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 § 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, 9-12, 14-19, and 21 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Miyakawa et al. (WO 2019/021451) [IDS 6/24/22]. Miyakawa et al. (US 11,577,452) as the English language equivalent.
Regarding claims 1, 9-10, 12, and 14: Miyakawa et al. (US ‘452) discloses photocurable compositions for three-dimensional objects [abstract], wherein Comparative Example 1 [Comp. Ex. 1; 17:47-24:35; Table 1, Comp. Ex. 1] contains 98 wt% ADCP (tricyclodecane dimethanol diacrylate [20:59-60; 22:1-10]; Mw = 304; n = 2; Mw/n = 236; polymer Tg = 200 oC {see instant specification pg. 40, ln. 12-14}), 1 wt% TPO (2,4,6-trimetyhlbenzoyl-diphenylphosphine oxide [21:43]), and 1 wt% 3M2BIO (3-methyl-2-buten-1-ol [21:44] {alcohol; solvent}) [Comp. Ex. 1; 17:47-24:35; Table 1, Comp. Ex. 1].
Regarding claim 11: Miyakawa et al. (US ‘452) discloses ABPE4 (ethoxylated (4) bisphenol A diacrylate [20:65-66; 21:30-35]; Mw = 512; n = 2; Mw/n = 256; polymer Tg = 60 oC).
Regarding claim 15-19 and 21: Miyakawa et al. (US ‘452) discloses the plurality of stacked objects having a plurality of cured layers of step D1 are coated with the photocurable composition in step E {corresponding to a kit} and photocured to bond the coating composition to the stacked objects, wherein the photocurable composition used in step D1 is the same type used in step E {i.e. the composition of Comp. Ex. 1; see above}, thereby affording objects having no difference in refractive index and excellent transparency [12:10-32; 15:4-56; 16:44-47; 24:1-11].
The claimed effects and physical properties, i.e. the difference between a transparency ΔLA of a cured product of the energy ray-curable coating material (A) for three-dimensional shaped articles and a transparency ΔLB of a cured product of the energy ray-curable composition (B) for three-dimensional shaping is 20 or less [instant claim 17]; the difference between a tensile elastic modulus of a cured product of the energy ray-curable coating material (A) for three-dimensional shaped articles and a tensile elastic modulus of a cured product of the energy ray-curable composition (B) for three-dimensional shaping is 200 MPa or less [instant claim 18], would inherently be achieved, as “Products of identical chemical composition can not have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) [see MPEP 2112.01].
Claim(s) 22 and 26-27 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Miyakawa et al. (WO 2019/021451) [IDS 6/24/22]. Miyakawa et al. (US 11,577,452) as the English language equivalent.
Regarding claims 22 and 26-27: Miyakawa et al. (US ‘452) discloses photocurable compositions for three-dimensional objects [abstract], wherein Example 1 [Ex. 1; 17:47-24:35; Table 1, Ex. 1] contains 27 wt% ADCP (tricyclodecane dimethanol diacrylate [20:59-60; 22:1-10]; Mw = 304; n = 2; Mw/n = 236; polymer Tg = 200 oC {see instant specification pg. 20, ln. 12-14}), 71 wt% IBXA (isobornyl acrylate [19:66]), 1 wt% TPO (2,4,6-trimetyhlbenzoyl-diphenylphosphine oxide [21:43]), and 1 wt% 3M2BIO (3-methyl-2-buten-1-ol [21:44] {alcohol; solvent}) [Ex. 1; 17:47-24:35; Table 1, Ex. 1].
Miyakawa et al. (US ‘452) discloses the plurality of stacked objects having a plurality of cured layers of step D1 are coated with the photocurable composition in step E {corresponding to a kit} and photocured to bond the coating composition to the stacked objects, wherein the photocurable composition used in step D1 is the same type used in step E {i.e. the composition of Ex. 1; see above}, thereby affording objects having no difference in refractive index and excellent transparency [12:10-32; 15:4-56; 16:44-47; 24:1-11].
Miyakawa et al. (US ‘452) discloses the three-dimensional object can be applied to various uses [17:34-36].
Miyakawa et al. (US ‘452) does not specifically disclose a dental material, a mouthpiece or a denture base material, however, a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim [see MPEP 2111.02; 2144.07].
Claim(s) 1, 5-8 and 12 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Arita et al. (US 2016/0326387) [IDS 6/24/22].
Regarding claims 1, 5-8 and 12: Arita et al. (US ‘387) discloses active energy ray curable compositions for three-dimensional printing [abstract; 0003], wherein Comparative Example 8 [Comp. Ex. 8; 0084-0122; Table 2, Comp. Ex. 8] contains 40 mass% A1 (acryloyl morpholine; Tg = 145 oC [0112]), 34 mass% B2 (dicyclopentanyl acrylate; Tg = 120 oC [0116]), 26 mass% C1 (benzyl acrylate; Tg = 6 oC [0118]), 9 mass% photoinitiator (2-dimethylamino-2-(4-methylbenzyl)-1-(4-morpholine-4-yl-phenyl)butane-1-one [0122]) [Comp. Ex. 8; 0084-0122; Table 2, Comp. Ex. 8].
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1 and 3 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Cheng et al. (US 2021/0017302).
Regarding claims 1 and 3: Cheng et al. (US ‘302) discloses resins for 3D printing [abstract], wherein Example 3 [Ex. 3; 0082] prepares a resin composition containing UDMA (diurethane dimethacrylate [0026]), PEGDM (polyethyleneglycol dimethacrylate [0028]; molecular weight 1000 g/mol; n = 2; Mw/n = 500), and TPO as photoinitiator [Ex. 3; 0082].
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.
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) 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Miyakawa et al. (WO 2019/021451) (Miyakawa et al. (US 11,577,452) as the English language equivalent) as applied to claim 19 above.
Regarding claim 20: Miyakawa et al. (US ‘452) discloses the basic claimed composition [as set forth above with respect to claim 19]; wherein Miyakawa et al. (US ‘452) discloses coating the surfaces of the stacked objects [12:10-32; 15:4-56; 24:1-11]. Miyakawa et al. (US ‘452) discloses the cured thickness (Dp) [18:50-51] of less than 500 micrometers [18:62-64].
Miyakawa et al. (US ‘452) does not specifically disclose the coating layer having a thickness of less than 250 µm. However, 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].
Response to Arguments
Applicant’s arguments with respect to claim(s) 1, 3, 5-12, and 14-21 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.
Miyakawa et al. (WO 2019/021451) ( Miyakawa et al. (US 11,577,452) as the English language equivalent) was relied on for disclosing Comparative Example 1 [Comp. Ex. 1; 17:47-24:35; Table 1, Comp. Ex. 1] containing 98 wt% ADCP (tricyclodecane dimethanol diacrylate [20:59-60; 22:1-10]; Mw = 304; n = 2; Mw/n = 236; polymer Tg = 200 oC {see instant specification pg. 20, ln. 12-14}), 1 wt% TPO (2,4,6-trimetyhlbenzoyl-diphenylphosphine oxide [21:43]), and 1 wt% 3M2BIO (3-methyl-2-buten-1-ol [21:44] {alcohol; solvent}) [Comp. Ex. 1; 17:47-24:35; Table 1, Comp. Ex. 1].
Arita et al. (US 2016/0326387) was relied on for disclosing Comparative Example 8 [Comp. Ex. 8; 0084-0122; Table 2, Comp. Ex. 8] containing 40 mass% A1 (acryloyl morpholine; Tg = 145 oC [0112]), 34 mass% B2 (dicyclopentanyl acrylate; Tg = 120 oC [0116]), 26 mass% C1 (benzyl acrylate; Tg = 6 oC [0118]), 9 mass% photoinitiator (2-dimethylamino-2-(4-methylbenzyl)-1-(4-morpholine-4-yl-phenyl)butane-1-one [0122]) [Comp. Ex. 8; 0084-0122; Table 2, Comp. Ex. 8].
Applicant's arguments filed 11/19/25 have been fully considered but they are not persuasive. The rejection of claim 22 based upon Miyakawa et al. (WO 2019/021451) (Miyakawa et al. (US 11,577,452) as the English language equivalent) is maintained.
Miyakawa et al. (US ‘452) was relied on for disclosing photocurable compositions for three-dimensional objects [abstract], wherein the plurality of stacked objects having a plurality of cured layers of step D1 are coated with the photocurable composition in step E {corresponding to a kit} and photocured to bond the coating composition to the stacked objects, wherein the photocurable composition used in step D1 is the same type used in step E {i.e. the composition of Ex. 1; see above}, thereby affording objects having no difference in refractive index and excellent transparency [12:10-32; 15:4-56; 16:44-47; 24:1-11].
Miyakawa et al. (US ‘452) discloses the three-dimensional object can be applied to various uses [17:34-36].
Claim 22 is directed towards a method for producing a three-dimensional shaped article. While Miyakawa et al. (US ‘452) does not specifically disclose the resulting three-dimensional object as a dental material, a mouthpiece or a denture base material, however, a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim [see MPEP 2111.02; 2144.07].
During examination, statements reciting the purpose or intended use of the claimed invention must be evaluated to determine whether the recited purpose or intended use results in a structural difference (or, in the case of process claims, manipulative difference) between the claimed invention and the prior art. See, e.g., In re Otto, 312 F.2d 937, 938, 136 USPQ 458, 459 (CCPA 1963) [see MPEP 2112.02].
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.
See attached form PTO-892.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL F PEPITONE whose telephone number is (571)270-3299. The examiner can normally be reached on 7:00 AM - 3:30 PM.
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/MICHAEL F PEPITONE/Primary Examiner, Art Unit 1767