DETAILED ACTION
The following Office action concerns Patent Application Number 18/346,515. Claims 1-8 and 10-20 are pending in the application.
The applicant’s amendment filed November 14, 2025 has been entered.
The previous grounds of rejection are withdrawn in light of the applicant’s amendment.
The restriction requirement as to claims 2-4, 6-8, 12-19 is withdrawn and the claims are rejoined.
Allowable Subject Matter
Except for the double patenting rejections below, claims 1-8, 10-18, 20 would be allowable over the closest prior art of Albaugh et al (US 2016/0017185) in view of Hatakeyama et al (US 2022/0110569) and Zhang et al (US 2018/0182907). The references do not teach or suggest that the silicone resin further includes an epoxy group.
Claim Rejections - 35 USC § 112
The following is a quotation of the appropriate paragraphs of 35 U.S.C. § 112 that form the basis for the rejections under this section made in this Office action:
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 19 is rejected under 35 U.S.C. § 112(d) because it is identical in scope to claim 14.
Double Patenting
Claim 1 is provisionally rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1, 17 and 28 of co-pending Application No. 17/922,577. Although the conflicting claims are not identical, they are not patentably distinct from each other because claims 1, 17 and 28 include all the steps and components of instant claim 1.
This is a provisional obviousness-type double patenting rejection because the conflicting claims have not in fact been patented.
Claim 1 is provisionally rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1 and 9 of co-pending Application No. 18/346,485. Although the conflicting claims are not identical, they are not patentably distinct from each other because claims 1 and 9 include all the steps and components of instant claim 1.
This is a provisional obviousness-type double patenting rejection because the conflicting claims have not in fact been patented.
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 obviousness-type 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); and 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 a nonstatutory double patenting ground provided the conflicting application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement.
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
Response to Arguments
The previous grounds of rejection are withdrawn in light of the applicant’s amendment. New grounds of rejection are presented above.
Examiner’s Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to William Young whose telephone number is (571) 270-5078. The examiner can normally be reached Monday through Friday, 8:30 AM to 5 PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Angela Brown-Pettigrew, can be reached at 571-272-2817. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000./WILLIAM D YOUNG/Primary Examiner, Art Unit 1761 February 10, 2026