only shown there to be a distinction in terms of properties for a single combination of a particular epoxy resin and one particular embodiment of the claimed silicone. Applicant did not even endeavor to show how the products differ in unexpected ways when 9% of the silicone component first disclosed in Example 1-1 of the Specification is added relative to 100 parts of the same base resin used in Example 2-3, let alone combinations of other epoxy resins with these same silicones described in Examples 1-1 and 1-2 or combinations of the other thermosets contemplated in claim 19. (Applicant will note that the resin does not even have to be thermosetting in claim 1.) That is to say, Applicants’ showing to date is well-short of being commensurate in scope with the claimed invention.
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARC S ZIMMER whose telephone number is (571)272-1096. The examiner can normally be reached M-F 8:30-5:00.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Heidi Kelley can be reached at 571-270-1831. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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April 8, 2026
/MARC S ZIMMER/Primary Patent Examiner, Art Unit 1765
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