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) 1-6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ito et al. (JP 2007-161953), wherein the machine English translation is used for citation.
Regarding claims 1-5; Ito et al. teaches photocurable resin compositions for producing three-dimensional models, which are colorless [Exs] or may further include a colorant [0070]. Ito et al. teaches, in a preferred embodiment, a resin composition comprising 32.4 wt.% of a urethanized acrylic compound (Ib) (see structure below, instant A2), 41.6 wt.% of dicyclopentanyl acrylate (instant A1), 19.5 wt.% of tricyclodecane methanol acrylate (instant A3), 2.7 wt.% of a tertiary amino group-containing acrylate compound (see structure below, IIIa; instant A3), and a photoinitiator (Irgacure 6513, TPO) [Table2; Ex8]; the total mass of the compounds A1, A2, and A3 is 100% by mass based on the total mass of the ethylenically unsaturated compound (A).
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Although Ito et al. teaches employing 35 parts by weight of compound Ib (instant A2) and 45 parts by weight of component II (instant A1), a larger range is contemplated for both components I and II, wherein Ito et al. teaches 20-55 mass% of urethanized acrylic compounds Ib and 20-55 mass% of monofunctional acylates II. Thus, when looking to Example 8 as a starting point, in the instance wherein the monofunctional acrylate II (instant A1) is employed in an amount of 46.6 mass% (i.e. 55 parts by mass), the mass ratio of the ethylenically unsaturated monomer II (instant A1) to urethanized acrylate Ib (instant A2) is 1.57 (55/35), which falls within the claimed range. 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.
The Examiner makes note that “to be used in a material-jet optical shaping process” is an intended use limitation. If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999). See also Rowe v. Dror, 112 F.3d 473, 478, 42 USPQ2d 1550, 1553 (Fed. Cir. 1997); see MPEP §2111.02.
Regarding claim 6; the preferred embodiment of Ito et al. does not teach the composition having an ethylenically unsaturated monomer having a nitrogen atom in the molecule and having no aliphatic cyclic structure (i.e. 0% by mass), thus the composition comprises an ethylenically unsaturated monomer having a nitrogen atom in the molecule and having no aliphatic cyclic structure in an amount of less than 12% by mass [Table2, Ex8].
Claim(s) 1 and 7-17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kitou et al. (US Serial No. 2018/0258297), in view of Ito et al. (JP 2007-161953), wherein the machine English translation is used for citation.
Regarding claims 7-11 and 13-14; Kitou et al. teaches a resin composition for a modeling material, a light curing molding ink set comprising the resin composition for a modeling material, and a method for manufacturing a light cured article using the light curing molding ink set [0001]. Kitou et al. teaches the resin composition for a modeling material of the present embodiment is a resin composition for a modeling material, used for shaping a modeling material by a manufacturing method for light curing molding using an ink-jet scheme, comprising (A) an ethylenic unsaturated monomer as a photocuring component, (B) a photopolymerization initiator, and (C) a surface adjusting agent [0018]. In a preferred embodiment, Kitou et al. teaches 38.8 wt.% of ACMO (acryloylmorpholine), which is substituted by (meth)acrylamide [0038], 30 wt.% of DEGDA (diethylene glycol diacrylate), a surface adjusting agent (surface conditioner) and CR-60 (titanium oxide, white pigment) [Table2, M15].
Kitou et al. fails to teach the composition comprising a clear composition in the molding ink set. Ito et al. teaches photocurable resin compositions for producing three-dimensional models, which are colorless [Exs] or may further include a colorant [0070]. Ito et al. teaches, in a preferred embodiment, a resin composition comprising 32.4 wt.% of a urethanized acrylic compound (Ib) (see structure below, instant A2), 41.6 wt.% of dicyclopentanyl acrylate (instant A1), 19.5 wt.% of tricyclodecane methanol acrylate (instant A3), 2.7 wt.% of a tertiary amino group-containing acrylate compound (see structure below, IIIa; instant A3), and a photoinitiator (Irgacure 6513, TPO) [Table2; Ex8]; the total mass of the compounds A1, A2, and A3 is 100% by mass based on the total mass of the ethylenically unsaturated compound (A).
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Although Ito et al. teaches employing 35 parts by weight of compound Ib (instant A2) and 45 parts by weight of component II (instant A1), a larger range is contemplated for both components I and II, wherein Ito et al. teaches 20-55 mass% of urethanized acrylic compounds Ib and 20-55 mass% of monofunctional acylates II [0019]. Thus, when looking to Example 8 as a starting point, in the instance wherein the monofunctional acrylate II (instant A1) is employed in an amount of 46.6 mass% (i.e. 55 parts by mass), the mass ratio of the ethylenically unsaturated monomer II (instant A1) to urethanized acrylate Ib (instant A2) is 1.57 (55/35), which falls within the claimed range. 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.
Ito et al. and Kitou et al. are analogous art because they are both concerned with the same field of endeavor, namely photocurable resin compositions for producing a three dimensional object having good dimensional accuracy. At the time of filing, a person of ordinary skill in the art would have found it obvious to employ the colorless resin compositions of Ito et al., in an ink set as taught by Kitou et al., and would have been motivated to do so in order to achieve small volume shrinkage producing articles having intended dimensions and appearance with high shaping accuracy and dimensional accuracy, as suggested by Ito et al. [0001].
Regarding claims 12; Kitou et al. teaches colorants such as cyan based colorants [0054].
Regarding claim 15; the combination of the prior art fails to teach wherein a content of the surface conditioner contained in the model material clear composition based on a total mass of the model material clear composition is larger than a content of the surface condition contained in the model material color composition based on the total mass of the model material color composition. However, the experimental modification of this prior art in order to ascertain optimum operating conditions fails to render applicants’ claims patentable in the absence of unexpected results. See In re Aller, 105 USPQ 233; see MPEP §2144.05. At the time of the invention a person having ordinary skill in the art would have found it obvious to optimize the amount of surface conditioner and would have been motivated to do so in order to achieve a desired surface tension of each composition.
Regarding claims 16-17; Kitou et al. teaches a resin composition for a modeling material by which a light cured article having the good dimensional accuracy can be obtained by suppressing generation of bleeding at an interface between a layer composed of a resin composition for a modeling material and a layer composed of a resin composition for a supporting material, a light curing molding ink set comprising the resin composition for a modeling material, and a method for manufacturing a light cured article using the light curing molding ink set [0011].
Response to Arguments
Applicant's arguments filed 10 November 2025 have been fully considered but they are not persuasive.
Applicants argue Ito fails to disclose or suggest a model material clear composition including all the limitations recited in independent claim 1, as amended. In particular, the reference does not teach, among other things, the following limitations as recited in independent claim 1: a mass ratio of the ethylenically unsaturated monomer (A1) to the ethylenically unsaturated compound (A2) is from 1.5 to 10.
The Examiner respectfully disagrees. Ito teaches 20-55 mass% of urethanized acrylic compounds Ib (instant A2) and 20-55 mass% of monofunctional acylates II (instant A1) [0019]. Thus, Ito renders obvious the claimed mass ratio in the instance the monofunctional acrylate II (instant A1) is employed in an amount of 46.6 mass%, based on the preferred embodiment of Example 8; which would equate to 55 parts by mass monofunctional acylate II (instant A1) and 35 parts by mass acrylic compound Ib (instant A2), thus having a mass ratio of 1.57 of A1 to A2 (as calculated by Examiner).
In response to applicant's argument that Ito doesn’t teach that varying the A1/A2 mass ratio would impact transparency or mechanical balance, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
Applicants’ arguments to the combination of Kitou in view of Ito are substantially similar as to those presented above, and thus are similarly responded to.
As such, Ito and Kitou are still relied upon for rendering obvious the basic claimed model material, as required by the instant claim language.
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.
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