Prosecution Insights
Last updated: May 29, 2026
Application No. 18/452,572

MODIFIED NAPHTHOL RESIN AND PREPARATION METHOD THEREOF AND RESIN COMPOSITION INCLUDING THE SAME

Non-Final OA §102§103
Filed
Aug 21, 2023
Priority
Jun 29, 2023 — TW 112124188
Examiner
HESTER, HOLLEY GRACE
Art Unit
1766
Tech Center
1700 — Chemical & Materials Engineering
Assignee
Nan Ya Plastics Corporation
OA Round
1 (Non-Final)
67%
Grant Probability
Favorable
1-2
OA Rounds
5m
Est. Remaining
99%
With Interview

Examiner Intelligence

Grants 67% — above average
67%
Career Allowance Rate
36 granted / 54 resolved
+1.7% vs TC avg
Strong +45% interview lift
Without
With
+45.0%
Interview Lift
resolved cases with interview
Typical timeline
3y 2m
Avg Prosecution
24 currently pending
Career history
87
Total Applications
across all art units

Statute-Specific Performance

§103
90.4%
+50.4% vs TC avg
§102
4.4%
-35.6% vs TC avg
§112
4.4%
-35.6% vs TC avg
Black line = Tech Center average estimate • Based on career data from 54 resolved cases

Office Action

§102 §103
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 Status Claims 1-10 are pending. Claim Rejections - 35 USC § 102 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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action: A person shall be entitled to a patent unless – (a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention. Claim(s) 1-3 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Huang (CN 111393594 A; all citations are directed toward the English machine translation). Huang et al discloses an active ester resin of Structural Formula (2), prepared from allylation of phenolic resins using sodium hydroxide and allyl chloride (salification and grafting) [p. 0072; synthesis examples], and that a prepreg or an insulating film is prepared using the active ester resin that may be used for a printed wiring board [p. 0063-0067]. PNG media_image1.png 386 960 media_image1.png Greyscale Huang teaches Y1 is represented by -CH2-CH=CH2 or –(C=O)-R3, wherein R3 is aryl or substituted aryl, and X may be the following [p. 0013]: PNG media_image2.png 76 248 media_image2.png Greyscale Huang discloses that structural formula 2 has n=1-10 [p. 0012]. Note that n=1 in structural formula (2) of Huang corresponds to n=2 in [formula 1] of applicants]. The method of Huang et al would result in terminal alkenyl groups when Y1= CH2-CH=CH2. Claim(s) 1-5, and 7-10 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Masanao (JP 6216179 B2; all citations are directed toward the English machine translation). Masanao discloses a curable resin composition and prepreg used to prepare electronic materials such as printed circuit boards [p. 0001-0002]. PNG media_image3.png 92 446 media_image3.png Greyscale PNG media_image4.png 104 450 media_image4.png Greyscale Masanao exemplifies the preparation of a curable resin by reacting a naphthol aralkyl resin (represented by formula 2) with chloromethylstyrene [synthesis examples 1 and 2; p. 0099, 0102]. In formula 2, R1 is hydrogen, Ar is -Ph-, and n is a number from 2 to 20 [p. 0023-0025, 0029, 0035-0036]. The curable resin prepared by Masanao is represented by formula 1, which corresponds to applicants [formula 3] wherein L is a methylbenzyl group and V is a vinyl group. Masanao discloses the reaction between the naphthol aralkyl resin represented by the above formula (2) and the vinyl aromatic halomethyl compound may be carried out by reacting them in a liquid phase using an alkali metal hydroxide as a dehydrohalogenating agent [p. 0030]. 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. The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows: 1. Determining the scope and contents of the prior art. 2. Ascertaining the differences between the prior art and the claims at issue. 3. Resolving the level of ordinary skill in the pertinent art. 4. Considering objective evidence present in the application indicating obviousness or nonobviousness. This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention. Claim(s) 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Masanao (JP 6216179 B2; all citations are directed toward the English machine translation) in further view of Yang (WO 2021/246182; all references drawn to US 2023/0242691 A1). The disclosure of Masanao is above and is applied here as such. Masanao discloses a curable resin composition and prepreg used to prepare electronic materials such as printed circuit boards, wherein the curable resin is prepared from the reaction between a naphthol aralkyl resin represented by the above formula (2) and a vinyl aromatic halomethyl compound. Masanao is silent with respect to functionalization with non-aromatic halogenated moieties. Yang is directed toward a curable resin composition and prepreg for printed circuit boards [p. 0001]. Yang teaches a generic curable resin (A) that has multiple crosslinking groups (X) [p. 0046-0048, 0053]. Yang teaches (A) is prepared from an intermediate phenolic resin, such as a naphthol and phenol resins [p. 0046-0048, 0053]. Yang teaches (A) ingredient can be obtained by reacting the intermediate resin, in the presence of a basic catalyst, with (meth)acrylic anhydride, (meth)acrylic acid chloride, chloromethylstyrene, chlorostyrene, allyl chloride, or allyl bromide [p. 0081, 0083-0084]. Yang teaches basic catalysts include alkali metal hydroxides [p. 0081, 0083-0084]. By allowing the two compounds to react, crosslinking groups (X) can be introduced into the intermediate phenolic compound [p. 0081]. Similar to Masanao, Yang teaches the use of chloromethylstyrene to introduce (X), however, Yang teaches the methacryloyloxy group is the preferred (X) because it contains methyl groups in its structure compared, unlike other crosslinking groups (e.g., the vinylbenzyl, allyl ether, and other polar ether groups). Yang further teaches resins (A) with methacryloyloxy group (X) have lower molecular mobility because of greater steric hindrance, and the resulting cured product has a lower dielectric loss tangent, which improves electrical properties [p. 0002, p. 0063]. In light of this, it would have been obvious to one having ordinary skill in the art at the time the invention was filed to prepare a curable resin using the naphthol aralkyl resin of Masanao by grafting (meth)acrylic anhydride or (meth)acrylic acid chloride as Yang teaches resins with methacryloyloxy crosslinking groups have improved electrical properties. Conclusion The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: Kawashita (WO 2021/125121 A1). Any inquiry concerning this communication or earlier communications from the examiner should be directed to HOLLEY GRACE HESTER whose telephone number is (703)756-5435. The examiner can normally be reached Monday - Friday 9:00AM -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, Randy Gulakowski can be reached at (571) 272-1302. 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. /HOLLEY GRACE HESTER/Examiner, Art Unit 1766 /MICHAEL J FEELY/Primary Examiner, Art Unit 1766
Read full office action

Prosecution Timeline

Aug 21, 2023
Application Filed
Mar 09, 2026
Non-Final Rejection mailed — §102, §103 (current)

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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
67%
Grant Probability
99%
With Interview (+45.0%)
3y 2m (~5m remaining)
Median Time to Grant
Low
PTA Risk
Based on 54 resolved cases by this examiner. Grant probability derived from career allowance rate.

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