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 .
Election/Restrictions
Claims 13-17 remain withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 06/06/2025.
Response to Amendment and Status of Claims
Applicant's amendment and response, filed 01/20/2026, has been entered. Claims 1, 6, 8, and 18 are amended, claims 3 and 4 are cancelled, and no claims are newly added. Claims 13-17 remain withdrawn as described above. Accordingly, claims 1, 2, and 5-21 are pending with claims 1, 2, 5-12, and 18-21 considered in this Office Action.
Amendment to Specification Entered In Part
Applicant’s amendment to the specification is entered in part (MPEP 714.20 (A) “An ‘amendment’ presenting an unacceptable substitute specification along with amendatory matter, as amendments to claims or new claims, should be entered in part, rather than refused entry in toto.).
In the instant case, the specification amendments direct the Office to replace paragraphs 0045, 0050, 0053, 0057, 0058, and 0061 but these paragraphs do not exist. Please note that the last paragraph number in the Specification filed 10/28/2022 is [0044]. The specification amendment directing the substitution at Paragraph 0015 regarding the “20” reference number depicted in Figure 2 is clear.
Thus, all the proposed amendments, except for that articulated to occur at [0015], are not acceptable to be entered. Appropriate correction is required.
The disclosure is objected to because of the following informalities: the word ‘formulation’ is misspelled in the table presented at Paragraph 0033. Additionally, at Paragraph 0034, Formulation 2a appears to include “Al302” which is an incorrect formula and also uses a zero in place of “O” (for the chemical element oxygen).
The use(s) of the terms Velcro, Inland, Super-HDT, and/or Sartomer, which is/are a trade name or a mark used in commerce, has been noted in this application. The terms should be accompanied by the generic terminology; furthermore the term should be capitalized wherever it appears or, where appropriate, include a proper symbol indicating use in commerce such as ™, SM , or ® following the term.
Although the use of trade names and marks used in commerce (i.e., trademarks, service marks, certification marks, and collective marks) are permissible in patent applications, the proprietary nature of the marks should be respected and every effort made to prevent their use in any manner which might adversely affect their validity as commercial marks.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1, 2, 5-12, and 18-21 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the best mode contemplated by the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s) has not been disclosed.
The best mode requirement is a safeguard against the desire on the part of some people to obtain patent protection without making a full disclosure as required by the statute. The requirement does not permit inventors to disclose only what they know to be their second-best embodiment, while retaining the best for themselves. In re Nelson, 280 F.2d 172, 126 USPQ 242 (CCPA 1960).
Where an inventor knows of a specific material or method that will make possible the successful reproduction of the claimed invention, but does not disclose it, the best mode requirement has not been satisfied. Union Carbide Corp. v. Borg-Warner, 550 F.2d 355, 193 USPQ 1 (6th Cir. 1977).
A screenshot of Example 1 from Applicant’s specification is provided below:
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From MPEP 2165.03.II.:
According to the approach used by the court in Chemcast Corp. v. Arco Indus., 913. F.2d 923, 16 USPQ2d 1033 (Fed. Cir. 1990), a proper best mode analysis has two components:
Determine whether, at the time the application was filed, the inventor knew of a mode of practicing the claimed invention that the inventor considered to be better than any other.
Compare what was known in (A) with what was disclosed- is the disclosure adequate to enable one skilled in the art to practice the best mode?
Evidence and Analysis:
Considering the first component (A), Example 1 of Applicant’s specification 1) was present on the day the application was filed and 2) the statement “…the most promising was a special formulation made for us…” indicates that the inventor considered the special formulation resin mode to be better than any other mode.
Thus, the evidence demonstrates that the inventor knew of a mode of practicing the claimed invention that the inventor considered to be better than any other at the time the application was filed.
As the facts satisfy the first component, the analysis proceeds to the second component.
Considering second component (B), a review of the specification does not yield any further description of the PRO14143 resin beyond the generic disclosure of ‘photo-initiated acrylate liquid resin cure with 405 nm UV light’.
A review of the instant disclosure does not support a determination that the written description disclosed the best mode such that a person skilled in the art could practice it (MPEP 2165) because there are no details as to the composition of the PRO14143 resin that would enable the person of ordinary skill in the art to practice the invention with the PRO 14143 resin. To make the record clear, there is no disclosure of the photo-initiator used nor any of the other components or additives that are in the PRO14143 resin.
Furthermore, a search for further information of the PRO14143 resin did not provide any results.
Thus, there is sufficient basis to believe that the PRO14143 resin is not a well-known resin that would be within the public domain such that the person of ordinary skill in the art could practice the claimed invention with PRO14143 resin.
Conclusion:
As the first component inquiry (A) is answered in the affirmative and the second component inquiry (B) is answered in the negative with reasons to support the conclusion that the specification is nonenabling with respect to the best mode, the claims are rejected for lack of best mode.
Again, where an inventor knows of a specific material or method that will make possible the successful reproduction of the claimed invention, but does not disclose it, the best mode requirement has not been satisfied. Union Carbide Corp. v. Borg-Warner, 550 F.2d 355, 193 USPQ 1 (6th Cir. 1977).
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1, 2, 5-12 and 18-21 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.
Claims 1 and 18 utilize the phrase “effective amount”. MPEP 2173.05(c).III. describes that the proper test is whether or not one skilled in the art could determine the specific values for the amount based on the disclosure. In the instant case, the specification does not provide specific values or context such that those skilled in the art would be able to determine from the written description what an ‘effective amount’ is.
Notably, Paragraphs 0037 and 0039 of the specification describes the effective amount of liquid resin but not the effective amount of the abrasive material. There are limited examples as shown in the Table at Paragraph 0033 where 30 ctss. of diamond and 50 grams of ‘secondary abrasives’ are used in each of the three provided formulation examples
Thus, the metes and bounds of the claim are indefinite because it is unclear what the effective amount of the abrasive material would be as there is no disclosure in the specification as to what amount an ‘effective amount’ of abrasive material would be, there is no sufficient context to explain what function is to be achieved, and more than one effect can be implied from the specification or the relevant art (MPEP 2173.05(c)(III)). For example, ‘an effective amount’ of abrasive material could be that determined to achieve long life-time of the tool but with less abradant removal rates. Conversely, ‘an effective amount’ of abrasive material could be that determined to achieve aggressive removal rates but shortened life-time. Additionally, ‘an effective amount’ could be that determined to impart sufficient abrasive performance for a particular workpiece and/or surface.
Claim 1 is indefinite because the distinction between ‘abrasive material’ and ‘secondary fillers’ is unclear. Notably, there are repeated materials in the ‘abrasive material’ as well as the ‘secondary filler’, i.e. silicon carbides and aluminum oxides including corundums such that the metes and bounds of the claim are unclear.
Claim 6 depends from claim 1 and it remains unclear if and/or when the printable UV curable polymer mixture must be in a powdered form. Specifically, is the printable UV curable polymer mixture supposed to be a powder before mixing with the abrasive material and must it remain in a powdered form during the build process? Or, is the printable UV curable polymer mixture initially provided as a powdered material but then can be dispersed into a solution along with the abrasive material and then begin the build? Or, is the printable UV curable polymer mixture provided as a powder but then temporarily bound into a green body but requires a further densification or consolidation step to produce a final article? In the interest of advancing prosecution and treating the claims under the BRI, Examiner has interpreted this claim such that the printable UV curable polymer material need only be capable of being in a powdered form.
Any claim not expressly discussed in this section is rejected due to that claim’s dependency upon rejected base claims 1 and/or 18.
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 text of those sections of Title 35, U.S. Code and Graham v. Deere factual inquiries not included in this action can be found in the prior Office action.
Claims 1, 2, 5, 6, 8-11, 18, and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Tanaka and Okushima “Development of Grinding Wheels by Stereolithography and Investigation of its Characteristics” (2003) in view of Gagne (U.S. 5,243,790).
Regarding claim 1, Tanaka and Okushima (hereinafter “Tanaka”) teaches a process for manufacturing resin-bonded grinding wheels by means of stereolithography using a photohardenable resin and white fused alumina, i.e. WA (Abstract).
Specifically, Tanaka teaches that the process includes a stereolithography apparatus, i.e., SLA (meeting claimed step of providing a UV cure three-dimensional printer; Abstract and Experimental Stereolithography Apparatus Section where the light source is expressly described to be a high-power ultraviolet laser and that the 1A1-type grinding wheel is fabricated by successively piling of the ring-shaped layer of the resin/grain mixture cured by ultraviolet light), a mixture of resin and grain mixture in a tank (meeting claimed step of mixing an effective amount of an abrasive material with a printable UV curable polymer mixture which is used by the printer), and successively piling the ring-shaped layer of the resin/grain mixture cured by UV light (meeting claimed step of printing a three-dimensional abrasive article).
Additionally, Tanaka further teaches that the abrasive grain is white-fused alumina (WA) (see second to last line of page 278) which is also known in the art as ‘white corundum’ and thereby meets the claimed feature of ‘corundum’.
Tanaka is silent to a combination of abrasive grain materials such that secondary fillers are included and that the printing occurs directly onto a mesh reinforcement or backing of a hook and loop fastener forming an attachment backing operably adapted to fasten to a polishing tool.
As to the first difference, Tanaka does teach a comparative grinding wheel that uses synthetic diamond.
It would be obvious to combine both synthetic diamond abrasive and white-fused alumina abrasive to create a grinding wheel because both materials are recognized and well-known as abrasives.
It has been held that it is prima facie obvious to combine two compositions 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.... [T]he idea of combining them flows logically from their having been individually taught in the prior art." In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980).
As to the second difference, the teachings of Gagne are relied upon as follows.
Gagne teaches an abrasive member (Title) particularly an abrasive disc (Figures 2 and 3 screenshots below; Col. 5 lines 21-67 description of Figures 2 and 3):
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where the abrasive disc can be “releasably attached to the wheel 78 of a hand-held, electrically or pneumatically powered tool (not shown) by means of hook and loop fasteners available under the trade mark VELCRO. To this end, the disc 50 is provided with a backing 80 of loop fasteners adhesively bonded to the base 52 by means of an adhesive film 82 and the wheel 78 is provided with a backing 84 of hook fasteners adhesively bonded thereto by means of an adhesive film 86. Such an arrangement permits fast disc changes” (Col. 5 lines 55-64).
It would be obvious to the person having ordinary skill in the art before the effective filing date of the claimed invention to use the conventional hook and loop fasteners as the releasable attachments, as taught by Gagne, with the 3D printed abrasive wheel of Tanaka. The ordinarily skilled artisan would understand the current state of the art where additive manufacturing, such as 3D printing, is popular and well-known. The modification of Tanaka’s 3D printed abrasive wheel such that the build occurs directly on a backing containing the hook and loop fasteners, instead of affixing it with an adhesive backing and/or printing directing onto the adhesive backing, is prima facie obvious.
Additionally, and referring back to first difference, Gagne teaches that the abrasive materials include diamond fragments, silicon carbide, boron carbide and aluminum oxide (Col. 6 lines 9-12) such that the obviousness of combining these material(s), for an abrasive tool is prima facie obvious.
Again, it would be obvious to combine both synthetic diamond abrasive and white-fused alumina (i.e. aluminum oxide) abrasive to create a grinding wheel because both materials are recognized and well-known as abrasives. It has been held that it is prima facie obvious to combine two compositions 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.... [T]he idea of combining them flows logically from their having been individually taught in the prior art." In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980).
Regarding claim 2, Tanaka and Gagne teach the method as applied to claim 1 above and Tanaka further teaches that the printer is an SLA apparatus (Abstract, Figures 3 and 4).
Regarding claim 5, Tanaka and Gagne teach the method as applied to claim 1 above and Tanaka further teaches that the 3D printer is a UV curable liquid resin type printer because Tanaka teaches that the apparatus for printing the grinding wheel by successively piling ring-shaped layers of the resin/grain mixture is a stereolithographic apparatus using a UV light and photohardenable resin (Abstract, Figures 3 and 4).
Regarding claim 6, Tanaka and Gagne teach the method as applied to claim 1 above but Tanaka is silent to the resin material (i.e. the printable polymer material) being a powdered material.
However, it would be an obvious modification for the photohardenable resin to be in the form of a powder absent evidence to the contrary. The structural composition of the polymer would remain the same whether it was in a powdered form or a liquid form and powdered form is generally recognized as being easier to transport and/or store.
Regarding claim 8, Tanaka and Gagne teach the method as applied to claim 1 above and Tanaka further teaches that the process produces a layer (meeting claimed ‘mono layer’) of abrasive grain and resin mixture that is deposited on a substrate (Figures 3 and 4). To make the record clear, the depositing of the first ring-shaped layer of the resin/grain mixture would meet the BRI of a ‘mono layer’ and anything the layer is placed on, like a build stage or platform, would meet the BRI of substrate. Alternatively, the application of any n+1 layer onto the n layer in a successive manner would meet the BRI of a mono layer being deposited on a substrate (i.e. n layer is the substrate and n+1 layer is the ‘mono layer’) because the substrate is not defined or otherwise required to be a particular material or even a material that is different from the resin/grain mixture material.
Regarding claim 9, Tanaka and Gagne teach the method as applied to claim 1 above and Tanaka further teaches that a multi abrasive layer abrasive article is printed (Abstract, Figure 5, Results of Fabrication Section). To make the record clear, Figure 5 shows images of the build platform with the successively piled (i.e. printed) layers of the abrasive and resin mixture as well as the appearance of the RP wheel). The successively piled, i.e. printed, layers of the abrasive and resin mixture yield a ‘multi abrasive layer abrasive article’ that has been printed.
Regarding claim 10, Tanaka and Gagne teach the method as applied to claim 1 above and Tanaka further teaches that a base support structure is printed over to form an abrasive article to provide support and/or attachment options for the article (Abstract, Figure 3, 4, and 5). Specifically, the successive piling of the layers onto a predecessor layer, wherein the platform or the predecessor layer meets the BRI of ‘base support structure’, would meet the claimed feature as shown in the above portions of Tanaka.
Alternatively, the successive piling of the layers around the central hub, rim, and/or core would meet the BRI of printing over the base support structure, i.e. the central hub, rim, and/or core, to provide support and/or attachment options for the article because the formation of the layers over the surface of the central hub, rim, and/or core would read on ‘printing over the base support structure’ and the central hub, rim, and/or core would provide support and/or attachment options for the abrasive article, i.e. the hole in the central hub, rim, and/or core would facilitate the abrasive articles attachment to a spindle, chuck, lathe, arbor, or other tooling to effectuate a grinding operation when applied to a surface. Figure 5 depicts the central hub, rim, and/or core.
Regarding claim 11, Tanaka and Gagne teach the method as applied to claim 1 above and Tanaka further teaches that the abrasive article includes a central hub, rim, and/or core (Figure 5) which meets the BRI of ‘reinforcing attachment mandrel’ because the abrasive article is printed around the central hub, rim, and/or core.
Regarding claim 18, Tanaka teaches a process for manufacturing resin-bonded grinding wheels by means of stereolithography using a photohardenable resin and white fused alumina, i.e. WA (Abstract).
Specifically, Tanaka teaches that the process includes a stereolithography apparatus, i.e., SLA (meeting claimed step of providing a stereolithographic printing machine; Abstract and Experimental Stereolithography Apparatus Section where the light source is expressly described to be a high-power ultraviolet laser and that the 1A1-type grinding wheel is fabricated by successively piling of the ring-shaped layer of the resin/grain mixture cured by ultraviolet light), a mixture of resin and grain mixture in a tank (meeting claimed step of mixing an effective amount of an abrasive material with a curable material which is used by the printer), and successively piling the ring-shaped layer of the resin/grain mixture cured by UV light (meeting claimed step of printing a three-dimensional abrasive article from the mixture of abrasive material and curable material).
However, Tanaka is silent that the printing occurs directly onto a mesh reinforcement or backing of a hook and loop fastener forming an attachment backing operably adapted to fasten to a polishing tool and further built up to a predetermined thickness beyond a thickness of the attachment backing.
Gagne teaches an abrasive member (Title) particularly an abrasive disc (Figures 2 and 3 screenshots below; Col. 5 lines 21-67 description of Figures 2 and 3):
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where the abrasive disc can be “releasably attached to the wheel 78 of a hand-held, electrically or pneumatically powered tool (not shown) by means of hook and loop fasteners available under the trade mark VELCRO. To this end, the disc 50 is provided with a backing 80 of loop fasteners adhesively bonded to the base 52 by means of an adhesive film 82 and the wheel 78 is provided with a backing 84 of hook fasteners adhesively bonded thereto by means of an adhesive film 86. Such an arrangement permits fast disc changes” (Col. 5 lines 55-64).
It would be obvious to the person having ordinary skill in the art before the effective filing date of the claimed invention to use the conventional hook and loop fasteners as the releasable attachments, as taught by Gagne, with the 3D printed abrasive wheel of Tanaka. The ordinarily skilled artisan would understand the current state of the art where additive manufacturing, such as 3D printing, is popular and well-shared. The modification of Tanaka’s 3D printed abrasive wheel such that the build occurs directly on a backing containing the hook and loop fasteners, instead of affixing it to an adhesive backing, is prima facie obvious.
Furthermore, the person of ordinary skill in the art would readily be able to determine the suitable thickness of the built up layers such that it would be an obvious selection such that the layer is built up to a predetermined thickness beyond a thickness of the attachment backing.
It has been held that ‘where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.’ In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Regarding claim 19, Tanaka and Gagne teach the method as applied to claim 18 above and Tanaka further teaches that a photohardenable resin and ultraviolet light is used (Abstract, Experimental Stereolithography Apparatus Section; meeting claimed ‘wherein a UV curable material is used’).
Claims 7 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Tanaka and Gagne as applied to claim 1 above, and further in view of Deja et al. “Applications of Additively Manufactured Tools in Abrasive Machining – A literature review”.
Regarding claim 7, Tanaka and Gagne teach the method as applied to claim 1 above but are silent to a step of ‘intermediate cold press or densification process before the final heating or sintering curing step’.
Deja et al. (hereinafter “Deja”) teaches that mechanical finishing, concentrated on mechanical cutting or pressing, is used as a post-processing method for additively manufactured products to achieve certain quality values such as appearance and adhesion (Page 7 of 22).
The person of ordinary skill in the art before the effective filing date of the claimed invention would find it obvious to include a pressing step to ensure sufficient adhesion between the successively piled layers forming the abrasive wheel.
Further Deja teaches that sintering is used to fabricate grinding wheels with a desirable distribution of abrasive grits (Page 4 of 22).
It would be obvious to subject the printed abrasive wheel of Tanaka and Gagne to a further pressing step before a sintering step so as to achieve a sufficient adhesion between the successively piled layers as well as desirable distribution of abrasive grits within the abrasive wheel as taught by Deja.
Regarding claim 12, Tanaka and Gagne teach the method as applied to claim 1 above but are silent to a step of sintering the printed abrasive structure into a final structure.
Deja teaches that sintering is used to fabricate grinding wheels with a desirable distribution of abrasive grits (Page 4 of 22).
It would be obvious to subject the printed abrasive wheel of Tanaka and Gagne to a further sintering step so as to achieve a desirable distribution of abrasive grits within the abrasive wheel as taught by Deja.
Claims 20 and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Tanaka and Gagne as applied to claim 18 above, and further in view of Halloran et al. (U.S. 6,117,612).
Regarding claim 20, Tanaka and Gagne teach the method as applied to claim 18 above but are silent to the use of a volatile binder and a second permanent binder.
Halloran et al. (hereinafter “Halloran”) is directed to stereolithography resin for rapid prototyping of ceramics and metals where photocurable ceramic resins are suitable for multi-layer fabrication of green ceramic parts by stereolithography and exhibit low shrinkage upon firing or sintering.
Specifically, Halloran teaches various components of the photocurable liquid (Col. 5 to Col. 6 as well as the Examples) that includes various monomers, photoinitiators, and can be in an aqueous solvent system. Further, these photocurable liquids may include dispersants.
Halloran prefers aqueous solutions due to their “low viscosity and greater freedom from volatile organic compound emissions (Col. 6 lines 1-3).
Thus, it would be obvious to use a water-based photocurable liquid such as those disclosed by Halloran because they have low viscosity and limited volatile organic emissions.
The selection of such a well-known system would thereby yield a volatile binder, i.e., water, and a second permanent binder, i.e. the photocurable monomeric system that would be hardenable by heat.
Regarding claim 21, Tanaka, Gagne, and Halloran teach the method as applied to claim 20 above and the photocurable liquid with the water removed would be a permanent binder that is a polymeric binder material.
Response to Arguments
Applicant's arguments filed 01/20/2026 have been fully considered but they are not persuasive.
Applicant argues that one skilled in the art when trying to practice the present invention could take the PRO14143 information to one of the known locations of Sartomer Div of Arkema, Inc. and have them provide their formulated PRO 14143 resin for use in a printer (Page 2 of Remarks at second to last paragraph). This is not sufficient to satisfy the best mode requirement and could potentially raise questions as to the inventorship of the instant application. Again, it has been held that “where an inventor knows of a specific material or method that will make possible the successful reproduction of the claimed invention, but does not disclose it, the best mode requirement has not been satisfied. Union Carbide Corp. v. Borg-Warner, 550 F.2d 355, 193 USPQ 1 (6th Cir. 1977)(emphasis respectfully added for clarity). Applicant appears to argue that ‘because a person could go to Sartomer and ask for PRO14143’ the best mode has been met but this not availing because the specific material or method, i.e., PRO 14143 resin, has not, in fact, been disclosed. It is not possible for Applicant to meet the quid pro quo for patent protection by failing to disclose the identity of the resin that Applicant identifies as ‘most promising’. As noted previously, Examiner tried to find any information at all regarding the identity of the PRO 14143 resin and could find nothing. How does the public benefit from Applicant’s disclosure where the ‘most promising’ formulation has not been disclosed?
Examiner notes Applicant’s statement at Page 3 that the named inventor “is not improperly hiding information he is stating all that he knows about that particular resin”. Examiner cannot comment on the inventor’s intentions but respectfully maintains that the specification is deficient because it does not “contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention” (35 U.S.C. 112(a)). Again, failure to disclose the specific material of the PRO 14143 resin renders the application deficient under 112a.
As to Applicant’s arguments that a person of ordinary skill in the art could find the information of the PRO 14143 resin “or its equivalent” (top of Page 4 of the Remarks) because of the supplier and trade name, this does not resolve the issue of why the information has not been provided to the public by way of this application and Examiner respectfully insists that no information could be found regarding this resin. Thus, it is not ‘well-known’ as alleged by Applicant and the evidence of record is insufficient to establish it as such.
Applicant’s arguments to defeat the 112a best mode rejection by pointing to the photoinitiator of Tanaka are unavailing (see top of Page 4 of Remarks). Notably, Applicant hasn’t claimed the PRO 14143 resin and so no prior art has been applied to that effect. Put another way, Applicant’s argument that the generic recitation of a photoinitiator from Tanaka makes Applicant’s lack of disclosure of the details of the PRO 14143 resin permissible is unpersuasive.
Applicant’s argument that the “Sartomer Div of Arkema, Inc is readily found on an internet search and has the web address www.sartomer.arkema.com and physical address such as 1995 Highland Drive, Ann Arbor Mi. 48108” does nothing to cure the deficiencies in the specification and so the argument is unpersuasive.
Additionally, it is noted for the clarity of the record, that this response provided no further information or evidence regarding the identity of the PRO 14143 resin, such as a spec sheet, order form, email correspondence, etc.
With regard to the arguments directed to the prior art rejections, the perceived deficiencies of Tanaka in meeting the limitations of the amended claims are believed to be overcome by Gagne as further relied upon.
Lastly, it is noted that the signature at Page 10 of the Remarks includes “Harness, Dickey, and Pierce, P.L.C. but the instant customer number does not appear to match. Notably, the customer number in the POA filed 10/28/2022 is 30853 which appears to be WARN PARTNERS, P.C.
Conclusion
As previously indicated but reproduced again in the interest of the clarity of the record, the prior art made of record and not relied upon is considered pertinent to applicant's disclosure: Cramer et al. (U.S. 5,109,589) directed to a process for making a metal prototype part where a first mandrel is manufactured and stereolithographic techniques are preferred for making the mandrels out of polymeric materials
Applicant's amendment necessitated any 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALEXANDRA M MOORE whose telephone number is (571)272-8502. The examiner can normally be reached M-F 8am-5pm, EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sally Merkling can be reached at 571-272-6297. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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ALEXANDRA M MOORE
Primary Examiner
Art Unit 1738
/ALEXANDRA M MOORE/Primary Examiner, Art Unit 1738