Prosecution Insights
Last updated: April 19, 2026
Application No. 18/357,167

RESIN COMPOSITION

Non-Final OA §103§112
Filed
Jul 24, 2023
Examiner
LING, DORIS
Art Unit
1764
Tech Center
1700 — Chemical & Materials Engineering
Assignee
Nan Ya Plastics Corporation
OA Round
1 (Non-Final)
33%
Grant Probability
At Risk
1-2
OA Rounds
3y 2m
To Grant
99%
With Interview

Examiner Intelligence

Grants only 33% of cases
33%
Career Allow Rate
5 granted / 15 resolved
-31.7% vs TC avg
Strong +71% interview lift
Without
With
+71.4%
Interview Lift
resolved cases with interview
Typical timeline
3y 2m
Avg Prosecution
36 currently pending
Career history
51
Total Applications
across all art units

Statute-Specific Performance

§101
0.8%
-39.2% vs TC avg
§103
49.3%
+9.3% vs TC avg
§102
18.5%
-21.5% vs TC avg
§112
19.6%
-20.4% vs TC avg
Black line = Tech Center average estimate • Based on career data from 15 resolved cases

Office Action

§103 §112
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. The Office Action is in response to the application filed July 24, 2023 . Claim Analysis Summary of Claim 1 : A resin composition, comprising: a resin base, comprising: a first resin polymerized from a first monomer mixture comprising styrene, divinylbenzene, and ethylene; a second resin comprising a bismaleimide-modified polyphenylene ether resin; and a divinylbenzene crosslinking agent; a halogen-free flame retardant; a spherical silica; and a siloxane coupling agent. Claim Objections Claim s 7, 9, and 10 use the acronym “ SBS ”. Applicants are suggested to change “ SBS ” in claim 7 to “ styrene-butadiene-styrene block copolymer (SBS) ” since this is the first time the acronym i s used . Claim Rejections - 35 USC § 112 The following is a quotation of 35 U.S.C. 112(b): (B) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention. The following is a quotation of 35 U.S.C. 112 (pre-AIA), second paragraph: The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention. Claim 9 is r ejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention. C laim 9 recites SBS resin in an amount of “0 to 30 parts by weight”. The recitation of 0 means there is no SBS present. However, C laim 7 (from which C laim 9 depends) requires SBS. It is unclear whether or not the SBS is required in C laim 9. Claim 9 is considered indefinite and is thereby rejected. Claim Rejections - 35 USC § 103 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 1-6, and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Zhang ‘212 et al. ( US 2023 / 0151212 A1 ; hereafter as “ Zhang ‘212 ”) in view of Yan et al. ( CN 106480735 A ; cited in the IDS mailed on 01/23/2024; English translation incorporated herein; hereafter as “Yan” ) and Zhang et al . ( CN 110922536 A ; cited in the IDS mailed on 01/23/2024; English translation incorporated herein; hereafter as “Zhang ‘536” ). Regarding Claim 1, Zhang ‘212 teaches a resin composition [Claim 9], corresponding to the resin composition of Claim 1, wherein the resin composition comprises: Divinylbenzene crosslinking agent [Claim 11], corresponding to a divinylbenzene crosslinking agent of Claim 1; Phosphorus-containing flame retardant [¶ 0130; Claim 15], corresponding to a halogen-free flame retardant of Claim 1; Filler, such as silica, that may be spherical [Claims 2, 9; ¶ 0066], corresponding to a spherical silica of Claim 1; and Siloxane coupling agent [¶ 0136; Claim 15], corresponding to a siloxane coupling agent of Claim 1. Zhang ‘212 also teaches : styrene-butadiene-divinylbenzene terpolymer [Claim 13], corresponding to a first resin polymerized from a first monomer mixture comprising styrene and divinylbenzene of Claim 1; and phenylene ether resin [Claim 9], corresponding to a second resin comprising a polyphenylene ether resin of Claim 1 . However, Zhang ‘212 is silent to a first resin polymerized from a first monomer mixture comprising ethylene of Claim 1 , and to the second resin comprising a bismaleimide-modified polyphenylene ether resin of Claim 1 . Nevertheless, Yan teaches a resin composition comprising polyphenylene ether resin , styrene-divinylbenzene copolymer resin [¶ 0042], a nd styrene-(ethylene-butene)-styrene triblock copolymer [Claim 3], wherein the ethylene of the styrene-(ethylene-butene)-styrene triblock copolymer corresponds to the ethylene of the first monomer mixture of Claim 1. Yan offers the motivation that th is resin composition has a low dielectric constant [¶ 0011] . Furthermore , Zhang ‘536 teaches a resin composition comprising s tyrene-butadiene-divinylbenzene terpolymers [Claim 22], flame retardant [Claim 24], spherical silica [Claim 24; ¶ 0024, 0167], siloxane coupling agent [¶ 0142], and bismaleimide modified polyphenylene ether resin [Claim 22], wherein the bismaleimide modified polyphenylene ether resin corresponds to the bismaleimide modified polyphenylene ether resin of Claim 1. Zhang ‘536 offers the motivation that p olyphenylene ether resins can usually be improved by introducing bismaleimide to obtain a low coefficient of thermal expansion and high heat resistance [¶ 0004] . Zhang ‘212 , Yan , and Zhang ‘536 are considered to be analogous art as the claimed invention, as all are in the same field of resin compositions comprising polyethylene ether resin , styrene co polymer , filler, and flame retardant, . Therefore, it would be obvious to one of ordinary skill in the art that is motivated to reduce the dielectric constant and thermal expansion to use the ethylene of Yan and the bismaleimide modified polyphenylene ether resin of Zhang ‘536 with the resin composition of Zhang ‘212 thereby arriving at the claimed invention. Regarding Claim 2, Zhang ‘212 teaches: 13-35 parts per weight of styrene- divinylbenzene copolymer [¶ 0027-0028], which is equivalent to 8.5-25 wt. % ( min. amt. first resin total amt. = 13 153 =8.5 wt. %; max. amt. first resin total amt. = 35 140 =25 wt. % ) ; 4-40 parts per weight of crosslinking agent, such as divinylbenzene crosslinking agent [¶ 0027-0028], which is equivalent to 3.6-26 wt. % ( min. amt. crosslinking agent total amt. = 4 140 =3.6 wt. %; max. amt. crosslinking agent total amt. = 40 153 =26 wt. % ), which corresponds to a content of the divinylbenzene crosslinking agent is 10 parts by weight to 30 parts by weigh t ; and Resin compositions with polyphenylene ether have better heat resistance and dielectric properties [¶ 0294]. However, Zhang ‘212 does not explicitly teach w herein based on 100 parts by weight of the resin base, a content of the first resin is 30 parts by weight to 60 parts by weight of Claim 2, and a content of the second resin is 20 parts by weight to 40 parts by weight of Claim 2 . Nevertheless, Zhang ‘212 teaches the first resin accounts for 8.5-25 wt. % of the resin base [¶ 00 27-0028 ]. The amount of 25 wt. % as taught by Zhang ‘212 is substantially close to the lower range of 30 wt . % as required by the instant claims. One of ordinary skill would have expected compositions that are in such close proportions to those in prior art to be prima facie obvious and to have the same properties. Titanium Metals Corp ., 227 USPQ 773 (CA FC 1985). See MPEP 2144.05. Therefore, it would have been obvious to one of ordinary skill in the art to expect the amount of 25 % of the first resin as taught by Zhang ‘212 would result in the same properties as the claimed range of 30 wt . % thereby rendering the claimed range obvious. Regarding the claimed amount of 20 parts by weight to 40 parts by weight of the second resin, Zhang ‘212 teaches resin compositions with polyphenylene ether, which corresponds to the claimed second resin, have better heat resistance and dielectric properties [¶ 0294]. Therefore, the amount of the polyphenylene ether can be optimized to reach the desired thermal and dielectric properties via a routine optimization. The case law has held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch , 617 F.2d 272, 205 USPQ 215 (CCPA 1980). Thus, it would have been obvious to one having ordinary skill in the art at the time of the invention was made to adjust the amount of polyphenylene ether for the intended application via a routine optimization, thereby obtaining the present invention. Regarding Claims 3- 4 , Zhang ‘212 further teaches: 1-100 parts by weight flame retardant [¶ 0129], which is equivalent to 0.07-47 phr ( min. amt. flame retardant total amt. resin base = 1 136 =0.07 phr; max. amt. flame retardant total amt. resin base = 100 213 =47 phr ), which corresponds to wherein based on 100 parts by weight of the resin base, an addition amount of the halogen-free flame retardant is 20 phr to 50 phr of Claim 3; and 50-130 parts per weight of a filler, such as spherical silica [¶ 0027-0028], which is equivalent to 2.7-52 wt. % ( min. amt. spherical silica total amt. = 50 180 =2.7 wt. %; max. amt. spherical silica total amt. = 130 248 =52 wt. % ), which corresponds to wherein based on a weight sum of 100 parts by weight of the resin base and the halogen-free flame retardant, an addition amount of the spherical silica is 20 parts by weight to 50 parts by weight , which is equivalent to 10-38 wt. %. Regarding Claim 5, Zhang ‘212 teaches the polyolefin , such as the styrene-butadiene-divinylbenzene terpolymer , which corresponds to the claimed first resin , can improve the dielectric properties of the cured resin composition [¶ 0108]. However, Zhang ‘212 does not explicitly disclose wherein a molar ratio of styrene:divinylbenzene:ethylene in the first monomer mixture is 1:1:1 to 2:2:1. Nevertheless , the ratio of molar ratio of styrene:divinylbenzene:ethylene in the first monomer mixture can be optimized to reach the desired dielectric properties [¶ 0108] in the final resin composition v ia a routine optimization. The case law has held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch , 617 F.2d 272, 205 USPQ 215 (CCPA 1980). Thus, it would have been obvious to one having ordinary skill in the art at the time of the invention was made to adjust the ratio of styrene:divinylbenzene:ethylene for the intended application via a routine optimization, thereby obtaining the present invention. Regarding Claim 6, Zhang ‘212 further teaches the number average molecular weight of the styrene-butadiene-divinylbenzene terpolymer , which corresponds to the first resin, ranges from 1 , 000 to 150 , 000 [¶ 0108], which overlaps wherein a number-average molecular weight of the first resin is 4500 to 6500 . However, Zhang ‘212 does not explicitly teach a number-average molecular weight of the first resin is 4500 to 6500. Nevertheless , one of ordinary skill in the art at the time the invention was made would have considered the invention to have been obvious because the range taught by Zhang ‘212 for the molecular weight ( 1 , 000 - 150 , 000 ) overlaps the instantly claimed range ( 4,500-6,500 ) and is therefore considered to establish a prima facie case of obviousness. It would have been obvious to one of ordinary skill in the art to select any portion of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in the prior art reference, MPEP 2144.05. Regarding Claim 12, Zhang ‘212 teaches the crosslinking density and glass transition temperature may be modified by controlling the amount of crosslinking agent [¶ 0104]. Zhang ‘212 also teaches that a lower dissipation factor variation rate under moisture and heat represents a better dielectric stability [¶ 0224] . However, Zhang ‘212 does not explicitly disclose wherein an electrical specification of the resin composition is a dielectric constant of 3.0 to 3.1 and a dissipation factor of less than 0.0015, and a heat resistance specification of the resin composition is a glass transition temperature of greater than 210 ˚ C. Nevertheless, the properties of the resin composition such as dielectric constant, dissipation factor, and glass transition temperature are functions of the composition and method by which it is made. Since Zhang ‘212 in view of Yan and Zhang ‘536 teach the same resin composition formed by the same method as required by the instant claim, as set forth in the rejection above, the resin composition of Zhang ‘212 , Yan , and Zhang ‘536 would be expected to result in the same dielectric constant, dissipation factor, and glass transition temperature as required by the instant claims. Case law has held that claiming of a new use, new function or unknown property which is expectedly present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977). The courts have stated that a chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 15 USPQ2d 1655, (Fed. Cir. 1990). See also In re Best, 562 F.2d 1252, 195 USPQ 430, (CCPA 1977). "Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established." Further, if it is the applicant's position that this would not be the case, evidence would need to be provided to support the applicant's position. In the alternative that the above disclosure is insufficient to anticipate the above listed claims, it would have nonetheless been obvious to the skilled artisan to produce the claimed properties, as the reference teaches each of the claimed ingredients ( a first resin, second resin , divinylbenzene crosslinking agent , halogen-free flame retardant , s pherical silica , and siloxane coupling agent ) for the same utility (making a resin composition) and for the same purpose (to producing electronic devices ). Claim 7 - 10 are rejected under 35 U.S.C. 103 as being unpatentable over Zhang ‘212 et al. ( US 2023 / 0151212 A1 ; hereafter as “ Zhang ‘212 ”) in view of Yan et al. ( CN 106480735 A ; cited in the IDS mailed on 01/23/2024; English translation incorporated herein; hereafter as “Yan” ) , Zhang et al. ( CN 110922536 A ; cited in the IDS mailed on 01/23/2024; English translation incorporated herein; hereafter as “Zhang ‘536” ) and in further view of Chouvel et al. ( FR 3037591 A1 ; English translation incorporated herein; hereafter as “ Chouvel ” ). Zhang ‘212 , Yan , and Zhang ‘536 teach the resin composition, first resin, second resin, divinylbenzene crosslinking agent, halogen-free flame retardant, spherical silica and siloxane coupling agent of Claim 1 as set forth above and incorporated herein by reference. Zhang ‘212 further teaches styrene-butadiene copolymer [¶ 0109]. However, Zhang ‘212 , Yan , and Zhang ‘536 are silent to a second monomer mixture comprising styrene, 1,2-butadiene, and 1,4-butadiene of Claims 7 , wherein a molar ratio of styrene:1,2-butadiene:1,4-butadiene in the second monomer mixture is 1:6:4 to 4:9:3 of Claim 8, and wherein a weight-average molecular weight of the SBS resin is 3500 to 5500 of Claim 10. Nevertheless, Chouvel teaches styrene-butadiene copolymer [Claim 5], corresponding to the SBS resin of Claims 7-8, and 10, said copolymer comprising: styrene-butadiene copolymer with a molecular weight of 500-5000 g/mol [¶ 0034], which overlaps with the molecular weight of 3500 to 5500 of Claim 10; styrene content of 10-60 mol. % [Claim 5], corresponding to the styrene of Claim 7; 4-75 mol . % of butadiene is 1,2-butadiene [Claim 5], corresponding to the 1,2-butadiene of Claim 7 ; 20-96 mol . % of butadiene is 1,4-butadiene [Claim 5], corresponding to the 1, 4 -butadiene of C l aim 7; and Wherein the above amounts of styrene , 1,2-butadiene , 1,4-butadiene overlap a molar ratio of styrene:1,2-butadiene:1,4-butadiene in the second monomer mixture is 1:6:4 to 4:9:3 of Claim 8 . The claimed ranges of 1:6:4 to 4:9:3 are equivalent to : 9-25 mol % of styrene, 54-56 mol % 1, 2 -butadiene , and 19-36 mol % of 1,4-butadiene ( ratio of styrene:1,2-butadiene:1,4-butadiene of 1:6:4 = 9%:54%:36%; 4:9:3 = 25%:56%:19%)) . Chouvel offers the motivation that styrene-butadiene copolymer can be modified to produce good elastomeric properties and sufficient mechanical strength [¶ 0052]. Zhang ‘212 , Yan , Zhang ‘536 and Chouvel are considered to be analogous art as the claimed invention, as all are in the same field of resin compositions comprising polyethylene ether resin, styrene copolymer, and filler . Therefore, it would be obvious to one of ordinary skill in the art that is motivated to improve the elastomeric and mechanical properties to use the styrene-butadiene copolymer of Chouvel with the resin composition of Zhang ‘212 , Yan , and Zhang ‘536 thereby arriving at the claimed invention. O ne of ordinary skill in the art at the time the invention was made would have considered the invention to have been obvious because the range taught by Chouvel for the ratio of styrene:1,2-butadiene:1,4-butadiene ( 10-60 mol %, 4-75 mol %, 20-96 mol %, respectively ) and molecular weight (500-5000 g/mol) overlaps the instantly claimed range s ( 9-25 mol %, 54-56 mol %, 19-36 mol %, 3500-5500 g/mol, respectively ) and is therefore considered to establish a prima facie case of obviousness. It would have been obvious to one of ordinary skill in the art to select any portion of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in the prior art reference, MPEP 2144.05. Claim 9 recites 0 parts by weight to 30 parts by weight of SBS. Zero parts includes no SBS, and will be interpreted as such for the purposes of examination. The resin composition of Zhang ‘212 does not require SBS resin, thereby reading on 0 parts by weight of SBS. Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Zhang ‘212 et al. ( US 2023 / 0151212 A1 ; hereafter as “ Zhang ‘212 ”) in view of Yan et al. ( CN 106480735 A ; cited in the IDS mailed on 01/23/2024; English translation incorporated herein; hereafter as “Yan” ) , Zhang et al. ( CN 110922536 A ; cited in the IDS mailed on 01/23/2024; English translation incorporated herein; hereafter as “Zhang ‘536” ) and in further view of Kitai et al. ( WO 2014 / 203511 A1 ; English translation incorporated herein; hereafter as “Kitai” ). Zhang ‘212 , Yan , and Zhang ‘536 teach the resin composition, first resin, second resin, divinylbenzene crosslinking agent, halogen-free flame retardant, spherical silica and siloxane coupling agent of Claim 1 as set forth above and incorporated herein by reference. Zhang ‘212 further teaches said spherical silica has a maximum particle size of less than or equal to 15 μm [Claim 3], which overlaps with wherein the spherical silica average particle size of 2.0 microns to 3.0 microns . However, Zhang ‘212 does not explicitly disclose an average particle size of 2.0 microns to 3.0 microns , and wherein the spherical silica has an acrylic or vinyl surface modification. Nevertheless , one of ordinary skill in the art at the time the invention was made would have considered the invention to have been obvious because the range taught by Zhang ‘212 for the spherical silica diameter ( ≤ 15 μm ) overlaps the instantly claimed range ( 2-3 μm ) and is therefore considered to establish a prima facie case of obviousness. It would have been obvious to one of ordinary skill in the art to select any portion of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in the prior art reference, MPEP 2144.05. Furthermore , Kitai teaches a polyphenylene ether resin comprising silica filler that has been surface-treated with a vinyl silane coupling agent [Page 23, ¶ 1], thereby reading on spherical silica that has a vinyl surface modification. Kitai offers the motivation that resin compositions containing inorganic fillers that have been surface-treated with said silane coupling agents tend to have high heat resistance when absorbing moisture [Page 23, ¶ 1]. Zhang ‘212 , Yan, Zhang ‘536, and Kitai are considered to be analogous art as the claimed invention, as all are in the same field of resin compositions comprising polyethylene ether resin, filler, and flame retardant . Therefore, it would be obvious to one of ordinary skill in the art that is motivated to improve heat resistance to use the surface modification of Kitai with the resin composition of Zhang ‘212 , Yan , and Zhang ‘536 thereby arriving at the claimed invention. Conclusion Any inquiry concerning this communication or earlier communications from the examiner should be directed to FILLIN "Examiner name" \* MERGEFORMAT DORIS LING whose telephone number is FILLIN "Phone number" \* MERGEFORMAT (571)270-3961 . The examiner can normally be reached FILLIN "Work Schedule?" \* MERGEFORMAT Monday-Friday, 8:30am-5:00pm . 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. /DORIS LING/ Examiner, Art Unit 1764 /ARRIE L REUTHER/ Supervisory Primary Examiner, Art Unit 1764
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Prosecution Timeline

Jul 24, 2023
Application Filed
Mar 10, 2026
Non-Final Rejection — §103, §112 (current)

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Prosecution Projections

1-2
Expected OA Rounds
33%
Grant Probability
99%
With Interview (+71.4%)
3y 2m
Median Time to Grant
Low
PTA Risk
Based on 15 resolved cases by this examiner. Grant probability derived from career allow rate.

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