Prosecution Insights
Last updated: April 18, 2026
Application No. 18/232,281

RESIN COMPOSITION AND ARTICLE MADE THEREFROM

Non-Final OA §103
Filed
Aug 09, 2023
Examiner
DARLING, DEVIN MITCHELL
Art Unit
1764
Tech Center
1700 — Chemical & Materials Engineering
Assignee
Elite Material Co. Ltd.
OA Round
1 (Non-Final)
68%
Grant Probability
Favorable
1-2
OA Rounds
3y 3m
To Grant
76%
With Interview

Examiner Intelligence

Grants 68% — above average
68%
Career Allow Rate
17 granted / 25 resolved
+3.0% vs TC avg
Moderate +8% lift
Without
With
+8.3%
Interview Lift
resolved cases with interview
Typical timeline
3y 3m
Avg Prosecution
51 currently pending
Career history
76
Total Applications
across all art units

Statute-Specific Performance

§101
1.5%
-38.5% vs TC avg
§103
51.0%
+11.0% vs TC avg
§102
13.9%
-26.1% vs TC avg
§112
22.5%
-17.5% vs TC avg
Black line = Tech Center average estimate • Based on career data from 25 resolved cases

Office Action

§103
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. Claim Rejections - 35 USC § 103 In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status. 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. Claim(s) 1-10 are rejected under 35 U.S.C. 103 as being unpatentable over WO2022/014599 to Arai et al. in view of US2020/0247947 to Chen et al . For the purposes of examination, citations for Arai are taken from the US equivalent document US20230287222 . Regarding Claims 1 -4, 6 Arai teaches a composition [title] wherein example 8 comprises bifunctional polyphenylene ether oligomer (OPE-2St) [table 2] that is the same commercially available material as instant application [instant specification, 0040] thereby reading on the vinyl group-containing polyphenylene ether resin limitations of claims 1 and 4; and O-4 [table 2, example 8] that is a terpolymer comprising 43 mass% ethylene, 53 mass% styrene, and the remaining 4 mass% of the terpolymer is divinylbenzene [table 1] thereby reading on the divinylbenzene-styrene-ethylene terpolymer of claims 1 and 6 ; and a curing agent [Table 2, Example 7]. Arai does not particularly teach the polyphenylene ether resin in an amount of 100 parts, relative to the divinylbenzene-styrene-ethylene terpolymer. However, it would have been obvious to one of ordinary skill in the art to select 200 parts by mass as taught by Arai [0069], as the amount of the component (b) (i.e., polyphenylene ether resin in example 8) as the addition polyphenylene ether resin in this range improves the mechanical properties of the cured product obtained from the varnish [0069]. Arai does not particularly teach the amount of curing agent of 5 to 15 parts by weight in the specified embodiment . However, Arai teaches the amount of curing agent used is not particularly limited, and in general preferably up to 10 parts by mass. However, [w]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover optimum or workable ranges by routine experimentation. In re Aller , 220 F.2d 454, 105, 105 USPQ 233 (CCPA 1955) (MPEP 2144.05) Before the effective filing date of the instantly claimed invention, it would have been obvious to a person of ordinary skill in the art to optimize amount of curing agent so that the varnish is adequately cured . A prima facie case of obviousness may be rebutted, however, where the results of the optimizing variable, which is known to be result-effective, are unexpectedly good. In re Boesch and Slaney, 617 F.2d 272, 205, 205 USPQ 215 (CCPA 1980) (MPEP 2144.05(II)) . As such, Arai teaches a composition comprising 200 parts polyphenylene ether, 100 parts terpolymer, and up to 10 parts curing agent, therefore reducing to 100 parts polyphenylene ether resin, 50 parts terpolymer, and 5 parts curing agent, therefore reasonably reading on the amounts of each component set forth in claim 1. Though the prior art range is not identical to the claimed range (100 parts, 20-60 parts, and 5-15 parts respectively) , it does overlap. It has been held that, where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists. In re Wertheim , 541 F.2d 257, 191 USPG 90 (CCPA 1976) (MPEP 2144.05) Arai is silent regarding the curing agent is a compound represented by formula (1). However, Chen teaches peroxide initiators as suitable examples of curing agents as well as carbon based radical curing agents [Chen, 0073] such as 2,3,-dimethyl-2,3,-diphenylbutane [0075] (i.e., Formula (2) as set forth in instant claim 3) thereby reading on Formula (1) , methylene, and Formula (2) of claim s 1- 3 . Arai and Chen are analogous art as they are from the same field of endeavor, namely compositions comprising polyphenylene resins suitable for circuit boards. Before the effective filing date of the instantly claimed invention, it would have been obvious to a person of ordinary skill in the art to substitute 2,3-dimethyl-2,3-diphenylbutane for the peroxide initiators used in Arai . The motivation would have been that it is obvious to substitute equivalents known for the same purpose. (MPEP 2144.06) Chen discloses that both peroxide radicals and carbon-based radicals such as 2,3-dimethyl-2,3-diphenylbutane are suitable curing agents for use in polyphenylene ether compositions , thus providing evidence of obviousness in substituting one for the other in such compositions. Regarding Claim(s) 5, Arai teaches the resin composition of claim 1, wherein the copolymerized oligomer O-4 has a Mn of 10400 [table 1]. Regarding Claim(s) 7, Arai teaches the resin composition of claim 1, further comprising a polyolefin such as ethylene-octene hydrocarbon based elastomer [0070]. Regarding Claim(s) 8, Arai teaches the resin composition of claim 1, further comprising an inorganic filler [0092]. Regarding Claim(s) 9, Arai teaches the resin composition of claim 1, that is used as a semiconductor device or lamination [0099]. Regarding Claim(s) 10, Arai does not teach the specified testing measurements of claim 10 . However, Arai , when modified in the manner proposed above, teaches a product prepared from all of the claimed ingredients in the claimed amounts by a substantially similar process. Therefore, the claimed effects and physical properties - i.e. a copper foil peeling strength of a copper-containing laminate as measured by reference to IPC-TM-650 2.4.8 of greater than 2.90 lb/in; a water absorption rate as measured by reference to IPC-TM-650 2.6.2.1a of less than or equal to 0.030%; a dissipation factor at 10 GHz and room temperature as measured by reference to JIS C2565 of less than or equal to 0.00120; and /or a dissipation factor at 10 GHz and room temperature after the article is heated at 125°C for 200 hours as measured by reference to JIS C2565 of less than or equal to 0.00300 - would implicitly be achieved in a product prepared from all of the claimed ingredients in the claimed amounts by a substantially similar process. See In Re Spada , 911, F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) and MPEP 2111.01 (I)(II). If it is applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position and (2) it would be the Office’s position that the application contains inadequate disclosure as to how to obtain the claimed properties in a product prepared from all of the claimed ingredients in the claimed amounts by a substantially similar process. Conclusion Any inquiry concerning this communication or earlier communications from the examiner should be directed to Devin Darling whose telephone number is (703) 756-5411. The examiner can normally be reached FILLIN "Work Schedule?" \* MERGEFORMAT M-F 9:00- 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, Arrie Lanee Reuther can be reached on (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. /DEVIN MITCHELL DARLING/ Examiner, Art Unit 1764 /MELISSA A RIOJA/ Primary Examiner, Art Unit 1764
Read full office action

Prosecution Timeline

Aug 09, 2023
Application Filed
Apr 02, 2026
Non-Final Rejection — §103 (current)

Precedent Cases

Applications granted by this same examiner with similar technology

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THERMOPLASTIC RESIN COMPOSITION AND MOLDED ARTICLE MANUFACTURED USING THE SAME
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2y 5m to grant Granted Jan 27, 2026
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PROCESS FOR PRODUCING A POLYETHYLENE COMPOSITION USING MOLECULAR WEIGHT ENLARGEMENT
2y 5m to grant Granted Dec 23, 2025
Study what changed to get past this examiner. Based on 5 most recent grants.

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Prosecution Projections

1-2
Expected OA Rounds
68%
Grant Probability
76%
With Interview (+8.3%)
3y 3m
Median Time to Grant
Low
PTA Risk
Based on 25 resolved cases by this examiner. Grant probability derived from career allow rate.

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