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 and 3-6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Park et al. (KR 2019-0044315), as cited on the IDS, wherein the machine English translation is used for citation, in view of Lee (US Serial No. 2014/0167300), as evidenced by Kokubo et al. (US Serial No. 2013/0082369) and Yanagase (US Patent No. 6936348).
Regarding claim 1; Park et al. teaches, in a preferred embodiment, a composition for artificial tooth formation, the composition comprising bisphenol A ethoxylated dimethacrylate, diurethane dimethacrylate, triethylene glycol, and bisphenol A glycerolate dimethacrylate (instant ultraviolet curable resin A) and 2.75 wt. % (as calculated by Examiner) of a rutile white pigment (instant inorganic pigment B; specific gravity 4.2) [0070-0071; Ex1-2]. Park et al. teaches the viscosity of the composition is 300 to 800 cps (mPa·s) at room temperature (25°C) using a Brookfield DV-III Rheometer RPM (shear rate: 25 / s) [0048].
Park et al. teaches the white pigment has an average particle diameter of 20 to 80 nm [0039-0040], however fails to teach a D50 ≤ 5 microns and D90 ≤ 20 microns. The experimental modification of this prior art in order to ascertain optimum operating conditions fails to render applicants’ claims patentable in the absence of unexpected results. See In re Aller, 105 USPQ 233; see MPEP §2144.05. At the time of filing, a person having ordinary skill in the art would have found it obvious to optimize the D50 and D90 (particle size) of the inorganic pigment, and would have been motivated to do so in order to achieve desired dispersibility in the composition, as well as desired transparency, as suggested by Park et al. [0040]. Furthermore a person of ordinary skill in the art would have found it obvious to optimize the particle size (D50 and D90), in order to have ease of printing (i.e. out of printing head) in three dimensional printing systems.
Park et al. teaches the composition of the present invention is suitable for use in a three dimensional printer (i.e. stereolithography) [0020]. However it is noted that “for stereolithography” is an intended use limitation. If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999). See also Rowe v. Dror, 112 F.3d 473, 478, 42 USPQ2d 1550, 1553 (Fed. Cir. 1997); see MPEP §2111.02.
Park et al. teaches a composition for artificial tooth formation [0002], the composition comprising bisphenol A ethoxylate dimethacrylate (EO2), however fails to teach the ethoxylated bisphenol A dimethacrylate of Formula (I). Lee teaches photocurable resin compositions, suitable for use in manufacturing artificial teeth by three dimensional printing, the compositions comprising bisphenol A dimethacrylates, such as SR348 (bisphenol A ethoxylate dimethacrylate (EO2)) and SR540 (bisphenol A ethoxylate dimethacrylate (EO4); see formula below, wherein a+b =4) [0028]. Therefore, Lee teaches that bisphenol A ethoxylate dimethacrylate (EO2) and bisphenol A ethoxylate dimethacrylate (EO4) are functional equivalents for the purpose of functioning as photocurable compounds suitable for producing artificial teeth via three dimensional printing. It is prima facie obvious to substitute art-recognized functional
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equivalents known for the same purpose (See MPEP § 2144.06).
SR540 of Lee reads on the instant Formula (I), wherein instant R1 is hydrogen and m+n = 4.
Kokubo et al. and Yanagase provide evidence that rutile-type titanium dioxide has a specific gravity of 4.2 [Kokubo et al. 0367, 0380, 0381, 0382; Yanagase col1, line24-29].
Regarding claim 3; Park et al. teaches the preferred embodiment further comprises phenyl bis (2,4,6-triemthylbenzoyl) phosphine oxide (long wavelength photopolymerization initiator; see instant spec [0030]) as a photopolymerization initiator [0070-0071].
Regarding claim 4; Park et al. teaches the formation of an artificial tooth via 3D printing [0073].
Regarding claim 5; Park et al. does not explicitly disclose wherein the formed product has a total light transmittance of less than 60% when the total light transmittance is measured using a sample slice having a thickness of 1mm in a beam irradiation direction. 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, the cured resin composition according to the instant application (comprising a ultraviolet curable resin and an organic pigment having a specific gravity of 2.0 ≤ ρ, a D50 ≤ 5 microns, and D90 ≤ 20 microns) has a transmittance of less than 60% when the total light transmittance is measured using a sample slice having a thickness of 1 mm in a beam irradiation direction. Therefore, the claimed effects and physical properties, i.e. % transmittance, would necessarily 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 6; Park et al. teaches, in a preferred embodiment, the rutile white pigment is employed in an amount of 0.1 parts based on 100 parts of the photopolymerizable compound [Ex1-3].
Response to Arguments
Applicant's arguments filed 28 April 2026 have been fully considered but they are not persuasive.
In response to applicant's argument that Park does not teach or suggest that the amount of pigment provides both improved curability and improved color evenness to a cured product, 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). Park teaches the claimed amount of inorganic pigment, thus it is the position of the Examiner that the composition would necessarily possess improved curability and improved color evenness in the cured product.
Applicants arguments directed to Kokubo and Yanagase are moot since the references are merely relied upon for evidentiary support showing that rutile-type titanium dioxide has a specific gravity of 4.2.
As such, Park and Lee are still relied upon for rendering obvious the basic claimed resin composition, as set forth above, with respect to the instant claim language.
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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