CTFR 17/934,365 CTFR 85106 DETAILED ACTION Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia 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 07-06 AIA 15-10-15 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. 07-20-aia AIA 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. 07-21-aia AIA Claim (s) 1, 5-7, 9, 11, 13-17, 21, 22, and 23 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hagiwara et al. (US Serial No. 2016/0184189), in view of Fukushima et al. (JP 2001-310918), wherein the machine English translation is used for citation . Regarding claims 1, 5-7, 11, and 13 ; Hagiwara et al. teaches a photocurable resin composition comprising, 30-70% by mass of at least one urethane based di(meth)acrylate (A-1a) [0079], 30-70% by mass of a second radical polymerizable compound (A2), such as trimethylolpropane tri(meth)acrylate [0058, 0083], 10 to 65% by mass of a filler (B), such as Admafine® AO-502 (alumina surface-modified with a methacryloyl group, average particle size = 0.7 microns, sphericity = 0.87; instant spec [0077]) [0076, Ex5], and 0.02 to 3% by mass of a photosensitive radical polymerization initiator (C) [0074, 0076]. Hagiwara et al. teaches a mass percent of the filler to be used in the invention, however fails to explicitly teach 20% by volume to 65% by volume. Fukushima et al. teaches a photocurable composition comprising a (A) urethane (meth)acrylate having at least two radically polymerizable (meth)acryloyloxy groups [0008, 0013], (B) at least one compound having at least one radically polymerizable ethylenically unsaturated bond in the molecule (excluding the urethane (meth)acrylate compound), and a (C) photopolymerization initiator [0008]. Fukushima et al. teaches the composition further comprises inorganic particles [0042] and are employed in an amount of 20 to 65% volume, an example being silicon dioxide (silica) [0041, 0045]. Hagiwara et al. and Fukushima et al. are analogous art because they are both concerned with the same field of endeavor, namely photocurable compositions suitable for use in producing molded articles (e.g. dental materials) via three dimensional printing. At the time of filing, a person of ordinary skill in the art would have found it obvious to employ the filler particles of Hagiwara et al. in an amount of 20 to 65% volume, as taught by Fukushima et al., and would have been motivated to do so in order to obtain a molded having excellent dimensional accuracy and heat resistance [0041], as suggested by Fukushima et al. The Examiner takes the position that Admafine® AO-502 has an organic content following within the range of 0.1% to 20% by mass, as required by the claims, since Admafine® AO-502 is a preferred inorganic particle of the instant application. The courts have held that “a compound and all its properties are mutually inseparable”, In re Papesch , 315F.2d 381, 137 USPQ 42, 51 (CCPA 1963). Further, attention is drawn to MPEP 2112.01, which states that “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). Regarding claims 9 and 21 ; Hagiwara et al. teaches a photocurable resin composition comprising 20-80% by mass of a second radical polymerizable compound (A2), such as trimethylolpropane tri(meth)acrylate [0058, 0083]. 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 trimethylolpropane tri(meth)acrylate in an amount of 80% by mass, and would have been motivated to do so since Hagiwara et al. teaches employing the trimethylolpropane tri(meth)acrylate in an amount of 80% by mass is suitable to achieve the particulars of the present invention (i.e. more than the urethane di(meth)acrylate compound). Regarding claim 14 ; Hagiwara et al. teaches the urethane-based di(meth)acrylate compound is represented by the following general formula: D-{NH-CO-O-R 2 -O-CO-C(R 1 )=CH 2 } 2 Wherein R 1 represents a H or methyl group, R 2 represents an alkylene group, and D represents an organic diisocyanate compound residue; wherein the organic diisocyanate compound residue D may be any of an aromatic diisocyanate compound residue, an aliphatic diisocyanate compound residue, and an alicyclic diisocyanate compound [0044-0045]. 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 molecular weight of the urethane-based di(meth)acrylate compound and would have been motivated to do so to achieve a desired viscosity of the composition. Regarding claim 15 ; Hagiwara et al. teaches the viscosity of the dental photocurable resin composition used in the present invention is preferably 20,000 mPa·s or less, more preferably 15,000 mPa·s or less, and still more preferably 10,000 mPa·s or less, when measured at 25° C [0086]. Regarding claim 16 ; Hagiwara et al. fails to explicitly disclose a deflection temperature under load of the cured object exhibits is 200°C or higher. 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. Therefore, the claimed effects and physical properties, i.e. deflection temperature, 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 17 ; Hagiwara et al. does not explicitly disclose a flexural modulus of 5 GPa or more, and a flexural strength is 60 MPa or more. 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. Therefore, the claimed effects and physical properties, i.e. flexural modulus and strength, 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 22 ; Hagiwara et al. does not teach the composition further comprises another polymerizable resin, thus the urethane-based di(meth)acrylate (A1) and other polymerizable compound (A2) make up 100 parts by mass of the total resin component (A). Regarding claim 23 ; the limitation “are manufactured by vaporized metal combustion” is a product-by-process limitation. The examiner notes that even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” See In re Thorpe , 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) ); see MPEP §2113 . 07-21-aia AIA Claim (s) 2-4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hagiwara et al. (US Serial No. 2016/0184189), in view of Fukushima et al. (JP 2001-310918), wherein the machine English translation is used for citation . Regarding claims 2-4 ; Hagiwara et al. teaches a photocurable resin composition comprising, 30-70% by mass of at least one urethane based di(meth)acrylate (A-1a) [0079], 30-70% by mass of a second radical polymerizable compound (A2), such as trimethylolpropane tri(meth)acrylate [0058, 0083], 10 to 65% by mass of a filler (B), such as Admafine® AO-502 (alumina surface-modified with a methacryloyl group, average particle size = 0.7 microns, sphericity = 0.87; instant spec [0077]) [0076, Ex5], and 0.02 to 3% by mass of a photosensitive radical polymerization initiator (C) [0074, 0076]. Hagiwara et al. teaches a mass percent of the filler to be used in the invention, however fails to explicitly teach 20% by volume to 65% by volume. Fukushima et al. teaches a photocurable composition comprising a (A) urethane (meth)acrylate having at least two radically polymerizable (meth)acryloyloxy groups [0008, 0013], (B) at least one compound having at least one radically polymerizable ethylenically unsaturated bond in the molecule (excluding the urethane (meth)acrylate compound), such as vinyl ethers [0009], and a (C) photopolymerization initiator [0008]. Fukushima et al. teaches the composition further comprises inorganic particles [0042] and are employed in an amount of 20 to 65% volume, an example being silicon dioxide (silica) [0041, 0045]. Hagiwara et al. and Fukushima et al. are analogous art because they are both concerned with the same field of endeavor, namely photocurable compositions suitable for use in producing molded articles (e.g. dental materials) via three dimensional printing. At the time of filing, a person of ordinary skill in the art would have found it obvious to employ the filler particles of Hagiwara et al. in an amount of 20 to 65% volume, as taught by Fukushima et al., and would have been motivated to do so in order to obtain a molded having excellent dimensional accuracy and heat resistance [0041], as suggested by Fukushima et al. Hagiwara et al. fails to teach the composition further comprising a cationically polymerizable component (A3). Fukushima et al. teaches the composition comprises a reactive diluent (component B), such as vinyl ethers (cationically polymerizable compound) [0009], in an amount as low as 10 mass parts [0011, 0033]. At the time of filing, a person of ordinary skill in the art would have found it obvious to add a vinyl ether reactive diluent in an amount of 10 mass parts, and would have been motivated to do so in order to achieve a desired mechanical strength and viscosity, as suggested by Fukushima et al. [0033]. The Examiner takes the position that Admafine® AO-502 has an organic content following within the range of 0.1% to 20% by mass, as required by the claims, since Admafine® AO-502 is a preferred inorganic particle of the instant application. The courts have held that “a compound and all its properties are mutually inseparable”, In re Papesch , 315F.2d 381, 137 USPQ 42, 51 (CCPA 1963). Further, attention is drawn to MPEP 2112.01, which states that “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). Response to Arguments Applicant’s arguments with respect to claim(s) 1-7, 9, 11, 13-17, 21-23 have been considered but are moot because the new ground of rejection does not rely on the combination of references applied in the prior rejection of record for any teaching or matter specifically challenged in the argument. Conclusion 07-40 AIA 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. Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Eashoo can be reached at 571-272-1197. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /JESSICA M ROSWELL/ Primary Examiner, Art Unit 1767 Application/Control Number: 17/934,365 Page 2 Art Unit: 1767 Application/Control Number: 17/934,365 Page 3 Art Unit: 1767 Application/Control Number: 17/934,365 Page 4 Art Unit: 1767 Application/Control Number: 17/934,365 Page 5 Art Unit: 1767 Application/Control Number: 17/934,365 Page 6 Art Unit: 1767 Application/Control Number: 17/934,365 Page 7 Art Unit: 1767 Application/Control Number: 17/934,365 Page 8 Art Unit: 1767 Application/Control Number: 17/934,365 Page 9 Art Unit: 1767 Application/Control Number: 17/934,365 Page 10 Art Unit: 1767 Application/Control Number: 17/934,365 Page 11 Art Unit: 1767
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