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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on July 21, 2026 has been entered.
Claim Interpretation
The preamble of claim 1 recites “suitable for use in stereolithography.” The body of claim 1 sets forth a structurally complete composition including a liquid photocurable resin including at least 50 weight percent fluoropolymer and a crosslinking resin, together with a stated response to UV exposure. The quoted phrase merely states a purpose or intended use for the composition and does not breathe life or meaning into the claim body.
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.
Claim 5 is 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 5: The claimed copolymer range does not recite whether the percentages are by weight or mole, rendering the claim indefinite.
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 102(a)(2) as being anticipated by Wood (US 2019/0144683).
Claim 1: Wood discloses a liquid photocurable resin composition (¶¶ 21, 71, 75, 85, 97). The composition includes at least 50 weight percent of a fluoropolymer combined with a crosslinking resin (¶¶ 8-12, 38-40, 93-96, 108-110; table 1), wherein exposure of the photocurable resin composition to UV light forms a crosslinked resin including the fluoropolymer as a final material (¶¶ 35, 99-102; examples).
Claims 3-4: Wood discloses the fluoropolymer being PVDF (¶¶ 40-42).
Claim 6: Wood discloses photoinitiators (¶¶ 21, 84-86).
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 5 is rejected under 35 U.S.C. 103 as being unpatentable over Wood, as applied to claim 4 above, further in view of Amin-Sanayei (US 6,586,547).
Claim 5: Wood discloses PVDF up to about 30 weight percent hexafluoropropene (¶¶ 13-14), which overlaps the claimed range, but is silent as to the claimed glass transition temperature range. However, Amin-Sanayei discloses a composition having 1-66 weight percent hexafluoropropylene and having low crystallinity (col. 3, lines 30-40). With regard to the claimed glass transition temperature range, this limitation is an inherent physical property of the fluoropolymer rather than a compositional or structural feature. Amin-Sanayei teaches VDF/HFP copolymers spanning the full 1-66 weight percent HFP range with controllable degrees of crystallinity, and expressly teaches that glass transition temperature varies with crystallinity (col. 4, lines 60-67). Where, as here, the prior art teaches a product that is or reasonably appears to be identical or substantially identical to that claimed, the burden shifts to Applicant to demonstrate that the prior art product does not necessarily possess the claimed property. “[T]he PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his [or her] claimed product. Whether the rejection is based on ‘inherency’ under 35 U.S.C. 102, on ‘prima facie obviousness’ under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same.” In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-34 (CCPA 1977) (footnote and citation omitted). The burden of proof is similar to that required with respect to product-by-process claims. In re Fitzgerald, 619 F.2d 67, 70, 205 USPQ 594, 596 (CCPA 1980) (citing Best, 562 F.2d at 1255). It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the application to have selected as the VDF/HFP fluoropolymer component a) of Wood’s UV-curable composition, a VDF/HFP copolymer having a HFP content of from about 20 to about 60 percent as taught by Amin-Sanayei, because Amin-Sanayei expressly teaches that such higher-HFP, low-crystallinity VDF/HFP copolymers exhibit improved miscibility with polyacrylates and polymethacrylates, haze-free solutions, improved optical clarity of the resulting film, and excellent flexibility, and expressly recommends them for paint bases that conventionally include an acrylic resin, which is what Wood’s acrylic-containing coating system is.
Response to Arguments
Applicant’s arguments with respect to the claims have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Susan Leong can be reached at 571-270-1487. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LARRY W THROWER/Primary Examiner, Art Unit 1754
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