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 .
Claims 1-21 are pending as amended on January 29, 2026. Support for amended claim 1 is found in original claim 1. Claims 2 and 8-20 stand withdrawn from consideration.
The new grounds of rejection set forth below were necessitated by Applicant’s amendment to claim 3. Therefore, this action is properly made final.
Any objections and/or rejections made in the previous Office action and not repeated below are hereby withdrawn. The text of those sections of Title 35, U.S. Code not included in the action can be found in a prior Office action.
Claim Objections
Claim 1 is objected to because of the following informalities:
In claim 1, lines 3-4, the limitation “a solubilizing polymer, or a natural terpenoid” should read “a solubilizing polymer or a natural terpenoid” without a comma.
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.
Claim 3 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Amended claim 3 recites the limitation “where m is between 0 and 1,000” in the 4th to last line of page 5. Applicant points to paragraph [00168] and [00200] of the specification for support. Paragraph [00168] discloses “m is between 1 and 1000.” Paragraph [00200] discloses the chemical structures below.
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The examiner respectfully disagrees that these sections of the specification support amended claim 3 because these sections do not demonstrate possession of the concept of a solubilizing compound according to the structure recited in claim 3 where m=0. Paragraph [00168] discloses m is between 1 and 1,000 for the structure in [00167] (also in claim 3). The structures pointed to for support in paragraph [00200] are derived from different monomers than those of [00167] and do not result in a structure according to the formula
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where m=0. In particular, the compounds in [00200] correspond to both A substituents are H and 1 B substituent is H, but [00167] and claim 3 do not disclose that A or B can be H. Because the cited sections of the specification do not support m=0 for the chemical structure shown in claim 3, the written description requirement of 35 USC 112(a) has not been complied with.
Claims 3 and 6 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.
Claim 3 has been amended to define X, n, and m and correct the Markush groups; however, claim 3 remains indefinite because it is unclear how the A and B functional groups are connected to the solubilizing polymer and the description of X is indefinite.
The solubilizing polymer has the following structure:
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where A is defined as a functional group selected from a group consisting of the functional groups shown below. Claim 3 is unclear as to how such functional groups are connected to the overall solubilizing polymer structure.
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Similarly, B is defined as a functional group selected from a group of the functional groups shown below, but claim 3 is unclear as to how such functional groups are connected to the overall solubilizing polymer structure.
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The specification states that “a ring-opened polyester copolymer may comprise a product of a reaction between a cyclic anhydride and an epoxide” ([00138]) and the example polymers shown, such as those in the figure in [00192], are the product of anhydride and epoxide monomers rather than having anhydrides and epoxides as substituents. For the purposes of examination, the chemical structures of the claimed A and B functional groups are interpreted as corresponding to the monomers that are co-polymerized to produce the “n” repeat units, rather than as A and B substituents. This interpretation is reasonable because the specification demonstrates that the polymers are derived from anhydride and epoxide monomers and claim 3 does not describe how the claimed A and B groups connect to the polymer backbone.
Claim 3 has been amended to recite “X represents a commodity of common polymers such as, but not necessarily limited to, a polymer selected from a group consisting of polyesters.” The phrase "such as, but not necessarily limited to" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d). It is also unclear why X is drawn as a repeat unit, but referred to as a polymer and what is meant by a “commodity of common polymers.” It is suggested that Applicant may have meant a “commodity or common polymer” as recited in specification [00168].
Claim 6 contains the limitation “the solubilizing crosslinker.” There is insufficient antecedent basis for this limitation in the claim. Claim 6 depends from claim 1 but claim 1 no longer recites a solubilizing crosslinker.
Claim Rejections - 35 USC § 102
Claim 1 stands rejected under 35 U.S.C. 102(a)(1) as being anticipated by Yepez (US 2019/0127613 A1, cite No. 1 on 10/25/2025 IDS), as set forth in the 8/29/2025 Office action.
Claim 1 stands rejected under 35 U.S.C. 102(a)(1) as being anticipated by Farrugia (US 2017/0295795 A1), as set forth in the 8/29/2025 Office action.
Claim Rejections - 35 USC § 103
Claims 3 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over Farrugia (US 2017/0295795 A1), as applied to claim 1 above.
Farrugia teaches the 3D printable resin of claim 1. Farrugia further teaches that the linear polyesters are prepared by the polycondensation of an organic diol, a diacid or diester, and a sulfonated difunctional monomer is included in the reaction (Farrugia, [0029]). The diacid or diesters taught by Farrugia include glutaric acid, glutaric anhydride, adipic acid, pimelic acid, suberic acid, azelic acid, and dodecanediacid (Farrugia, [0030]). The diols include cyclohexanediol (Farrugia, [0030]).
One of ordinary skill would recognize that a repeating unit derived from glutaric acid, glutaric anhydride, adipic acid, pimelic acid, suberic acid, azelic acid, or dodecanediacid reacted with cyclohexane diol corresponds to the “n” repeat unit of the solubilizing polymer structure of claim 3 where the “a” monomer is
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with R being an alkyl group and the “b” monomer is
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. It is noted that while claim 3 is interpreted as claiming an “n” repeat unit derived from dianhydride and epoxide monomers (see rejection under 35 USC 112(b) above) and claim 6 claims that the solubilizing polymer is formed via a ring opening copolymerization process, case law holds 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).
To the extent that the process limitations in a product-by-process claim do not carry weight absent a showing of criticality, the reference discloses the claimed product in the sense that the prior art product structure is seen to be no different from that indicated by the claims. The prior art teaches the same product as the instant claims, regardless of the process by which the prior art product has been produced. The burden is shifted to Applicant to provide factually supported evidence which demonstrates the contrary.
Both the diacid or diester and the diol monomers can be from 45 to 52 mole percent of the polyester resin (Farrugia, [0030]) while the sulfonated difunctional monomer is included in an amount of from about 0.1 to about 2 weight percent of the resin (Farrugia, [0031]). The sulfonated difunctional monomer can be a diacid or a diol (Farrugia, [0031]). Because Farrugia teaches the same mole percent range of diol and diacid or diester monomers, one of ordinary skill would immediately envisage an approximately 1:1 diacid to diol ratio, resulting in a polyester with one carboxylic acid end group and one hydroxyl end group, as required by the claimed solubilizing polymer structure.
Because the sulfonated polyester comprises only about 0.1 to about 2 wt% of the sulfonated monomer, one would expect the majority of repeat units to be derived from the non-sulfonated diol and diacid components. The claimed structure requires only one “n” repeat unit at the carboxylic acid end of the polyester chain. Because the majority of repeat units are not sulfonated, the polyester of Farrugia be expected to have at least one repeat unit without a sulfonated monomer at the carboxylic acid end of the polyester chain, corresponding to “n” in the claimed solubilizing polymer structure. The remaining repeat units fall into the “n” block until, at the point where a sulfonated monomer is positioned, the “m” block where X is a polymer comprising the remaining repeat units begins. The “m” block is a polyester and therefore reads on a common or commodity polymer (see instant specification [00168]).
The subscript “m” is 1 because X is a polymer. With respect to the subscript “n”, Farrugia teaches a weight average molecular weight of 3,000 to 60,000 g/mol (Farrugia, [0028]). The minimum repeat unit molecular weight is about 246 g/mol (glutaric acid has a molecular weight of 132 and cyclohexane diol has a molecular weight of 116), so the maximum number of “n” repeat units is well below the upper limit of 1,000 (60000/246=243).
Claim 21 stands rejected under 35 U.S.C. 103 as being unpatentable over Farrugia (US 2017/0295795 A1) as applied to claim 1 above, as evidenced by Peacock and Calhoun (Polymer Chemistry Properties and Applications, Chapter 24. Polyesters, Hanser Gardner Publications, Inc., 2006, 353-364), as set forth in the 8/29/2025 Office action.
Claims 1, 4, and 7 stand rejected under 35 U.S.C. 103 as being unpatentable over Hearon (US 10,144,840 B2, cite No. 1 on 10/25/2022 IDS) in view of Farrugia (US 2017/0295795 A1), as set forth in the 8/29/2025 Office action.
Claims 3 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over Hearon (US 10,144,840 B2, cite No. 1 on 10/25/2022 IDS) in view of Farrugia (US 2017/0295795 A1).
Modified Hearon teaches the 3D printable resin of claim 1. Hearon was modified with the polyester containing composite powder of Farrugia.
Farrugia teaches that the linear polyesters are prepared by the polycondensation of an organic diol, a diacid or diester, and a sulfonated difunctional monomer is included in the reaction (Farrugia, [0029]). The diacid or diesters taught by Farrugia include glutaric acid, glutaric anhydride, adipic acid, pimelic acid, suberic acid, azelic acid, and dodecanediacid (Farrugia, [0030]). The diols include cyclohexanediol (Farrugia, [0030]).
One of ordinary skill would recognize that a repeating unit derived from glutaric acid, glutaric anhydride, adipic acid, pimelic acid, suberic acid, azelic acid, or dodecanediacid reacted with cyclohexane diol corresponds to the “n” repeat unit of the solubilizing polymer structure of claim 3 where the “a” monomer is
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with R being an alkyl group and the “b” monomer is
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. It is noted that while claim 3 is interpreted as claiming an “n” repeat unit derived from dianhydride and epoxide monomers (see rejection under 35 USC 112(b) above) and claim 6 claims that the solubilizing polymer is formed via a ring opening copolymerization process, case law holds 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).
To the extent that the process limitations in a product-by-process claim do not carry weight absent a showing of criticality, the reference discloses the claimed product in the sense that the prior art product structure is seen to be no different from that indicated by the claims. The prior art teaches the same product as the instant claims, regardless of the process by which the prior art product has been produced. The burden is shifted to Applicant to provide factually supported evidence which demonstrates the contrary.
Both the diacid or diester and the diol monomers can be from 45 to 52 mole percent of the polyester resin (Farrugia, [0030]) while the sulfonated difunctional monomer is included in an amount of from about 0.1 to about 2 weight percent of the resin (Farrugia, [0031]). The sulfonated difunctional monomer can be a diacid or a diol (Farrugia, [0031]). Because Farrugia teaches the same mole percent range of diol and diacid or diester monomers, one of ordinary skill would immediately envisage an approximately 1:1 diacid to diol ratio, resulting in a polyester with one carboxylic acid end group and one hydroxyl end group, as required by the claimed solubilizing polymer structure.
Because the sulfonated polyester comprises only about 0.1 to about 2 wt% of the sulfonated monomer, one would expect the majority of repeat units to be derived from the aliphatic diol and diacid components. The claimed structure requires only one “n” repeat unit at the carboxylic acid end of the polyester chain. Because the majority of repeat units are not sulfonated, the polyester of Farrugia be expected to have at least one repeat unit without a sulfonated monomer at the carboxylic acid end of the polyester chain, corresponding to “n” in the claimed solubilizing polymer structure. The remaining repeat units either fall into the “n” block until, at the point where a sulfonated monomer is positioned, the “m” block where X is a polymer comprising the remaining repeat units begins. The “m” block is a polyester and therefore reads on a common or commodity polymer (see instant specification [00168]).
The subscript “m” is 1 because X is a polymer. With respect to the subscript “n”, Farrugia teaches a weight average molecular weight of 3,000 to 60,000 g/mol (Farrugia, [0028]). The minimum repeat unit molecular weight is about 246 g/mol (glutaric acid has a molecular weight of 132 and cyclohexane diol has a molecular weight of 116), so the maximum number of “n” repeat units is well below the upper limit of 1,000 (60000/246=243).
Claim 5 stands rejected under 35 U.S.C. 103 as being unpatentable over Hearon (US 10,144,840 B2, cite No. 1 on 10/25/2022 IDS) in view of Farrugia (US 2017/0295795 A1) as applied to claim 1 above, and as evidenced by Christmas & Idacavage (Photopolymerization Fundamental Polymer Chemistry & Industrial Applications, Chapter 4. Raw Materials for Photopolymerization, DEStech Publications, Inc., 2023, 99-135), as set forth in the 8/29/2025 Office action.
Claim 21 stands rejected under 35 U.S.C. 103 as being unpatentable over Hearon (US 10,144,840 B2, cite No. 1 on 10/25/2022 IDS) in view of Farrugia (US 2017/0295795 A1) as applied to claim 1 above, and as evidenced by Peacock and Calhoun (Polymer Chemistry Properties and Applications, Chapter 24. Polyesters, Hanser Gardner Publications, Inc., 2006, 353-364), as set forth in the 8/29/2025 Office action.
Response to Arguments
Applicant’s arguments filed January 29, 2026 have been fully considered.
With respect to the rejection of claim 1 over Yepez (US 2019/0127613 A1) Applicant argues (page 11-12) that the present invention discloses that polystyrene is soluble in the solubilizing polymer, but the polysorbate of Yepez cannot be a solubilizing polymer because it does not solubilize any other component. This argument is not persuasive because the features upon which applicant relies (i.e., the polystyrene is soluble in the solubilizing polymer and the solubilizing polymer solubilizes a compound other than itself) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). A solubilizer is defined by the Merriam-Webster dictionary as “an agent that increases the solubility of a substance.” The claim does not require that any component be solubilized by or soluble in the solubilizing polymer and doesn’t place limits of the degree of solubility or the solubility conditions. Therefore, there is reasonable basis to conclude that polysorbate of Yepez reads on a solubilizing polymer.
With respect to the rejections over Farrugia (US 2017/0295795 A1) (page 12-15) and the rejections over Hearon (US 10,144,840 B2) in view of Farrugia (page 15-18), Applicant argues that the present application describes the solubilization of polystyrene into the polymer, but Farrugia does not mention the polyester being a solubilizer to any material, let alone a polystyrene. This argument is not persuasive because the feature upon which applicant relies (i.e., the solubilizing polymer solubilizes the polystyrene into it) is not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). The claim does not require that any component be solubilized by or soluble in the solubilizing polymer and doesn’t place limits of the degree of solubility or the solubility conditions. In addition, the polyester of Farrugia satisfies the chemical structure of the solubilizing polymer of claim 3. Therefore, there is reasonable basis to conclude that polyester of Farrugia reads on a solubilizing polymer.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AUDRA DESTEFANO whose telephone number is (703)756-1404. The examiner can normally be reached Monday-Friday 9-5.
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/AUDRA J DESTEFANO/Examiner, Art Unit 1766
/RANDY P GULAKOWSKI/Supervisory Patent Examiner, Art Unit 1766