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
Applicant’s election without traverse of Group I, claims 1-12 and 20-27, in the reply filed on 12 December 2025 is acknowledged.
Claims 13-19 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 12 December 2025.
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) 1-12 and 20-27 is/are rejected under 35 U.S.C. 103 as being unpatentable over Fong et al. (US Serial No. 2010/0327493)
Regarding claims 1-6, 20-23; Fong et al. teaches a dual photoinitiator, photocurable composition comprising a cationic photoinitiator [0025] (instant C), a free radical photoinitiator [0063] (instant R), a cationically curable component [0080], such as preferably Uvacure® 1500 (3,4-epoxycyclohexylmethyl-3’,4’-epoxycyclohexanecarboxylate) [0084, Exs] (instant D), a radically curable component [0107], which may be a mixture of a monofunctional (meth)acrylate, such as acrylamide [0112] (instant M) and a polyfunctional (meth)acrylate, such as tricyclodecandimethanol diacrylate [Exs] (instant N) [0110-0116].
Looking to the examples of Fong et al. for general guidance, Fong et al. teaches a preferred embodiment [Ex35] comprising 14 parts SR833s (tricyclodecandimethanol diacrylate) and 17 parts SR499 (trifunctional acrylate), which is substituted by acrylamide [0110-0114]. Fong et al. teaches the composition further comprises 44.4 parts Epalloy® 5000 and Erisys® GE30 [Ex35], which is substituted by UV 1500 [0213, 0084-0085]. Thus, Fong et al. teaches the mol% of acyloyl groups provided by compound (N) is about 28 mol%, the molar ratio of contained acryloyl groups to contained epoxy groups (D) is 0.94, and the composition has 3.3 mol/kg acryloyl groups (as calculated by Examiner).
SR833s (14g / (304.38g/mol)) * 2 = 0.09
Compound
Amount (g)
MW (g/mol)
Mol
#mols
Mol of functionality
SR833s (N)
14
304.38
0.05
2
0.09
acrylamide (M)
17
71.08
0.24
1
0.24
UV1500 (D)
44.4
252.31
0.18
2
0.35
Acryloyl total mols
0.33
Epoxy total mols
0.35
mol% (N)
27.78
Molar ratio (acryloyl/epoxy)
0.94
Mol of acyloyl functionality (for 1 kg)
3.3
Fong et al. teaches in general the radically curable component is present in an amount of preferably 15-60% by weight [0134] and mixtures of monofunctional monomers containing one ethylenically unsaturated bond in one compound and polyfunctional monomers containing two or more unsaturated bonds in one compound [0110].
Fong et al. teaches all of the above required components, however fails to explicitly disclose each in a preferred embodiment. A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art, including the non-preferred embodiments. See Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.); MPEP §2123. Fong et al. does not specifically disclose an embodiment containing compounds (M), (N), (R), (C), and (D) in amounts that explicitly yield 25-50 mol% of acryloyl groups are from (N), a molar ratio of acryloyl groups to epoxy groups is 0.3-1.5, and the composition having 1-4.5 mol/kg acryloyl groups. However, at the time of invention a person of ordinary skill in the art would have found it obvious to prepare a composition containing compounds (M), (N), (R), (C), and (D) in amounts that explicitly yield 25-50 mol% of acryloyl groups are from (N), a molar ratio of acryloyl groups to epoxy groups is 0.3-1.5, and the composition having 1-4.5 mol/kg acryloyl groups based on the invention of Fong et al., and would have been motivated to do so since Fong et al. suggests that the composition can contain 15-60% by weight [0134] and mixtures of monofunctional monomers containing one ethylenically unsaturated bond in one compound and polyfunctional monomers containing two or more unsaturated bonds in one compound [0110] and the cationically curable component in an amount of 20-80 wt% [0083]. Additionally, “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) (citations omitted) [see MPEP 2144.06].
Fong et al. teaches the composition is suitable for use in three-dimensional jet printing processes [0190, 0192].
Regarding claims 7 and 24; Fong et al. teaches the radical photoinitiator may be 2,4,6-trimethylbenzoy-diphenylphosphine oxide [0064].
Regarding claim 8, 11, 25, and 27; Fong et al. teaches the cationic photoinitiator may be a hexafluoroantimonate salt (blocked super acid; capable of functioning as a latent curing agent).
Regarding claims 9 and 26; Fong et al. teaches the composition may optionally comprise 0-40 wt% toughening agents [0138-0139] and other optional components [0161]. In the instance the present composition contains no optional components, compounds (M), (N), (R), (C), and (D) would make up 100 wt.%.
Regarding claim 10; Fong et al. fails to explicitly teach the composition having a viscosity of 10-40 mPa·s at 45°C. 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. viscosity of 10-40 mPa·s at 45°C, 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 12; Fong et al. teaches the composition may further comprise additives such as stabilizers and/or pigments [0162].
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