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 .
Response to Amendment
The amendment filed 12/29/2025 has been entered. Claims 1-3 and 6-9 are pending. Claims 1, 5, and 8-9 are currently amended. Claims 10-14 have been added.
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 12-13 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 12-13 recite the limitation "composition" in line 2 of both claims. There is insufficient antecedent basis for this limitation in the claim. It is unclear which component is being referred.
Claim Rejections - 35 USC § 103
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
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.
Claims 1-3, 5-8, 10-11 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Noda (WO 2006/006402 A1, See machine translation for citation and Derwent Abstract) in view of Lu (WO 2016/141546 A1).
Regarding claim 1, Noda discloses an active energy ray-curable resin composition (an ultraviolet curable silicone composition) comprising a polysiloxane containing polyisocyanate type derivative (A) and compound (B) having 1 or more ethylenically unsaturated groups in one molecule. The polysiloxane containing compound (a1) having a hydroxyl group at one end represented by general formula (1) reacts with a polyisocyanate compound which results in a polysiloxane-containing polyisocyanate derivate (A) obtained by reacting a hydroxyl group-containing (meth)acrylate compound ([0012-0014, 0025] and Abstract).
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In general formula (1), R1 represents an alkyl group, for example methyl, ethyl, propyl, or butyl group (R1 of the instant claims). Each R2 independently represents an alkyl group such as methyl group, an ethyl group, propyl group, a butyl group, a cycloalkyl group or a phenyl group (R2, R3, R4, and R5 of the instant claims); R3 represents a hydrocarbon group or an organic group containing an oxygen atom (X of the instant claims); a is an integer of 1 or more (corresponds to n of the instant claims); b is preferably 1 to 2 (b being one meets the claimed limitations) [0017]. The composition includes a photopolymerization initiator [0059]. Polysiloxane containing polyisocyanate derivative (A1) was prepared using trimer of hexamethylene diisocyanate, polysiloxane compound (a1) wherein R3 = C3H6OC2H4 ; a = 80 and b= 1(X-Yp of the instant claims) [0072]. It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention a one-end polymerizabe organopolysiloxane using similar diisocyanate and similar properties would be expected. An obviousness rejection based on similarity in chemical structure and function entails the motivation of one skilled in the art to make a claimed compound in the expectation that compounds similar in structure will have similar properties. In re Payne, 606 F. 2d 303, 313, 203 USPQ 245, 254 (CCPA 979). See In re Papesch, 315.2d 381, 137 USPQ 43 (CCPA 1963) and In re Dillon, 919 F.2d 688, 16 USPQ2d 1897 (Fed. Cir. 1991). See MPEP 2144.09.
However, Noda does not disclose an organosiloxane represented by general formula (2). Lu teaches at least one di(meth)acryloxy terminated polyorganosiloxane represented by formula (3) (pages 7-8). Lu is concerned with radiation curable adhesive composition (page 1, Technical Field). Noda and Lu are analogous art concerned with the same field of endeavor, namely ultraviolet curable (meth)acrylate functional silicone compositions. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention add of at least one di(meth)acryloxy terminated polyorganosiloxane represented by formula (3) as per the teachings of Lu, and the motivation to do so would have been as Lu suggests excellent properties including hardness, shrinkage, stress absorbing, thermal stability, adhesion, and transmittance (page 2).
Regarding claim 2, R1 includes butyl as discussed above in claim 1.R2 (R2, R3, R4, and R5 of the instant claims) in general formula (1) includes methyl. R7 includes dimethylene [0024]. Z includes O with a (meth)acrylate when the hydroxyl group-containing (meth)acrylate compound is reacted.
Regarding claim 3, Noda discloses the polyisocyanate used to prepare the polysiloxane-containing polyisocyanate derivative [A] includes trimethylhexamethylene diisocyanate or isphorone diisocyanate [0020].
Regarding claim 5, Noda discloses a polysiloxane having two polyisocyanate functional groups [0044]. It would have been obvious to one of ordinary skill in the art before the effective filing date to add an additional polysiloxane-containing polyisocyanate derivative with two acrylate and polyisocyanate functional groups in respect to antifouling property, transparency, and scratch resistance [0044].
Regarding claim 6, Noda discloses (meth)acrylate-containing compound having no siloxane structure [0033-0037].
Regarding claim 7, Noda discloses the active energy ray-curable resin composition is cured by irradiating with an active energy ray [0066].
Regarding claim 8, Noda discloses inks [0090]. Pigments or dyes may be added to the composition [0062]. Although Noda does not disclose an ink-jet ink composition , this is an intended use, the recitation the ink-jet ink composition is not limiting because the body of the claim describes a complete invention and the language recited solely in the preamble does not provide any distinct definition of any of the claimed invention’s limitations. Thus, the preamble of the claim(s) is not considered a limitation and is of no significance to claim construction. See Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999). See MPEP § 2111.02. Furthermore, it would be expected that the composition is capable of being ejected via ink-jet ejection, absent objective evidence to the contrary.
Regarding claim 9, although Noda does not disclose the composition is suitable for use in a 3D printer, this is intended use. The recitation of the composition suitable for use in a 3D printer is not limiting because the body of the claim describes a complete invention and the language recited solely in the preamble and what is recited as a limitation of the claim does not provide any distinct definition of any of the claimed invention’s limitations.
Regarding claims 10-11, Lu teaches the amount of the component (a) (includes component (A) of the instant claims) is present in an amount from 40 to 85% by weight based on the total weight of all components (P10, 2nd paragraph). Lu further teaches the component (b) (which is component (C) of the instant claims) is present in an amount from 10 to 50% by weight based on the total weight of all components (P15, first full paragraph). Based on calculations, the amount of component (C) per 100 parts by mass of component (A) of the instant claims is about 11.7 to 125 which is within the claimed range.
Regarding claim 14, Noda does not disclose the dynamic viscosity of the composition at 25℃ is 5 to 300mm/s and the surface tension of the composition is 21 to 36 mN/m. The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, the reference(s) teaches all of the claimed ingredients, claimed amounts, and substantially similar process of making. According to the original specification, a guide for enabling ink-jet ejection, the dynamic viscosity is within the claimed range [0058]. Therefore, the claimed effects and physical properties, i.e. the dynamic viscosity would expectedly be achieved by a composition with all the claimed ingredients, claimed amounts, and substantially similar process of making. See MPEP § 2112.01. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients, claimed amounts, and substantially similar process of making.
Alternatively, Noda does not disclose the dynamic viscosity of the composition at 25℃ is 5 to 300mm/s. As the efficiency of using the ink is variable that can be modified by adjusting said dynamic viscosity, the precise dynamic viscosity would have been considered a result effective variable by one having ordinary skill in the art at the time the invention was made. Accordingly, one of ordinary skill in the art at the time the invention was made would have optimized, by routine experimentation, dynamic viscosity, and the motivation to do so would have been to obtain desired efficiency of using the ink, since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). See MPEP 2144.05.
Response to Arguments
Applicant's arguments filed 12/29/2025 have been fully considered but they are not persuasive. The following comment(s) apply:
Applicant’s argument that it is an object of the present invention to provide an ultraviolet curable silicone composition capable of being ejected via ink-jet ejection and turned into a cured product with a superior rubber property (page 7) is not persuasive. Claims 1-3 and 5-8 are drawn to an ultraviolet curable silicone composition. These claims are not drawn to an ultraviolet curable silicone composition capable of being ejected via ink-jet ejection. Regarding claim 8, the recitation the ink-jet ink composition is not limiting because the body of the claim describes a complete invention.
Applicant’s argument that comparing the present invention with Noda, the objectives are different, and therefore there is no motivation to arrive at the present invention from Noda (page 7) is not persuasive. In response to applicant's argument that the objectives per the teachings of Noda are different, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
Applicant’s argument that claims 8 and 9 are no longer directed to an intended use, but, rather, are directed to a composition that actually possess the recited properties (page 8) is not persuasive. In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., what the composition is used for is only recited not the product) 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). It is suggested to include amounts or properties that could not be achieved based on the teachings of the prior art.
It appears if the claims are drawn to the 3D printing composition and not intended use, the prosecution can advance.
Prior Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Gutacker (WO 2020/229330 A1) teaches a radiation or dual radiation/moisture curable composition based on (meth)acrylate and silane-terminated polyorganosiloxanes that can be used as 3D printing materials and provide isotropic and elastomeric properties.
Conclusion
THIS ACTION IS MADE FINAL. 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 NICOLE M. BUIE-HATCHER whose telephone number is (571)270-3879. The examiner can normally be reached M-F, 9:00 am - 6:00 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Srilakshmi K Kumar can be reached at (571)272-7769. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NICOLE M. BUIE-HATCHER/Supervisory Patent Examiner, Art Unit 1725
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