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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on August 05, 2026 has been entered.
Status of the Claims
By amendment filed August 05, 2026, claims 11, 12, 19 and 25 have been amended. Claims 11 through 14, and 16 through 27 are currently pending.
Response to Arguments
Applicant’s arguments, filed August 05, 2026, with respect to the rejections of the claims have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of the amendments to the claims. The amendments to claim 11 have overcome the prior art rejections and 112(a) rejections but have caused dependent claims 17 and 18 to be rejected under 112(d) for failing to further limit the parent claim. Both claims 17 and 18 require a second resin component that is different from the second resin component of parent claim 11 and therefore fail to further limit. Several attempts were made to contact attorney of record to discuss an examiner amendment but contact could not be made.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(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.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], 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.
Claims 17 and 18 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 11 requires that the second resin component comprises a hydroxy-functionalized polyphenolsiloxane-based compound however dependent claim 17 requires a resin mixture that does not comprise a hydroxy-functionalized polyphenolsiloxane-based compound and therefore fails to further limit. It is suggested that claim 17 is either cancelled or amended to recite “the second resin component further comprises a resin mixture”.
Claim 11 requires that the second resin component comprises a hydroxy-functionalized polyphenolsiloxane-based compound however dependent claim 18 requires that the second resin is a monomeric and/or oligomeric silsesquioxane compound which different from a hydroxy-functionalized polyphenolsiloxane-based compound and therefore fails to further limit. It is suggested that claim 18 is either cancelled or amended to recite “the second resin component further comprises”.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Allowable Subject Matter
Claims 11 through 14, 16 and 19 through 27 are allowed.
Claims 17 and 18 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
Huber (WIPO Patent Publication No. WO2019/154932A1) taught a method for forming an insulation system for components of an electrical rotating machine wherein a formulation which was either a dry powder or wet enamel was applied ton to a boil or bar to produce the insulation system. Furthermore, Huber teaches that the formulation comprised a first resin component and a second resin component based on siloxane. However, Huber does not fairly teach or suggest that the second resin component comprised a hydroxy-functionalized polyphenolsiloxane-based compound.
Conclusion
Claims 17 and 18 have been rejected and Claims 11 through 14, 16 and 19 through 27 have been allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL P WIECZOREK whose telephone number is (571)270-5341. The examiner can normally be reached Monday - Friday, 6:00 AM - 3:30 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael Cleveland can be reached at (571)272-1418. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL P WIECZOREK/Primary Examiner, Art Unit 1712
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