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 .
The response filed February 12, 2026 has been entered.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1, 3-4 and 6 are rejected under 35 U.S.C. 102(a)(1) and 35 U.S.C. 102(a)(2) as being anticipated by Bartow (US 2019/0022928).
Claim 1: Bartow discloses a photocurable resin composition suitable for use in stereolithography including from 25-70 % weight of a fluoropolymer (¶¶ 9, 20, 34-35, 41, 107).
Claims 3-4: Bartow discloses the fluoropolymer being PVDF (¶ 96).
Claim 6: Bartow discloses photoinitiators (¶ 162).
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.
Claim 2 and 5 are rejected under 35 U.S.C. 103 as being unpatentable over Bartow, as applied to claim 1 above.
Claim 2: Bartow discloses a photocurable resin composition suitable for use in stereolithography including from 25-70 % weight of a fluoropolymer (¶¶ 9, 20, 34-35, 41, 107), which overlaps the claimed range. Where ranges overlap, a prima facie case of obviousness is made out. In re Boesch, 617 F.2d 272, 275 (CCPA 1980). See also In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003) (a prima facie case of obviousness exists when the ranges of a claimed composition overlap the ranges disclosed in the prior art) and In re Harris, 409 F.3d 1339, 1341 (Fed. Cir. 2005) (same).
Claim 5: Bartow discloses up to 30% wt VDF copolymers, which overlaps the claimed range, and VDF/HFP copolymers have a glass transition temperature in the claimed range (¶ 96). Where ranges overlap, a prima facie case of obviousness is made out. In re Boesch, 617 F.2d 272, 275 (CCPA 1980). See also In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003) (a prima facie case of obviousness exists when the ranges of a claimed composition overlap the ranges disclosed in the prior art) and In re Harris, 409 F.3d 1339, 1341 (Fed. Cir. 2005) (same).
Response to Arguments
Applicant's arguments filed February 12, 2026 have been fully considered but they are not persuasive.
Applicant argues that Bartow does not disclose the claimed composition because “Bartow’s UV-curable component is a sacrificial binder, not a photocurable resin that forms the final article.” This argument has been considered but is not persuasive because it is not commensurate in scope with the claim. Nothing in the claim requires that the photocurable component (i) form the final article, (ii) remain in the final article after processing, or (iii) be non-sacrificial. Features not recited in the claim cannot distinguish over the prior art See In re Self, 671 F.2d 1344 (CCPA 1982) (limitations not appearing in the claims cannot be relied upon for patentability).
Applicant further argues that “Bartow discloses compositions in which a UV-curable component is used solely to temporarily bind fluoropolymer particles into a ‘green body’ for handling and shaping. Bartow repeatedly teaches that the UV-cured binder is removed during a subsequent debinding step, and the final article is produced by thermal sintering of fluoropolymer particles, not by photopolymerization.” This argument has also been considered but is not persuasive because it is not commensurate in scope with the claims. The claims do not preclude removal during a subsequent debinding step, nor forming a final article by photopolymerization.
Applicant also argues that Bartow’s composition is not suitable for use in stereolithography because “Bartow does not disclose: 1) stable, single-phase SLA resins containing thermoplastic fluropolymers at high loadings; 2) compatibility with standard commercial SLA printers; or 3) successful printing without subsequent debinding and sintering.” This argument has been considered but is not persuasive for three reasons:
First, the preamble phrase “suitable for use in stereolithography” is intended use/functional language that carries no patentable weight where the prior art composition meets it. A recitation of suitability or intended use does not differentiate a claimed composition from a prior art composition that is the same and that the reference shows performing the recited use. In re Schreiber, 128 F.3D 1473 (Fed. Cir. 1997). It is well settled that the recitation of a new intended use for an old product does not make a claim to that old product patentable. See In re Spada, 911 F.2d 705, 708, 15 USPQ2d 1655, 1657 (Fed. Cir. 1990) ("The discovery of a new property or use of a previously known composition, even when that property and use are unobvious from prior art, cannot impart patentability to claims to the known composition."); Titanium Metals Corp. of Am. v. Banner, 778 F.2d 775, 782, 227 USPQ 773, 778 (Fed. Cir. 1985) (composition claim reciting a newly discovered property of an old alloy did not satisfy section 102 because the alloy itself was not new); In re Pearson, 494 F.2d 1399, 1403, 181 USPQ 641, 644 (CCPA 1974) (intended use of an old composition does not render composition claim patentable); In re Zierden, 56 C.C.P.A. 1223, 411 F.2d 1325, 1328, 162 USPQ 102, 104 (CCPA 1969) (" [M]ere statement of a new use for an otherwise old or obvious composition cannot render a claim to the composition patentable."); In re Sinex, 50 C.C.P.A. 1004, 309 F.2d 488, 492, 135 USPQ 302, 305 (CCPA 1962) (statement of intended use in an apparatus claim failed to distinguish over the prior art apparatus); In re Hack, 44 C.C.P.A. 954, 245 F.2d 246, 248, 114 USPQ 161, 162 (CCPA 1957) ("the grant of a patent on a composition or a machine cannot be predicated on a new use of that machine or composition"); In re Benner, 36 C.C.P.A. 1081, 174 F.2d 938, 942, 82 USPQ 49, 53 (CCPA 1949) ("no provision has been made in the patent statutes for granting a patent upon an old product based solely upon discovery of a new use for such product").
Second, even assuming, arguendo, that the preamble phrase “suitable for use in stereolithography” was given patentable weight, the argument still is not persuasive because Bartow actually performs stereolithography on the composition. Suitability for an intended use cannot be more conclusively shown than by the reference carrying out that very use. Bartow’s Examples 1 and 3B state that each article “was produced by stereolithography (vat polymerization) using a PICO 2 ‘3D printer.’” A composition demonstrated to function in a stereolithography apparatus is, as a matter of fact, suitable for use in stereolithography.
Third, the argument is not commensurate in scope with the claims. The instant claims do not require the composition to be 1) stable, single-phase SLA resins containing thermoplastic fluoropolymers at high loadings; 2) compatible with standard commercial SLA printers; or 3) successfully printed without subsequent debinding and sintering. As explained above, features not recited in the claim cannot distinguish over the prior art See In re Self, 671 F.2d 1344 (CCPA 1982) (limitations not appearing in the claims cannot be relied upon for patentability).
Applicant finally argues, with respect to dependent claims 2 and 5 that the compared ranges are not commensurate, Bartow teaches away from Applicant’s invention, and Applicant achieved unexpected results. These arguments have been considered but are not persuasive. The compositions disclosed in Bartow are suitable for stereolithography, as described above. Furthermore, for a reference to teach away, the reference must suggest that a claimed range should be avoided as undesirable or ineffective. See In re Haruna, 249 F.3d 1327, 1335 (Fed. Cir. 2001). Bartow makes no such suggestion. Bartow does not constitute a teaching away from utilizing the claimed ranges for stereolithography because the disclosure does not criticize, discredit, or otherwise discourage such use, and indeed, as explained above, positively teaches using compositions overlapping the claimed ranges in stereolithography. With regard to the purported unexpected results, Applicant relies again on limitations not found in the instant claims.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LARRY THROWER whose telephone number is (571)270-5517. The examiner can normally be reached 9am-5pm MT M-F.
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/LARRY W THROWER/Primary Examiner, Art Unit 1754
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