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 .
DETAILED ACTION
Continued Examination
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 10/01/2025 has been entered. Claims 1-12, 14-20 and 28 are currently under examination on the merits.
Any rejections and/or objections made in the previous office action and not repeated below are hereby withdrawn.
Claim objection
Claims 2, 7-8, 11-12, 14, 17are objected to because of the following informalities: “the urethane (meth)acrylate polymer” should read “the urethane di(meth)acrylate polymer”. Appropriate correction is required.
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.
Claims 1-12, 14-20 and 28 are rejected 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 is rejected as being vague and indefinite when it recites "30-70 parts by weight of one or more monofunctional (meth)acrylate monomer comprising a cyclic moiety, based on the total weight of organic components of the polymerizable composition”, because the recitation does not set forth what is the total weight of organic components as the base for 30-70 parts of monofunctional (meth)acrylate monomer, which fail to clear define the content range of the monomer in the composition. In this office action, it is taken that the 30 -70 parts by weight of the monomer is based on 100 parts by weight of total weight of the organic components. Claims 2-12, 14-20 and 28 are also rejected for depending from claim 1, thus inclusion of its indefinite features.
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.
Claim 4 is 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 4 requires the monofunctional (meth)acrylate monomers being in an amount of at least 15 wt% based on the total weight of organic components has broader range than the amount of 30 to 70 parts by weight based on 100 parts of total organic components as required by its based claim 1. 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.
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
Claims 1-12, 14-20 and 28 are rejected under 35 U.S.C. 103 as being unpatentable over Waller (WO96/15179, of record, ‘179 hereafter) in view of Kim et al (US 2012/0270038, ‘038 hereafter).
Regarding claims 1-12, 14-20 and 28, ‘179 discloses an orthodontic article (Pages 1-2) being formed from a polymerizable urethane-based acrylate composition comprising a monofunctional diluent monomer (Tables 3 and 4, Examples 3-5, Pages 5-6); a urethane di(meth)acrylate polymer comprising polymerized units of an aliphatic polyester diol (Tables 3-4, page 5-6, Resin D, Examples 3-5, Resin D is Caschem 52223. Pages 10-13, Resin E, pages 13-15); and the composition may further include a urethane (meth) acrylate polymer lacking of aliphatic polyester moieties satisfying present claims 15-17 (Resin E as in Tables 3 and 4, Examples 3-5, Resin C is a polyether-based urethane acrylate as evidenced by US patent 4,554,336, its content in the composition may be 18.00 wt% or 0 wt% as in Examples 3-5 satisfying present claim 17); wherein the aliphatic polyester urethane di(meth)acrylate satisfying all the limitations as recited in the present claims 7-12 and 14 (pages 5-6, Resin D, Caschem 52223 in the Examples 3-5 is a high molecular weight aliphatic polyester urethane polymer also satisfying present claim 14). The composition does not contain ethylenically unsaturated components with acid functionality satisfying present claim 28. ‘179 does not disclose that the monofunctional diluent monomer comprising a cyclic moiety being cycloaliphatic group and having a Log P value, Tg. and in a content range as presently claimed. However, in the same field of endeavor of polymerizable urethane-based acrylate composition, ‘038 discloses a urethane-based acrylate composition comprising a urethane (meth)acrylate polymer having polymerized units of an aliphatic polyester diol ([0010]-[0011], [0021]-[0026], Example 6, A-2, molecular weight being 22,000); and a monofunctional diluent monomer ([0010]); wherein the monofunctional diluent monomer is an Isobornyl (meth)acrylate in a content range of 5 to 55 wt% ([0010], [0029], 33 wt% in Example 3, the ratio of urethane polymer to diluent monomer is 60/33=2:1.1, satisfying present claim 2, the composition includes other monofunctional monomers and the total amount of monofunctional monomers is not greater than 70 wt%, see Examples), which can be used to adjust stiffness and Tg of the cured composition and increases curing rate of the composition ([0029], isobornyl moiety is a bulky group which is capable of increasing stiffness and Tg of the cured composition). The Isobornyl (meth)acrylate has a Tg, P value and cycloaliphatic group satisfying all the limitations as recited in the present claims 2-6. In light of these teachings, one of ordinary skill in the art would have been motivated to use Isobornyl (meth)acrylate as taught by ‘038, to modify the urethane-based acrylate composition of ‘179, in order to render the composition having desired stiffness, Tg and curing speed. Modified ‘179 does not expressly set forth that the reaction product of the composition shows the peak tan delta, peak loss modulus and other physical properties as recited in the present claims 1 and 18-20, however, since modified ‘179 fairly suggest a composition being substantially identical to the composition as presently claimed, it is reasonable to expect that the product of the composition of modified ‘179 would have possessed the same properties as that of the presently claimed reaction product, including the peak tan delta, peak loss modulus and other physical properties as presently claimed, in absence of an objective showing to the contrary (See PMEP 2112). ‘179 does not specifically name the orthodontic article being an orthodontic alignment tray, however, since ‘179 expressly discloses that the composition can be used to form a flexible or rigid article with orthodontic application (see pages 1-2), one of ordinary skill in the art would have been motivated to use this composition to make an orthodontic article including an orthodontic alignment tray, because this composition would predictably resulted in an orthodontic alignment tray having desired mechanic properties.
Response to Arguments
Applicant's arguments filed on 10/01/2025 have been fully considered but they are not persuasive.
Applicant argues that the secondary reference Kim’038 would not render the present claims obvious because ‘038 is directed to an adhesive composition instead of a pourable molding of Wller’179, wherein a monofunctional (meth)acrylate monomer is used in the composition of ‘038 and nothing in the ‘038 suggests adhesive constructions prepared from difunctional urethane. It is examiner’s position that both composition of ‘179 and ‘038 are directed to curable compositions containing urethane-based (meth)acrylate oligomer and a low molecular weight (meth)acrylate monomer as a diluent, which are in the same field of endeavor, and the rejection as drafted does not require the teaching of using a difunctional urethane in the adhesive of ‘038 to render presently claimed invention. ‘038 teaches that the diluent Isobornyl (meth)acrylate can be used to adjust stiffness and Tg of the cured composition and increases curing rate of the composition ([0029], isobornyl moiety is a bulky group which is capable of increasing stiffness and Tg of the cured composition), thus one of ordinary skill in the art would have been motivated to use Isobornyl (meth)acrylate as taught by ‘038, to modify the urethane-based acrylate composition of ‘179, in order to render the composition having desired stiffness, Tg and curing speed.
For the reasons et forth above and of record, the claims stand proper rejected.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RUIYUN ZHANG whose telephone number is (571)270-7934. The examiner can normally be reached on 8:00-5:00 PM.
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/RUIYUN ZHANG/Primary Examiner, Art Unit 1782