DETAILED ACTION
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 .
Response to Amendment
All outstanding rejections, except for those maintained below, are withdrawn in light of applicant’s amendment filed on 6/29/2026.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior office action.
No new grounds of rejection are set forth below. Thus, the following action is properly made final.
Claim Rejections - 35 USC § 103
Claims 11-20 are rejected under 35 U.S.C. 103 as being unpatentable over Saito (JP 2016-074872, machine translation).
The rejection is adequately set forth in paragraph 3 of Office action mailed on 4/29/2026 and is incorporated here by reference.
Response to Arguments
Applicant's arguments filed 6/29/2026 have been fully considered but they are not persuasive. Specifically, applicant argues that Saito’s block polyetherimide siloxane copolymer with a polydimethylsiloxane block structure does not read on claimed “silicone resin.”
Because Saito discloses a block copolymer having a block derived from polydimethylsiloxane (i.e., silicone), the block copolymer is a “silicone resin” under broadest reasonable interpretation standard. Had Saito’s copolymer been a rando copolymer, rather than a block one, it would not have read on claimed “silicone resin” which requires a backbone of polydimethylsiloxane. While the specification describes a “silicone resin” as one having a “dense three-dimensional network structure” (page 30, paragraph 0091), this limitation is not read directly into the claims because it is not a definition. If it is a definition, it is noted that the other descriptions of the silicone-based polymer such as degree of polymerization and molecular weight (paragraph 0090) would also be considered to be required by independent claim 11. This does not appear to be the case. If required, the term “dense” would be considered as indefinite for not specifying how dense is “dense.” Lastly, the present specification teaches that the organopolysiloxane “preferably contains one or more functional groups” which suggests that the “silicone resin” is not one limited to only dimethylsiloxane repeat units.
Applicant also argues that the data of the present specification supports nonobviousness with respect to flexibility and flame retardance.
The examples have been fully considered but do not establish unexpected results because the data is not a proper comparison to the prior art Saito which uses a block polyetherimide siloxane copolymer. Case law holds that comparative showings must compare the claimed subject matter with the closest prior art to be effective. See In re Burckel, 592 F.2d 1175, 1179, 201 USPQ 67, 71 (CCPA 1979).
Conclusion
THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 VICKEY NERANGIS whose telephone number is (571)272-2701. The examiner can normally be reached 8:30 am - 5:00 pm EST, Monday - Friday.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joseph Del Sole can be reached at (571)272-1130. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/VICKEY NERANGIS/Primary Examiner, Art Unit 1763
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