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) 1-5, 7-9, and 22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Zhang et al. (US Serial No. 2021/0221930), in view of Mizutani et al. (US Serial No. 2017/0137640), as evidenced by Arita et al. (US Serial No. 2016/0326387).
Regarding claims 1-5; Zhang et al. teaches, in a preferred embodiment, a light curable composition comprising 19.4 wt.% ACMO (acryloyl morpholine, Tg ~ 145°C; second monomer), 40 wt.% Ebecryl® 230 (urethane diacrylate, Tg ~ -55°C; urethane (meth)acrylate oligomer), and 40 wt.% SR 285 (tetrahydrofurfuryl acrylate, Tg ~ -15°C) [Table1, Ex5, 0075, 0080, 0086]. Wherein a total amount of the urethane (meth)acrylate oligomer and vinyl monomer, with respect to the polymerizable compounds, is 100 mass%.
Zhang et al. fails to teach wherein the first monomer includes (2-methyl-2-ethyl-1,3-dioxolane-4-yl)methyl acrylate. Mizutani et al. teaches an active energy ray curable ink composition, suitable for use in additive manufacturing methods (e.g. stereolithography [0067]), comprising polymerizable monomers such as tetrahydrofurfuryl acrylate and (2-methyl-2-ethyl-1,3-dioxolane-4-yl)methyl acrylate (first monomer, Tg: -5°C (see instant Spec p21) [0038] and polymerization initiators [0041-0042]. Therefore, Mizutani et al. teaches that tetrahydrofurfuryl acrylate and (2-methyl-2-ethyl-1,3-dioxolane-4-yl)methyl acrylate are functional equivalents for the purpose of functioning as polymerizable monomers in photo curable compositions, suitable for use in stereolithography. It is prima facie obvious to substitute art-recognized functional equivalents known for the same purpose (See MPEP § 2144.06).
Arita et al. provides evidence that acryloyl morpholine has a Tg of 145°C [0112].
Regarding claim 7; Zhang et al. teaches other monomers suitable for use in the present invention, include for example, isobornyl acrylate [0029]. Zhang et al. teaches the monomers may be used in any combination. It is prima facie obvious to combine two compositions (in this case compounds) each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose; the idea of combining them flows logically from their having been individually taught in the prior art. See In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980), see MPEP §2144.06.
Regarding claim 8; Zhang et al. fails to explicitly teach wherein the viscosity of the photocurable composition is 6000 mPa·s or less as measured at a temperature of 25°C and a shear rate of 100 s-1. 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. According to the original specification, a composition comprising 20 to 80 mass% of a urethane (meth)acrylate, 15 to 75 mass% of a first vinyl monomer, and 5 to 65 mass% of a second vinyl monomer, would yield the viscosity required, suitable for use in stereolithography [p15, line25-29] . Therefore, the claimed effects and physical properties, i.e. viscosity, 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 & II.
Regarding claim 9; Zhang et al. teaches compositions suitable for use in stereolithography [0002].
Regarding claim 22; Although Zhang et al. teaches, in the preferred embodiment, 40 mass% of tetrahydrofurfuryl acrylate (first monomer), Zhang et al. contemplates a larger range of preferably form 40 to 60% by weight based on the total weight of the composition. Thus, at the time of filing, a person of ordinary skill in the art would have found it obvious to employ the functional equivalent of tetrahydrofurfuryl acrylate (i.e. (2-methyl-2-ethyl-1,3-dioxolane-4-yl)methyl acrylate as taught by Mizutani et al.) in an amount of, for example 50% by mass, and would have been motivated to do so since Zhang et al. teaches it suitable to employ the polymerizable monomers in an amount of preferably from 40 to 60% by weight with respect to the total composition. 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.
Claim(s) 10, 11, 13, and 23 is/are rejected under 35 U.S.C. 103 as being unpatentable over Zhang et al. (US Serial No. 2021/0221930), in view of Mizutani et al. (US Serial No. 2017/0137640), as evidenced by Arita et al. (US Serial No. 2016/0326387).
Regarding claims 10-11; Zhang et al. teaches, in a preferred embodiment, a light curable composition comprising 19.4 wt.% ACMO (acryloyl morpholine, Tg ~ 145°C; second monomer), 40 wt.% Ebecryl® 230 (urethane diacrylate, Tg ~ -55°C; urethane (meth)acrylate oligomer), and 40 wt.% SR 285 (tetrahydrofurfuryl acrylate, Tg ~ -15°C) [Table1, Ex5, 0075, 0080, 0086]. Wherein a total amount of the urethane (meth)acrylate oligomer and vinyl monomer, with respect to the polymerizable compounds, is 100 mass%.
Zhang et al. fails to teach wherein the first monomer includes (2-methyl-2-ethyl-1,3-dioxolane-4-yl)methyl acrylate. Mizutani et al. teaches an active energy ray curable ink composition, suitable for use in additive manufacturing methods (e.g. stereolithography [0067]), comprising polymerizable monomers such as tetrahydrofurfuryl acrylate and (2-methyl-2-ethyl-1,3-dioxolane-4-yl)methyl acrylate (first monomer, Tg: -5°C (see instant Spec p21) [0038] and polymerization initiators [0041-0042]. Therefore, Mizutani et al. teaches that tetrahydrofurfuryl acrylate and (2-methyl-2-ethyl-1,3-dioxolane-4-yl)methyl acrylate are functional equivalents for the purpose of functioning as polymerizable monomers in photo curable compositions, suitable for use in stereolithography. It is prima facie obvious to substitute art-recognized functional equivalents known for the same purpose (See MPEP § 2144.06).
Zhang et al. teaches a cured product [0010, 0030], however fails to explicitly, however fails to explicitly teach the cured product having a glass transition temperature of 20°C or less. 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. According to the original specification, a product produced from a composition comprising 20 to 80 mass% of a urethane (meth)acrylate having a Tg ranging from -100°C to 50°C, 15 to 75 mass% of a first vinyl monomer having a Tg ranging from -100°C to 20°C, and 5 to 65 mass% of a second vinyl monomer having a Tg ranging from 20°C to 150°C, would yield a cured product having a Tg or 20°C or less [p17, line22-p18, line2]. Therefore, the claimed effects and physical properties, i.e. Tg, would necessarily be achieved in the product made by 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.
Arita et al. provides evidence that acryloyl morpholine has a Tg of 145°C [0112].
Regarding claim 13; Zhang et al. teaches other monomers suitable for use in the present invention, include for example, isobornyl acrylate [0029]. Zhang et al. teaches the monomers may be used in any combination. It is prima facie obvious to combine two compositions (in this case compounds) each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose; the idea of combining them flows logically from their having been individually taught in the prior art. See In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980), see MPEP §2144.06.
Regarding claim 23; Although Zhang et al. teaches, in the preferred embodiment, 40 mass% of tetrahydrofurfuryl acrylate (first monomer), Zhang et al. contemplates a larger range of preferably form 40 to 60% by weight based on the total weight of the composition. Thus, at the time of filing, a person of ordinary skill in the art would have found it obvious to employ the functional equivalent of tetrahydrofurfuryl acrylate (i.e. (2-methyl-2-ethyl-1,3-dioxolane-4-yl)methyl acrylate as taught by Mizutani et al.) in an amount of, for example 50% by mass, and would have been motivated to do so since Zhang et al. teaches it suitable to employ the polymerizable monomers in an amount of preferably from 40 to 60% by weight with respect to the total composition. 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.
Claim(s) 14, 15, 17, and 24 is/are rejected under 35 U.S.C. 103 as being unpatentable over Zhang et al. (US Serial No. 2021/0221930), in view of Mizutani et al. (US Serial No. 2017/0137640), as evidenced by Arita et al. (US Serial No. 2016/0326387).
Regarding claims 14-15; Zhang et al. teaches, in a preferred embodiment, a cured 3D article (shaped product) [0087], prepared from a light curable composition comprising 19.4 wt.% ACMO (acryloyl morpholine, Tg ~ 145°C; second monomer), 40 wt.% Ebecryl® 230 (urethane diacrylate, Tg ~ -55°C; urethane (meth)acrylate oligomer), and 40 wt.% SR 285 (tetrahydrofurfuryl acrylate, Tg ~ -15°C) [Table1, Ex5, 0075, 0080, 0086]. Wherein a total amount of the urethane (meth)acrylate oligomer and vinyl monomer, with respect to the polymerizable compounds, is 100 mass%.
Zhang et al. fails to teach wherein the first monomer includes (2-methyl-2-ethyl-1,3-dioxolane-4-yl)methyl acrylate. Mizutani et al. teaches an active energy ray curable ink composition, suitable for use in additive manufacturing methods (e.g. stereolithography [0067]), comprising polymerizable monomers such as tetrahydrofurfuryl acrylate and (2-methyl-2-ethyl-1,3-dioxolane-4-yl)methyl acrylate (first monomer, Tg: -5°C (see instant Spec p21) [0038] and polymerization initiators [0041-0042]. Therefore, Mizutani et al. teaches that tetrahydrofurfuryl acrylate and (2-methyl-2-ethyl-1,3-dioxolane-4-yl)methyl acrylate are functional equivalents for the purpose of functioning as polymerizable monomers in photo curable compositions, suitable for use in stereolithography. It is prima facie obvious to substitute art-recognized functional equivalents known for the same purpose (See MPEP § 2144.06).
Arita et al. provides evidence that acryloyl morpholine has a Tg of 145°C [0112].
Regarding claim 17; Zhang et al. teaches other monomers suitable for use in the present invention, include for example, isobornyl acrylate [0029]. Zhang et al. teaches the monomers may be used in any combination. It is prima facie obvious to combine two compositions (in this case compounds) each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose; the idea of combining them flows logically from their having been individually taught in the prior art. See In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980), see MPEP §2144.06.
Regarding claim 24; Although Zhang et al. teaches, in the preferred embodiment, 40 mass% of tetrahydrofurfuryl acrylate (first monomer), Zhang et al. contemplates a larger range of preferably form 40 to 60% by weight based on the total weight of the composition. Thus, at the time of filing, a person of ordinary skill in the art would have found it obvious to employ the functional equivalent of tetrahydrofurfuryl acrylate (i.e. (2-methyl-2-ethyl-1,3-dioxolane-4-yl)methyl acrylate as taught by Mizutani et al.) in an amount of, for example 50% by mass, and would have been motivated to do so since Zhang et al. teaches it suitable to employ the polymerizable monomers in an amount of preferably from 40 to 60% by weight with respect to the total composition. 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.
Claim(s) 18-19, 21, and 25 is/are rejected under 35 U.S.C. 103 as being unpatentable over Zhang et al. (US Serial No. 2021/0221930), in view of Mizutani et al. (US Serial No. 2017/0137640), as evidenced by Arita et al. (US Serial No. 2016/0326387).
Regarding claims 18-19; Zhang et al. teaches, in a preferred embodiment, a light curable composition comprising 19.4 wt.% ACMO (acryloyl morpholine, Tg ~ 145°C; second monomer), 40 wt.% Ebecryl® 230 (urethane diacrylate, Tg ~ -55°C; urethane (meth)acrylate oligomer), and 40 wt.% SR 285 (tetrahydrofurfuryl acrylate, Tg ~ -15°C) [Table1, Ex5, 0075, 0080, 0086]. Wherein a total amount of the urethane (meth)acrylate oligomer and vinyl monomer, with respect to the polymerizable compounds, is 100 mass%.
Zhang et al. fails to teach wherein the first monomer includes (2-methyl-2-ethyl-1,3-dioxolane-4-yl)methyl acrylate. Mizutani et al. teaches an active energy ray curable ink composition, suitable for use in additive manufacturing methods (e.g. stereolithography [0067]), comprising polymerizable monomers such as tetrahydrofurfuryl acrylate and (2-methyl-2-ethyl-1,3-dioxolane-4-yl)methyl acrylate (first monomer, Tg: -5°C (see instant Spec p21) [0038] and polymerization initiators [0041-0042]. Therefore, Mizutani et al. teaches that tetrahydrofurfuryl acrylate and (2-methyl-2-ethyl-1,3-dioxolane-4-yl)methyl acrylate are functional equivalents for the purpose of functioning as polymerizable monomers in photo curable compositions, suitable for use in stereolithography. It is prima facie obvious to substitute art-recognized functional equivalents known for the same purpose (See MPEP § 2144.06).
Zhang et al. teaches the light curable composition was printed to form a 3D article using an Ember printer from Autodesk (DLP/SLA printer), comprising steps of irradiating with UV light to form the cured 3D article [0062-0072].
Arita et al. provides evidence that acryloyl morpholine has a Tg of 145°C [0112].
Regarding claim 21; Zhang et al. teaches other monomers suitable for use in the present invention, include for example, isobornyl acrylate [0029]. Zhang et al. teaches the monomers may be used in any combination. It is prima facie obvious to combine two compositions (in this case compounds) each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose; the idea of combining them flows logically from their having been individually taught in the prior art. See In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980), see MPEP §2144.06.
Regarding claim 25; Although Zhang et al. teaches, in the preferred embodiment, 40 mass% of tetrahydrofurfuryl acrylate (first monomer), Zhang et al. contemplates a larger range of preferably form 40 to 60% by weight based on the total weight of the composition. Thus, at the time of filing, a person of ordinary skill in the art would have found it obvious to employ the functional equivalent of tetrahydrofurfuryl acrylate (i.e. (2-methyl-2-ethyl-1,3-dioxolane-4-yl)methyl acrylate as taught by Mizutani et al.) in an amount of, for example 50% by mass, and would have been motivated to do so since Zhang et al. teaches it suitable to employ the polymerizable monomers in an amount of preferably from 40 to 60% by weight with respect to the total composition. 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.
Terminal Disclaimer
The terminal disclaimer filed on 30 December 2025 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of US Application No. 18/232556 and 18/388306 has been reviewed and is accepted. The terminal disclaimer has been recorded.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-5, 7-11, 13-15, 17-19, and 21-25 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
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
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