DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Status of the Claims
2. Claims 23-29 are currently pending. Claim 29 has been withdrawn as being drawn to a non elected invention. Claims 23-28 This office action is in response to the amendment filed on 10/22/2025.
Claim Interpretation
3. Claim 23 “that the photo curable resin is capable of being 3D printed to form an object comprising a polyurethane acrylate polymer”. This limitation is given its broadest reasonable interpretation that the resin must be capable of being 3D printed to form an object comprising a polyurethane acrylate polymer, not that the resin comprise a polyurethane acrylate polymer, as a 3D printing technique is capable of using multiple different resins and materials and the polyurethane acrylate polymer is .
Claim 23 further recites “wherein the photocurable resin when 3-D printed to form the object, the object has“ at least one of 6 properties “wherein the object comprises an orthodontic appliance” and the object is indicated to comprise a polyurethane acrylate polymer. These limitations are given the broadest reasonable interpretation that the photocurable resin must be capable of being used in a process that can result in one of the indicated properties not that the photocurable resin by itself must provide the indicated properties.
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.
4. Claims 23-28 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.
Concerning claim 23 the claim recites “a storage modulus greater than or equal to 200 MPa” which renders the claim indefinite as it is not clear if this refers to a tensile storage modulus or a shear storage modulus.
Claim 23 further states “a plurality of polymeric phases, wherein at least one polymeric phase of the one or more polymeric phases has a Tg of at least 60 °C” which renders the claim indefinite as there is not enough antecedent basis for “the one or more polymeric phases” and this phrase creates confusion as there is indicated to be a plurality of polymeric phases.
Claim 23 further teaches “transmission of at least 30% of visible light through the polymeric material” which renders the claim indefinite as there is not enough antecedent basis for the polymeric material and it is not clear if this transmission is measured with a material sample or with the entire object indicated in the claim.
Claim 23 recites “a flexural stress and or flexural modulus of greater than or equal to 1.5 MPa” which renders the claim indefinite as it is not clear what is meant by flexural stress as this is not a material property but an indication of force placed on the object. Flexural strength is a material property but stress is not.
Claims 24-28 are rejected as being dependent from a rejected base claim.
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.
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.
5. Claim(s) 23-28 is/are rejected under 35 U.S.C. 103 as being unpatentable over Liska (US 2019/0345276 A1).
Concerning claim 23-26 Liska teaches polymerizable monomers that are used as reactive diluents in photopolymerization processes that allow for good processibility in additive manufacturing techniques and yield cured products having thermomechanical properties that are desirable for the formation of intra oral devices such as aligners expanders and spacers (paragraph 0008)which are examples of orthodontic appliances and that these compositions can be used in 3D printing (paragraph 0013). This indicates that the curable composition of the photopolymerization process is capable of being 3D printed to form an object which is an orthodontic appliance.
The polymerizable monomers which can be used a reactive diluents have a structure of (paragraph 009)
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where R1 represents a C5-C20 cycloaliphatic hydrocarbyl radical selected from the group consisting of optionally substituted C5-C7 cycloalkyl radicals, R2 represents H or CH3 (paragraph 0010) and teach R3 independently represents S1-C3 alkyl or C1-C3 alkoxy and n is an integer from 0 to 4 (paragraph 0011-0012). A particular example of this broad structure is indicated to include (paragraph 0203)
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.
It should be noted that the ester group which includes R1 can be considered to be a substituted C1 carbonyl which is substituted with an alkoxy, or can be a substituted heteroalkyl. As such this ester group would correspond to the claimed group of R5.
This compound differs from the claimed polymerizable monomer as there is not explicitly an alkoxy group in the position next to the (meth)acrylate group. However as is stated above R3 can be an alkoxy group which when present would correspond to the claimed X-R2 group where X is O and R2 is an unsubstituted alkyl, and is indicated to be able to be in a position on the aromatic ring which would result in the claimed structure.
Liska does not specifically teach the claimed compound or the particular viscosity of the photocurable resin.
However Liska teaches that the main reason for addition a reactive diluent to a resin formulation is to lower its viscosity thus improving the processability of the resin (paragraph 0422), and gives examples of photocurable resins which includes an exemplary commercially available resin which is a difunctional aliphatic polyester urethane methacrylate with 30 wt% of the polymerizable compound which is a reactive diluent (paragraph 0439). Since this resin is difunctional it would include multiple urethane groups and so would be considered to be a polyurethane acrylate polymer. The combination of the reactive diluent and the reactive diluent is indicated to have values of 1.6 and 0.6 Pa*s at 70°C comparted to the value of the resin without reactive diluent of 12.2 Pa*s (paragraph 0440) which are indicated to be excellent values of viscosity (paragraph 00441). It should be noted that 1 Pa*s is equivalent to approximately 1000 CP and so these values of the exemplary photoresin viscosities at 70°C are 1600 Cp and 600 CP which are within the claimed range. This indication that these viscosities are excellent would indicate that the exemplary photocurable resins have at very least an overlapping range with the claimed range of the viscosity at the claimed printing temperature.
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. 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.I.
Moreover the cured photopolymers of the compositions of the reactant diluent containing photoresin are indicated to have as storage modulus at 20°C of 2340 and 3424 MPa (paragraph 0444 and Table 10). Which would indicate that he claimed storage modulus indicated by claimed condition A would be present.
It would have been obvious to one of ordinary skill in the art at the time of filling to alter the polymerizable compound of Liska to include an alkoxy group next to the (meth)Acrylate group on the phenyl ring to give the claimed compound because Liska teaches that compound structures can be
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Where R3 can be an alkoxy group in any position on the phenyl ring and so it would be obvious to place in the claimed position and to use the compound in a reactive diluent for a polyurethane acrylate resin to give the claimed viscosity and which has the claimed storage modulus because Liska teaches examples of the reactive diluent polymerizable compounds mixed with a polyurethane acrylate resin give a photocurable resin compositions that have the claimed viscosity at the claimed printing temperature and which have the claimed storage modulus and so it would be obvious to use the claimed compound to provide a similar composition having the polyurethane acrylate resin and having similar viscosity and storage modulus.
Concerning claim 27 Liska further teaches that the curable composition comprise at least one photopolymerization initiator (paragraph 0028-0030).
It would have been obvious to one of ordinary skill in the art at the time of filling to alter the composition of Liska to include a photo initiator because Liska teaches that the composition can include a photo initiator.
Concerning claim 28 Liska does not explicitly state that the polymeriable monomer reduces the viscosity of the photocurable rein by at least 5 %.
However Liska does teach that the amount of the polymerizable monomer in the photo curable resin can range from 10 to 80 wt% (paragraph 0031). LIska further teaches that the main reason for adding a reactive diluent to a resin formulation is to lower its viscosity (paragraph 0422) and teaches examples which include 30 wt% of different reactive diluents have their viscosity at 25 °C changed from 29070 Pa*s to 1250 and 124.6 Pa*s which indicates an amount of reduction of viscosity of approximately 96% and 99.6%.
It would have been obvious to one of ordinary skill in the art at the time of filling to make sure that the resin composition include enough of the reactive diluent component to reduce the viscosity of the photocurable resin composition by at least 5% because Liska teaches that the main reason to use a reactive diluent is to reduce the viscosity of the resin and teaches examples where the resin is reduced in viscosity by over 95 % and so it would be obvious to reduce viscosity by similar amounts to give the claimed resin as this is the intended purpose of the reactive dilutant compound of Liska.
Double Patenting
7. Claim 23-27 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-3, 13, 19, of copending Application No. 18/494,569 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because Concerning claim 23-27the reference application teaches a curable composition comprising a polymerizable monomer where the composition has a viscosity from 30 cP to 50,000 cp at a printing temperature (claim 1) and as such would be capable of being 3d printed to form an orthodontic applicance, where the polymerizable monomer has the structure of formula (I) where R2 is can be an unsubstituted aryl and R5 can be C1-C6 alkoxy in addition to the claimed groups(claim 2 and 13). R3 and R4 are indicated to be one of slightly broader groups than that claimed and provide an overlapping range with the claimed range of substituents (claims 8 and 11). The reference application further indicates that the initiator can be a photo initiator (claim 19) indicating that the composition can be a photo curable composition. The reference application further teaches that t the polymeric material formed from the curable composition can be formed in to an orthodontic appliance (claim 56).
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. 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.I.
The refence application does not specifically indicate that the photocurable resin is formed in to a orthodontic appliance with an polyurethane acrylate and which has one of the claimed properties. However the claim as is currently drafted does not require that the polyurethane acrylate is present or that the resin has specific properties, only that the curable resin be capable of being formed into an orthodontic appliance that comprises the polyurethane acrylate and that this hypothetical appliance have the claimed property. As such since the photocurable resin of the reference application teaches the claimed components of the composition and an overlapping range of the viscosity then this composition would be capable of being 3D printed into the claimed appliance and so meets this limitations.
It would have been obvious to one of ordinary skill in the art at the time of filling to use the claimed photocurable composition that comprises a photo initiator and includes the claimed compound and has the claimed viscosity because the reference application teaches that the composition can include a photo initiator and teaches that the polymerizable compound can have the same substituents as claimed in the same positions and teaches an overlapping range with the claimed range of the viscosity.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
8. Applicant’s arguments with respect to claim(s) 23-28 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
It should be noted that with regard to the double patenting rejection applicant argued that is should be withdrawn as there are no remaining rejections. This is not found to be persuasive as there is a new rejection presented in this office action and so there is a rejection of record and so the double patenting can not be withdrawn.
Conclusion
9. Claims 23-28 are rejected. No claims are currently allowable.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVID L MILLER whose telephone number is (571)270-1297. The examiner can normally be reached M-F 9:30-6:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joseph Del Sole can be reached at 571-272-1130. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DAVID L MILLER/Examiner, Art Unit 1763
/JOSEPH S DEL SOLE/Supervisory Patent Examiner, Art Unit 1763