COPOLYMER, METHOD OF PREPARING THE SAME, RESIN COMPOSITION, AND PRODUCT OF THE SAME

DETAILED ACTION Notice of Pre-AIA or AIA Status 1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA . Election/Restrictions 2. Applicants’ election without traverse of Group I (claims 1-5 and 8-20; “a copolymer”, “a resin composition” and “a product”) in the reply filed on 0 is acknowledged. 3. Claims 6 and 7 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 07/28/2026. 4. It is also noted that the applicants request rejoinder of non-elected process claims (see Page 9 of the Applicants’ Remarks filed 07/28/2026). However, the request for rejoinder is moot since the instant claims are not deemed allowable for the reasons set forth below. According to MPEP § 821.04 [R-3], “Rejoinder involves withdrawal of a restriction requirement between an allowable elected invention and a nonelected invention and examination of the formerly nonelected invention on the merits.” Since no allowable subject matter is currently present, the applicants’ request for rejoinder is not granted at this time. Claim Objections 5. Claims 1-2 and 10 are objected to because of the following informalities: As to Claim 1: The applicants are advised to add the term “the” before “phenylvinylsilane” in lines 4 and 5 of claim 1. As to Claim 2: The applicants are advised to delete the comma (,) after the claimed phrase “85 to 95 parts by weight”. As to Claim 10: The applicants are advised to replace the claimed phrase “methacryl-terminated ate polyphenylene ether resin” to “methacrylate-terminated polyphenylene ether resin” to be consistent with the language used in claim 9. Appropriate corrections are required. 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. 6. Claims 1-5, 8-10, and 12-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims of U.S. Patent No. 12,735,563 (hereinafter referred to as “the patent”). The claims of the patent and the present application are directed to a copolymer and resin composition comprising the same, wherein the copolymer has a molecular weight of 2,000-50,000. The claims of the patent, like the present application, recites that the copolymer comprises a structural unit formed of phenylvinylsilane and alkenyl compound (corresponding to the presently claimed vinyl-containing compound A), based on the total weight of the phenylvinylsilane and alkenyl compound (vinyl-containing compound A), 80-98 parts by weight of the phenylvinylsilane and 2-20 parts by weight of the alkenyl compound (vinyl-containing compound A), and the phenylvinylsilane has a structure of formula (1) or (2), and the alkenyl compound (vinyl-containing compound A) has a structure of formula (3): PNG media_image1.png 350 448 media_image1.png Greyscale PNG media_image2.png 158 446 media_image2.png Greyscale Formula (3), wherein Ra, Rb, Rc, and Rd are each independently H or a monovalent organic group; m and n are each independently an integer from 0 to 5, and Re, Rf, Rg, and Rh are each independently H or monovalent alkyl having 1-4 carbon atoms. The claims of the patent also recite 80-98 parts by weight of the phenylvinylsilane and 2-20 parts by weight of the alkenyl compound (vinyl-containing compound A), which overlap with that recited, i.e., 80-95 parts by weight of the phenylvinylsilane and 5-15 parts by weight of the vinyl-containing compound A. The claims of the patent and the present application both further recite the same structures (Compare claims 3 and 4 of the present application with claims 1 and 5 of the patent). Moreover, the claims of the patent and the present application recite the resin composition further comprises at least one of a vinyl group containing polyphenylene ether resin, a maleimide resin, a maleimide triazine resin, and a polyamide resin, and at least one of amine curing agent, an inorganic filler, a curing accelerator, and a silane coupling agent. Additionally, the claims of the patent and the present application recite that the resin composition is used to prepare a product comprising a prepreg, a resin film, a laminate, a printed circuit board or a cured insulator. Finally, the product has a glass transition temperature of greater than or equal to 220 degrees Celsius (which overlaps with the presently claimed glass transition temperature of greater than or equal to 175 degrees Celsius), copper foil peeling strength greater than or equal to 2.00 lb/in. (which overlaps with the presently claimed copper foil greater than or equal to 3.10 lb/in), dielectric constant at 10 Hz of less than or equal to 3.40 (inclusive of the presently claimed dielectric constant of less than or equal to 3.00) and Z-axis ratio of thermal expansion as measured by reference to IPC-TM-650 2.4.24.5 of less than or equal to 1.40%, and an X-axis coefficient of thermal expansion as measured by reference to IPC-TM-650 2.4.24.5 of less than or equal to 11 ppm/°C, a dissipation factor of 10 Ghz of less than or equal to 0.00300 (which is inclusive of the presently claimed dissipation factor of less than or equal to 0.00105), and an Z-axis ratio thermal expansion of less than or equal to 1.40% (which is inclusive of the presently claimed Z-axis ratio of thermal expansion of less than or equal to 2.6). However, the claims of the patent do not mention the specific amounts of a vinyl-containing polyphenylene ether resin and polyolefin resin as required by independent claim 8 of the present application. Nevertheless, the claims of the patent do recite the presence of 20-100 parts by weight of a vinylbenzyl-terminated phenolic resin (corresponding to the presently claimed vinyl containing polyphenylene ether resin) and 5-30 parts by weight of a polyolefin resin in the resin composition, which overlaps with the presently claimed 15-70 parts by weight of the vinyl-containing polyphenylene ether resin and touches the presently claimed 30-100 parts by weight of the polyolefin resin in the resin composition, respectively. Thus, the subject matter as a whole would have been obvious to one having ordinary skill in the art at the time the invention was made, since it has been held that choosing the over lapping portion, of the range taught in the prior art and the range claimed by the applicant, has been held to be a prima facie case of obviousness. See MPEP section 2144.05. Allowable Subject Matter 10. Claim 11 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. 11. On this record, it is noted that there are no prior art rejections of present claims 1-5 and 8-20 at this time. Upon further search, Hu et al. (U.S. Patent No. 12,152,144) was uncovered. Specifically, Hu et al. teach a phenylvinylsilane-divinylbenzene-styrene terpolymer (copolymer) prepared by copolymerizing 50 parts by weight to 70 parts by weight of phenylvinylsilane, 10 parts by weight to 20 parts by weight of divinylbenzene, and 20-30 parts by weight of styrene, based on the total amount of phenylvinylsilane, divinylbenzene and styrene being 100 parts by weight, wherein the phenylvinylsilane has a structure of Formula (I) or Formula (II): PNG media_image3.png 482 616 media_image3.png Greyscale (Col. 8, line 58 -Col. 9, line 20). However, the amount of phenylvinylsilane taught by Hu et al. (50-70 parts by weight) is outside that claimed, i.e., 80-98 parts by weight of phenylvinylsilane. Hu et al. also do not specifically mention that its copolymer is prepared from a structural unit comprising a particular amount of a vinyl-containing compound A having a particular structure of formula (3). Thus, Hu et al. reference was not applied in any rejections. Correspondence 12. Claim 12 of the present application recites, among other things, “a small molecule”. The claimed term “small molecule” is defined at paragraph [0116] of applicants’ published application, i.e., US PG PUB 2025/0136805. 13. Any inquiry concerning this communication or earlier communications from the examiner should be directed to HANNAH J PAK whose telephone number is (571)270-5456. The examiner can normally be reached 8-5 PM; M-F. 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, Arrie Lanee Reuther, can be reached at (571)-270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /HANNAH J PAK/Primary Examiner, Art Unit 1764