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.
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) 1-4, 6-14, 15-18, 20, and 21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Rolland et al. (US Serial No. 2016/0137839).
Regarding claim 1; Rolland et al. teaches, in an example embodiment, a method of forming a three-dimensional object [0317; 0323], via digital light processor [0122], from a polymerizable liquid comprising: 5 to 90 wt% of a blocked or reactive blocked prepolymer (multifunctional (meth)acrylate oligomer, difunctional UV-curable (meth)acrylate blocked polyurethane (ABPU); oligomer bearing (meth)acrylate functional groups) [0246], wherein the MW of the polyol used to make the prepolymer is from 500-6000 Da [0249]), 10-50 wt% of a reactive diluent (monofunctional monomer, such as vinylamide or vinyl ether [0233]); 5 to 30 wt% of a chain extender; and 0.1 to 4 wt% of a photoinitiator [0235-0239, 0246], which is cured via ultraviolet lamp [0322] to a flexible 3D object [0322]. In the instance 50 wt% of methyl acrylate and 50 wt% of ABPU oligomer (MW about 6000) is employed, the molar bond ratio would be:
Methyl acrylate: 50 / 86.09 (MW) = 0.580 (molar ratio) * 1 = 0.580
ABPU: 50 / 6000 (MW) = (molar ratio) *2 = 0.016
Monofunctional: 0.580; Multifunctional: 0.016
Molar bond ratio: about 36:1.
Roland et al. teaches all of the above required components, however fails to explicitly disclose each in a preferred embodiment. A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art, including the non-preferred embodiments. See Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.); MPEP §2123. Rolland et al. does not specifically disclose an embodiment containing 50 wt% of difunctional UV-curable (meth)acrylate blocked polyurethane (ABPU) and 50 wt% of methyl acrylate. However, at the time of invention a person of ordinary skill in the art would have found it obvious to prepare a composition containing 50 wt% of difunctional UV-curable (meth)acrylate blocked polyurethane (ABPU) and 50 wt% of methyl acrylate, based on the invention of Rolland et al., and would have been motivated to do so since Rolland et al. suggests that the composition can contain 5 to 90 wt% of a blocked or reactive blocked prepolymer (multifunctional oligomer, difunctional UV-curable (meth)acrylate blocked polyurethane (ABPU)) [0246] and 10-50 wt% of a reactive diluent (monofunctional monomer, such as methyl acrylate [0233]). Additionally, “It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art.” In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) (citations omitted) [see MPEP 2144.06].
Regarding claim 2; Rolland et al. further teaches that the three-dimensional object is a medical devices and implantable medical devices [0361].
Regarding claim 3; Rolland et al. teaches the process can produce a products with a variety of properties such as hydrogel [0299].
Regarding claim 4; Rolland et al. further teaches polymerizing by pixel polymerization and altering the irradiating step to allow for changes in shape [0176].
Regarding claim 6; Rolland et al. further teaches irradiating the polymerizable liquid with patterned irradiation [0176].
Regarding claim 9; Rolland et al. teaches that the formation of a three- dimensional object from an energy polymerizable liquid occurs with supplied heat [0020, 0145, 0197, 0213].
Regarding claim 10; Rolland et al. teaches that the oligomer and the monomer react by a same polymerization mechanism [0322-0232] and necessarily possess different reaction rates, since they are two different species reacting under the same conditions.
Regarding claim 11; Rolland et al. teaches the solubility of organic liquid resin inks can be dramatically decreased by a number of known parameters including increasing the crosslink density of the window material or increasing the molecular weight of the liquid resin ink [0124] (i.e. during polymerization of the monomer/oligomer mixture, the molecular weight of the liquid resin increases, thus effecting solubility).
Regarding claim 12; Rolland et al. teaches resultant interpenetrating polymer networks (i.e. material with more than one glass transition temperature) [0324, 0326].
Regarding claims 15 and 16; Rolland et al. teaches that the three-dimensional object reaches prescribed mechanical properties without supplied heat (i.e. heat is generated from the irradiation step, thus the Examiner takes the position that heat is not “supplied”) [0020] and with supplied heat [0021, 0360]. The examiner notes that “prescribed mechanical properties” is broad and reads on any type and any amount of a mechanical property.
Regarding claims 17 and 18; Rolland et al. teaches the polymerizable liquid is employed in applications requiring high biocompatibility [0361] (biocompatibility) but does not explicitly teach that they are non-toxic. The Office realizes that all the claimed effects or physical properties are not positively stated by the reference. However, the reference teaches all of the claimed reagents, claimed amounts, and substantially similar processes to the claimed invention. According to the original specification, polymerizable liquids prepared from a reactive oligomer and a reactive monomer (e.g. urethane acrylate and N-vinyl compounds; see Examples) are have low toxicity [0109] or are non-toxic [0009, 0027], Therefore, the claimed effects and physical properties, i.e. toxicity, would necessarily be present in a composition with all the claimed ingredients. If it is the applicants' position that this wouldn’t be the case: (1) evidence would need to be presented to support applicants' position; and (2) it would be the Offices' position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties and effects with only the claimed ingredients, claimed amounts, and substantially similar processes to the claimed invention. See In re Spada, MPEP §2112.01, I and II.
Regarding claims 20-21; Rolland et al. further teaches that the three-dimensional object can be a medical appliance [0295], a dental appliance, such as a mold [0306].
Claim(s) 22-24 is/are rejected under 35 U.S.C. 103 as being unpatentable over Chen et al. (US Serial No. 2017/0007362), as evidenced by Umebayashi (US Serial No. 2017/0252971).
Regarding claims 22-24; Chen et al. teaches a crosslinked polymer formed via stereolithography (three-dimensional printing) [0029], the crosslinked polymer is prepared from mixing 25-50 wt% of a urethane (meth)acrylate [0018], such as CN991 [Table 2] and 50-75 wt% of a vinyl monomer [0019], such as N-vinyl pyrrolidone (NVP) [0022; Table 2]. Chen et al. teaches the method further comprises adding a photoinitiator in an amount of 0.1-3 wt. % [0027]. In the instance CN991 (urethane acrylate) is employed in an amount of 41 wt% and NVP is employed in an amount of 59 wt%, the molar bond ratio of reactive ethylenically unsaturated groups of the NVP to the reactive ethylenically unsaturated groups of the urethane acylate would be 10:1 (as calculated by Examiner).
CN991 (multifunctional): 41 / 1500 (MW) = 0.0273 (molar ratio) * 2 = 0.055
NVP (monofunctional): 59 / 111.14 (MW) = 0.531 (molar ratio) * 1 = 0.531
0.531 (monofunctional) : 0.055 (multifunctional) = 10:1
Chen et al. teaches a single cure mechanism (actinic radiation) [0115], and teaches formation via stereolithography (DLP SLA which would be either bottom up or top down), without the addition of heat [0115].
In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. See In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990), see MPEP §2144.05. At the time of filing, a person of ordinary skill in the art would have found it obvious to employ the urethane acrylate in an amount of 41 wt% and the NVP in an amount of 59 wt% and would have been motivated to do so since Chen et al. teaches amounts suitable to achieve particulars of the present invention include 25-50 wt% of urethane acrylate and 50-75 wt% of a monofunctional monomer [0019].
Umebayashi et al. provides evidence that CN991 has a weight average molecular weight of 1500 [0334].
Response to Arguments
Applicant's arguments filed 11 March 2026, with respect to claims 1-4, 6-12, and 15-18, 20, and 21, have been fully considered but they are not persuasive.
Applicants argue that the rejection cites [0235-0239] of Rolland for its general description of component compositions for such dual hardening polymerizable liquids, and [0246] of Rolland in particular for its description of (meth)acrylate-blocked polyurethane (ABPU) resin, to assert an “instance” of a composition having 50 wt% methyl acrylate monomer and 50 wt% ABPU resin. Applicants argue that the asserted composition excludes two critical components of Rolland- the photoinitiator and the chain extender.
While the rejection did not explicitly set forth the amounts related to the photoinitiator and the chain extender employed in Rolland, the prior art would still render obvious the claimed molar ratio, even with the inclusion of the photoinitiator and the chain extender. Rolland teaches:
5-90 wt% ABPU (MW = 500-600 Da) [0236, 0246]
10-50 wt% monomer (e.g. methyl acrylate) [0237, 0249]
5-30 wt% chain extender [0238]
0.1-4 wt% photoinitiator [0239]
When accounting for, for example, 5 wt% chain extender and 1 wt% photoinitiator; in the instance ABPU is employed in an amount of 50 wt% and the methyl acrylate monomer is employed in an amount of 44 wt%, the molar ratio would be 31.9:1
Methyl acrylate: 44 / 86.09 (MW) = 0.511 (molar ratio) * 1 = 0.511
ABPU: 50 / 6000 (MW) = 0.008 (molar ratio) * 2 = 0.016
Monofunctional: 0.511; Multifunctional: 0.016
Molar bond ratio: about 32:1
Applicants argue Rolland describes the ABPU material as a component in a “dual cure” resin; thermal energy is applied to cleave the blocking groups to enable the spontaneous reaction between the polyurethane/polyurea oligomers and the chain extender; thus the reactive oligomer of Rolland is not at least one of (i) and (ii). The Examiner respectfully disagrees. Rolland teaches a (meth)acrylate functional polyurethane oligomer, thus reads on the required “multi-functional methacrylate oligomer” or “multi-functional acrylate oligomer” as required by the claims, regardless of the reaction mechanism.
Applicants argue Rolland does not teach or suggest that the reactive monofunctional monomer is at least one of (i) a monofunctional N-vinyl monomer, (ii) a monofunctional vinyl ether monomer, (iii) a monofunctional vinyl ester monomer, (iv) a monofunctional vinylamide monomer, (v) a monofunctional vinyl carbonate monomer, and (vi) a monofunctional vinyl carbamate monomer. The Examiner respectfully disagrees. Rolland teaches the reactive diluent may be a vinylamide or a vinyl ether monomer.
Applicant’s argue Chen does not teach or suggest that the reactive monofunctional monomer is at lest one of (i) a monofunctional N-vinyl monomer, (ii) a monofunctional vinyl ether monomer, (iii) a monofunctional vinyl ester monomer, (iv) a monofunctional vinylamide monomer, (v) a monofunctional vinyl carbonate monomer, and (vi) a monofunctional vinyl carbamate monomer. The Examiner respectfully disagrees. Chen teaches N-vinyl pyrrolidone, which reads on the claimed N-vinyl monomer. Umebayashi is only relied upon as an evidentiary reference.
As such, Rolland and Chen are still relied upon for rendering obvious the basic claimed method as required by the instant application.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JESSICA ROSWELL whose telephone number is (571)270-5453. The examiner can normally be reached M-F 8:00 am to 5:00 pm.
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/JESSICA M ROSWELL/ Primary Examiner, Art Unit 1767
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