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 § 112
Claims 5 and 7 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.
In claim 5, it is unclear if how or how the objectionable term “type” further limits the polyester and polyether. That is, are materials other than polyesters and polyethers intended by “type”?
In claim 7, the characterization of a soft monoacrylate having a Tg of “greater than 40°C” contradicts the specification definition of a “soft’ compound having a Tg of “ -100 to 24°C” [0055].
Claim Rejections - 35 USC § 102/103
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 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.
(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.
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.
Claims 1-6, 8-18 and 20 are rejected under 35 U.S.C. 102(a1) and (a2) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over US 2020/0299440 (Wang).
Wang discloses a composition for 3D printing comprising:
30 to 70 pbw of a mixture of at least one polar acrylate oligomer (meets Applicants’ oligomer comprising at least two (meth)acrylate groups (F) and content thereof) and at least one polar acrylate monomer with a heterocyclic structure inclusive of (2-ethyl-2-methyl-1,3-dioxolan-4-yl)acrylate (meets Applicants’ mono(meth)acrylate comprising a 1,3-dioxolane ring (A) and content thereof);
20 to 60 pbw of a weakly polar or non-polar acrylate component (meets Applicants’ mono(meth)acrylate (B) and content thereof);
0.5 to 5 pbw of a photoinitiator (meets Applicants’ initiator (H) and content thereof);
0.5 to 8 pbw of an additive (meets Applicants’ additive (I) and content thereof); and
0 to 4 pbw of a colorant (if present not precluded from present claims and/or meets additive (I)) (e.g., abstract, [0012-0014], [0024-0040], examples, claims).
In Table 1, Wang discloses a composition comprising:
25.6 wt.% of a polyurethane acrylate oligomer CN 9021 NS [0026] (meets Applicants’ oligomer (F) and content thereof);
20 wt.% of acryloyl morpholine (a polar acrylate monomer functional alternative to (2-ethyl-2-methyl-1,3-dioxolan-4-yl)acrylate per [0031]);
30.6 wt.% isobornyl acrylate (meets Applicants’ mono(meth)acrylate (B) and content thereof);
15 wt.% stearic acrylate (also meets Applicants’ mono(meth)acrylate (B) and content thereof);
2.78 wt.% photoinitiator (meets Applicants’ initiator (H)); and
6.02 wt.% of additives (meets Applicants’ additive (I) and content thereof).
As to claims 1 and 20, inasmuch as Wang clearly discloses a small genus for the polar acrylate monomer with a heterocyclic structure [0031] wherein (2-ethyl-2-methyl-1,3-dioxolan-4-yl)acrylate and acryloyl morpholine are listed as functional alternatives, the use of (2-ethyl-2-methyl-1,3-dioxolan-4-yl)acrylate in place of the acryloyl morpholine used in Table 1 would have been immediately-envisaged to one having ordinary skill in the art. That is, when the reference teaches a small genus which places a claimed species in the possession of the public, the species is anticipated, In re Schaumann, 197 USPQ 5. Notably, said immediately-envisaged composition would comprise 20 wt.% (2-ethyl-2-methyl-1,3-dioxolan-4-yl)acrylate (meets Applicant’s less than 50 wt.%).
As to claim 2, Wang’s immediately-envisaged composition would comprise a total 65.6 wt.% of (2-ethyl-2-methyl-1,3-dioxolan-4-yl)acrylate (meets Applicants’ mono(meth)acrylate (A)), isobornyl acrylate (meets Applicants’ mono(meth)acrylate (B)) and stearic acrylate (also meets Applicants’ mono(meth)acrylate (B)) (20+30.6+15 = 65.6 wt.%) (meets Applicants’ total (A)+(B) content).
As to claim 3, Wang’s immediately-envisaged composition would comprise the (2-ethyl-2-methyl-1,3-dioxolan-4-yl)acrylate (meets Applicants’ mono(meth)acrylate (A)), isobornyl acrylate (meets Applicants’ mono(meth)acrylate (B)) and stearic acrylate (also meets Applicants’ mono(meth)acrylate (B)) in a weight ratio of about .44 (20/45.6) (meets Applicants’ total (A) to (B) weight ratio).
As to claim 4, Wang’s (2-ethyl-2-methyl-1,3-dioxolan-4-yl)acrylate meets formula (I) wherein R1 is ethyl, R2 is methyl, R3 is H, R4 is H, R5 is H, R6 is H and n is 1.
As to claim 5, Wang’s stearic acrylate meets formula (II) wherein R8 is H and R7 is an aliphatic monoalcohol.
As to claim 6, Wang’s isobornyl acrylate meets Applicants definition of a hard and hydrophobic monomer [0105] and stearic acrylate meets Applicants’ definition of a soft and hydrophobic monomer [0103].
As to claim 8, Wang’s immediately-envisaged composition comprises isobornyl acrylate.
As to claim 9, Wang’s immediately-envisaged composition meets the claimed composition wherein the optional component C) is not present. That is, wherein the composition comprises 0 wt.% of component C).
As to claim 10, Wang expressly exemplifies polyurethane acrylate oligomer CN 9021 NS [0026].
As to claim 11, Wang does not expressly describe the composition in terms of glass transition temperature. However, inasmuch as the immediately-envisaged compositions meet the present requirements, both in terms of the types of materials added and their contents, it is reasonably believed that they would inherently possess the same properties because the properties are intrinsically linked to the chemical identity and formulation of a composition. “Products of identical chemical composition cannot have mutually exclusive properties” because a chemical composition and its properties are inseparable, In re Spada 15 USPQ2d 1655, MPEP 2112.01 (II). Where the claimed and prior products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established, In re Best 195 USPQ 430. Where applicant claims a composition in terms of function, property or characteristic and the composition of the prior art is the same as that of the claim but the function property or characteristic is not explicitly disclosed, a rejection under both 35 U.S.C. 102 and 103 is appropriate (MPEP 2112).
As to claim 12, Wang’s compositions have a viscosity of 10-15 cps (10-15 mPa.s) at 40-60°C [0055], necessarily meeting the claimed viscosity at 50°C.
As to claim 13, Wang’s composition is used as a 3D printing ink.
As to claims 14 and 15, Wang disclosing curing the compositions by exposure to UV light, i.e., radiation [0069], to produce cured printing inks.
As to claims 16 and 17, Wang discloses the production of printed 3D products.
As to claim 18, Wang disclosed cured 3D inks.
Wang anticipates the above-rejected claims in that it is reasonably believed that a composition comprising (2-ethyl-2-methyl-1,3-dioxolan-4-yl)acrylate in place of the acryloyl morpholine used in Table 1 would have been immediately-envisaged to one having ordinary skill in the art. In the alternative, it would have been obvious to one having ordinary skill in the art to use (2-ethyl-2-methyl-1,3-dioxolan-4-yl)acrylate in place of the acryloyl morpholine used in Table 1 as Wang clearly discloses them as viable polar monomer alternatives.
Claim Rejections - 35 USC § 103
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over US 2020/0299440 (Wang) described.
Wang does not expressly set forth a working example wherein the first polar acrylate monomer further includes a monoacrylate comprising a hydroxyl group. Wang, however, teaches that the first acrylate component can include “at least one” polar acrylate monomer [0024]. Included among viable polar acrylate monomers are hydroxyalkyl acrylate monomers such as the 2-hydroxylethyl acrylate per Table 2. Thus, it would have been within the purview of Wang’s inventive disclosure, and obvious to one having ordinary skill in the art, to further include a hydroxyalkyl acrylate monomer in the composition per Table 1 for its expected added effect as a polar monomer. The selection of a known material based on its suitability for its intended use supports a prima facie case of obviousness, Sinclair & Carroll Co. v. Interchemical Corp., 65 USPQ 297.
Claim 19 is rejected under 35 U.S.C. 103 as being unpatentable over US 2020/0299440 (Wang) described hereinabove in view of US 2012/0149797 (Nakamura).
Wang does not expressly disclose the presently claimed monomer per formula (Ia). Nakamura, directed to a similar-such ink composition, discloses the presently claimed monomer (monomer (B-3) per [0036]) as a functional alternative to a homolog of Wang’s to (2-ethyl-2-methyl-1,3-dioxolan-4-yl)acrylate (monomer(B-10) per [0036]). Thus, it would have been obvious to one having ordinary skill in the art to use the presently claimed monomer per formula (Ia) in place of (2-ethyl-2-methyl-1,3-dioxolan-4-yl)acrylate in Wang’s composition with the reasonable expectation of success. Case law holds that if a prior art species is structurally similar or a homolog to that claimed, its disclosure renders obvious the claimed species to one of ordinary skill in the art based on the reasonable expectation that structurally similar species usually have similar properties. See, e.g., Dillon, 919 F.2d at 693, 696, 16 USPQ2d at 1901, 1904. See also Deuel, 51 F.3d at 1558, 34 USPQ2d at 1214, MPEP 2144.08.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Ana L Woodward whose telephone number is (571)272-1082. The examiner can normally be reached M-F 8am-5pm.
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/ANA L. WOODWARD/Primary Examiner, Art Unit 1765