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) 55, 57-62, and 74-80 is/are rejected under 35 U.S.C. 103 as being unpatentable over Fong et al. (US Serial No. 2017/0291357), as cited on the IDS, in view of Boogaerts et al. (US Serial No. 2017/0022417) and Grieber et al. (WO 2020/016343), and as evidenced by Feichtenschlager et al. (US Serial No. 2017/0306118).
Regarding claims 55, 57, and 74-77; Fong et al. teaches thiol-ene inks for 3D printing [0013], comprising a multifunctional thiol compound, such as polypropylene glycol 3-mercaptopropionate (PPGMP 2200, having a MW of about 2200; bioabsorbable; tetrafunctional) [0030], a multifunctional ene oligomeric compound (reads on “polymeric” based on MW), such as propoxylated glycerol tri(meth)acrylate (water soluble and bioabsorbable) [0038], and a photoinitiator [0056, 0102]. Fong et al. teaches the weight average molecular weight of an “oligomeric” monomer can generally be in the range of from 500 to 7,000 g/mol [0035]; thus overlaps the required molecular weight of greater than 1000 g/mol. 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 an ene oligomeric compound having a molecular weight of, for example, between 1,000 and 7,000 g/mol, and would have been motivated to do so since Fong et al. teaches “oligomeric” compounds having a molecular weight of up to 7,000 g/mol are suitable for achieving the particulars of the present invention.
Fong et al. teaches the photoinitiator is present in an amount ranging from about 0.1 wt.% to about 5 wt. % [0060]. 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 photoinitiator in an amount of 0.5 wt% (less than 1 wt.%), and would have been motivated to do so because Fong et al. teaches the amount of photoinitiator suitable for use in the present invention is from about 0.1 wt% to about 5 wt%, thus anything amount in between is rendered obvious.
Fong et al. teaches, in some embodiments, an ink comprises a thiol monomer and an ene monomer, and the ene monomer is present in a stoichiometric excess compared to the thiol monomer [0009], however fails to explicitly teaches wherein the composition has an SH (thiol) to EH (ethylenic unsaturation) equivalents ratio of X:Y, where X ranges from 25-75 and Y ranges from 75-25. Boogaerts et al. teaches a thiol-ene ink composition, suitable for making 3D objects, the composition comprises at least one thiol compound and at least one (meth)acrylated compound [0066], wherein the ratio of (meth)acrylated compounds (vi) over thiol compounds (v) most typically this ratio is from 80:20 to 60:40 [0090]. Fong et al. and Boogaerts et al. are analogous art because they are both concerned with the same field of endeavor, namely thiol-ene compositions suitable for making 3D objects. At the time of filing, a person of ordinary skill in the art would have found it obvious to employ the SH to EH ratio of, for example 30:70, and would have been motivated to do so because Fong et al. teaches the ene monomer is present in a stoichiometric excess compared to the thiol monomer [0009], and Boogaerts et al. suggests that most typically the ratio of (meth)acrylated compounds:thiol compounds is from 80:20 to 60:40 [0090].
Fong et al. teaches in some cases, the ene monomer of an ink described herein comprises a plurality of differing ethylenically unsaturated species, such as one or more differing monomeric (meth)acrylates and/or one or more differing oligomeric (meth)acrylates [0041]. That is, Fong et al. teaches it suitable to employ one or more differing oligomeric (meth)acrylates, and does not explicitly require employing monomeric (meth)acrylates. 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. Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.); See MPEP §2123.
Fong et al. fails to teach wherein the composition is substantially free of monomers. Grieber et al. teaches a resin composition ink (thio-ene [p3, line1-15]), for use in stereolithography (i.e. 3D printing), wherein residual monomers are completely removed from said ink [p2, line25-28]. Fong et al. and Grieber et al. are analogous art because they are both concerned with the same field of endeavor, namely thiol-ene ink compositions, suitable for use in 3D printing. At the time of filing, a person of ordinary skill in the art would have found it obvious to remove residual/unreacted monomers, as taught by Grieber et al., from the composition of Fong et al., and would have been motivated to do so in order to reduce toxicity, as is commonly associated with reactive monomers.
Feichtenschlager et al. provides evidence that PPGMP 2200 has a molecular weight of about 2200 [0175].
Regarding claim 58; Fong et al. an ene monomer comprises a substituted or unsubstituted norbornene [0043].
Regarding claim 59; Fong et al. teaches suitable thiol compounds include pentaerythritol tetra(3-mercaptopropionate) and polycaprolactone tetra 3-mercaptopropionate [0030].
Regarding claim 60; Fong et al. teaches the ene component may be oligomeric, for example a urethane (meth)acrylate oligomer [0038].
Regarding claim 61; Fong et al. fails to explicitly teach wherein the composition is free of volatile materials having a boiling point of less than 110°C. 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. According to the original specification, a composition comprising a first organic compound (polySH) having multiple thiol groups (SH), a second organic compound (polyEU) having multiple ethylenically unsaturated groups (EU), and a photoinitiator, is free of volatile materials having a boiling point of less than 110C [00126]. Therefore, the claimed effects and physical properties, i.e. amount of volatile compounds 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. See In re Spada, MPEP §2112.01, I and II.
Regarding claim 62; Fong et al. teaches a photocured reaction product [0076, 0085-0087].
Regarding claim 78; Fong et al. does not teach the addition of water or that water is present in the composition, thus considered anhydrous.
Regarding claims 79-80; Fong et al. fails to explicitly teach the composition is fluid at a temperature of from 18°C to 22°C and solid at 50°C. 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. According to the original specification, a composition comprising a first organic compound (polySH) having multiple thiol groups (SH), a second organic compound (polyEU) having multiple ethylenically unsaturated groups (EU), and a photoinitiator, is fluid at a temperature of from 18°C to 22°C and solid at 50°C . Therefore, the claimed effects and physical properties, i.e. fluidity and/or solidity 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. See In re Spada, MPEP §2112.01, I & II.
Response to Arguments
Applicant's arguments filed 02 January 2026 have been fully considered but they are not persuasive.
It is noted that the rejection under 112(b) has been withdrawn and the term “substantially” is not unclear, just broad as there is no indication nor definition in the specification noting the degree to which the word substantially entails.
Applicants argue that Fong taken as a whole teaches a clear preference for selecting compositions that are significantly different than the claimed compositions; Fong describes inks comprise thiol monomer component and an ene monomer component and fails to teach a composition comprising macromers, much less one that is substantially free of monomers.
The Examiner respectfully disagrees. While Fong uses the term “monomer,” the term “monomer” in Fong also corresponds to oligomeric compounds, as set forth in [0030] and [0035]. Fong explicitly states that a monomer can comprise or be either a “monomeric” or molecular species or an “oligomeric” species (having a MW of 400-10,000) [0035]. As such, it is well within the purview of one of ordinary skill in the art that when looking at the teachings of Fong, suitable thiol “monomers” to be employed include polypropylene glycol 3-mercaptopropionate (PP GMP 2200, having a MW of about 2200; bioabsorbable; tetrafunctional) [0030] and a multifunctional ene oligomeric compound, such as propoxylated glycerol tri(meth)acrylate (water soluble and bioabsorbable) [0038], thus the composition being “substantially” free of monomers as required by the instant claim language.
Applicants argue that Fong describes urethane (meth)acrylate oligomers having a viscosity ranging from 10,000 cP to about 300,000 cP [0040] and Fong further describes that the inks exhibit a non-cured dynamic viscosity of 20-2000 cP at 30°C [0071]. Applicants argue that one of ordinary skill in the art would not modify Fong to prepare a composition comprising macromers because doing so would result in a composition with a viscosity that is too high for the intended purpose.
The Examiner finds this argument unpersuasive. Applicants point to viscosities of urethane (meth)acrylates having high viscosities, however the rejection of record makes not mention of employing urethane (meth)acrylate oligomers. Furthermore, the non-cured dynamic viscosity of the composition is a measure of viscosity of the entire composition, comprising other components and is not reliant on just the oligomeric compound. Fong teaches suitable compounds to be used in the present invention include oligomeric thiol compounds (polypropylene glycol 3-mercaptopropionate (PPGMP 2200, having a MW of about 2200; bioabsorbable; tetrafunctional [0030]) and a multifunctional ene oligomeric compounds (propoxylated glycerol tri(meth)acrylate, water soluble and bioabsorbable [0038]), thus said oligomeric compounds are suitable for achieving the particulars of the present invention according to Fong. Applicants are reminded that 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. Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.); See MPEP §2123.
As such, Fong et al., in view of Boogaerts et al. and Grieber et al., as evidenced by Feichtenschlager et al. is still relied upon for rendering obvious the basic claimed composition, as required by the instant claim language.
Conclusion
THIS ACTION IS MADE FINAL. 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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