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
Applicant’s amendment to the claims filed April 14, 2026 has been entered. Claims 1, 3-5, 8, and 32 are currently amended. Claim 34 is new. Claims 10-22 have been canceled. Claims 26-30 remain withdrawn from further consideration.
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 3, 4, and 32 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.
As to claim 3, the claim recites “the active monomer comprises a halide function group selected from…chloride and bromide”. The limiting effect of the recitation is unclear. Claim 1 requires the active monomer to comprise “a methacrylate having a chlorine group”. It is not clear as set forth in the claim whether claim 3 is intended to require an additional halide beyond the recited chlorine group of claim 1 or whether the limitation is improper because it does not include all the limitations of the claim from which it depends (also see the section 112d rejection below). Appropriate correction and clarification are required.
Similarly, claim 4 recites “the halide functional group”. The limiting effect of the recitation is unclear for substantially the same reasons as set forth in the rejection of claim 3. Appropriate correction and clarification are required.
As to claim 32, the claim recites “the active monomer comprises a functional group configured to be substituted with the cation group”. The limiting effect of the recitation is unclear. It is not clear whether the “functional group” is referring to the “chlorine group” that is “configured to be substituted with a cation group” in claim 1 or whether an additional functional group is in view. Appropriate correction and clarification are required.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 3, 4, 7, and 32 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
As to claim 3, the claim recites “the active monomer comprises a halide function group selected from…chloride and bromide”. However, claim 1 requires the active monomer to comprise “a methacrylate having a chlorine group”. The most straightforward reading of the claim suggests that claim 3 does not further limit or include all the limitations of the claim from which it depends because the claim 3 limitation appears to be broader than the corresponding limitation in claim 1. Also see the section 112b rejection above.
Similarly, claim 4 recites “the halide functional group”. The most straightforward reading of the claim suggests that claim 4 does not further limit or include all the limitations of the claim from which it ultimately depends because the claim 4 limitation appears to be broader than the corresponding limitation in claim 1 regarding the functional group that is in view. Also see the section 112b rejection above.
As to claim 7, the claim recites “the rigid oligomer is a diacrylate oligomer”. However, claim 1 requires the rigid oligomer to include “a diurethane dimethyacrylate”. As such, claim 7 recites a broader rigid oligomer scope than what is set forth in claim 1 and the claim fails to further limit or include all the limitations of the claim from which it depends.
As to claim 32, the claim recites “the active monomer comprises a functional group configured to be substituted with the cation group”. However, claim 1 recites and defines a chlorine group which seems to be the functional group set forth in claim 32. As such, the “functional group” in this understanding is broader in scope than the “chlorine group” and the claim fails to further limit or include all the limitations of the claim from which it depends.
Applicant may cancel the claims, amend the claims to place the claims in proper dependent form, rewrite the claims in independent form, or present a sufficient showing that the dependent claims comply with the statutory requirements.
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.
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 1-4, 6, 7, 9, 23-25, 32 and 33 are rejected under 35 U.S.C. 103 as being unpatentable over Hwa (US 2,862,892), in view of either one of Gacek et al. (US 2020/0307072) or Kraft et al. (US 2020/0238247), any one of Kamada et al. (US 2018/0044491), Li et al. (US 2016/0207796), or Matsuoka et al. (US 2004/0137297), and further in view of Poelma (US 2023/0129561), and further in view of any one of Macedo et al. (US 2022/0397544), Blomstrom et al. (US 2020/0188187), or Vepsalainen et al. (US 2020/0088670).
Regarding claims 1, 3, 4, 6 and 7, Hwa teaches a mixture capable of/for forming an anion exchange membrane comprising a polymer network (col. 1, lines 15-19; anion-exchange resin is ultimately produced and is capable of being formed into an anion exchange membrane) comprising a rigid oligomer having multiple polar substituents (col. 2, lines 60-col. 3, line 9; in particular col. 2, lines 68-69 – “ethylene glycol diacrylate or dimethacrylate” and Example 1(b) – “ethylene glycol dimethacrylate”; e.g. there are 4 oxygens in ethylene glycol diacrylate and this counting corresponds with the counting approach set forth in Applicant’s Figure 3 where element (302) points to the polar substituents in the composition); an active monomer comprising an acrylate group and a halide functional group configured to be substituted with a cation group (col. 2, lines 45-59; Examples 1(a) and 1(b) where the monomer is 3-chloro-2-hydroxy-propyl methacrylate) and a polymerization initiator (col. 3, lines 37-52; Examples 1(a) and 1(b); benzoyl peroxide; as evidenced by Gacek et al. (paragraph [0062]) and Kraft et al. (paragraph [0228]), benzoyl peroxide is a “photoinitiator” that is capable of initiating polymerization).
Hwa does not explicitly teach a photoabsorber capable of/for reducing light penetration into the mixture. However, each of Kamada et al. (paragraphs [0083] and [0094], disclosing that it is conventional in the art to add materials like UV absorbers and titanium dioxide to the composition), Li et al. (Abstract; paragraph [0020]; Figures 1 and 4 – showing the inclusion of titanium dioxide in an analogous composition), or Matsuoka et al. (paragraphs [0011], [0012], [0020], [0043] – showing the inclusion of titanium dioxide in an analogous composition). Further, Poelma (paragraph [0075]) discloses titanium dioxide is a photoabsorber and discloses suitable amounts for use.
Therefore it would have been prima facie obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have combined the teaching of Hwa and any one of Kamada et al., Li et al., and Matsuoka et al. and Poelma and to have utilized a photoabsorber (e.g. UV absorber, titanium dioxide) in the mixture of Hwa, as suggested by the secondary references, for the purpose, as suggested by the references, of improving the properties of the finally produced resin/membrane in an art recognized suitable manner.
Hwa discloses suitable crosslinking agents/oligomers/dimethacrylates, such as ethylene glycol diacrylate or dimethacrylate as set forth above, but does not disclose diurethane dimethacrylate. However, each of Macedo et al. (paragraph [0059] – ethylene glycol dimethacrylate and diurethane dimethacrylate analogously utilized as equivalent or alternative crosslinking agents), Blomstrom et al. (paragraph [0083]), and Vepsalainen et al. (paragraphs [0074]-[0079]) disclose analogous compositions wherein diurethane dimethacrylate is utilized as the crosslinking agent.
Therefore it would have been prima facie obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have combined the teaching of Hwa and any one of the secondary references and to have utilized diurethane dimethacrylate as the crosslinking agent in the mixture of Hwa, for the purpose, as suggested by the references, of utilizing a known equivalent and/or alternative crosslinking agent effective for producing the copolymer (see MPEP 2144.06 II and MPEP 2144.07; also see MPEP 2143 Rationale (B); e.g. replace the ethylene glycol dimethacrylate or other crosslinking agents of Hwa with the diurethane dimethacrylate crosslinking agents of the secondary references).
The recitation “for forming an anion exchange membrane” in the preamble is a statement of purpose or intended use and is not considered to be a limitation in the claims (see MPEP 2111.02 I & II). To the extent the recitation could be understood to be a limitation, the recitation only limits the scope of the claim such that the recited materials would be capable of forming an anion exchange membrane (see MPEP 2111.01 I & II). Similarly, the language “configured to be substituted with a cation group”, is language that described the stated purpose or the intended use of the active monomer. An active monomer having the claimed structure and that is capable of being substituted with a cation group to functionalize a polymer that could be formed from the mixture as claimed, reads upon the scope of the claimed invention. Since Hwa discloses the same active monomer materials as claimed and disclosed, these same materials would be capable of “forming an anion exchange membrane” and the corresponding active monomer is “configured to be substituted with a cation group”.
As to claim 2, the claim does not require the presence of a cation group. The active monomer must merely be capable of being substituted with the recited cation group. Hwa discloses an active monomer as claimed and disclosed (e.g. 3-chloro-2-hydroxy-propyl methacrylate), which reads upon the active monomer set forth in claim 1, 3, 4 and 6. This active monomer is configured to/capable of being substituted as claimed.
As to claim 9, the combination teaches and discloses the mixture set forth above. Hwa does not explicitly teach the concentration of the active monomer and oligomer/diacrylate are within the claimed range. However, Hwa teaches that varying the amount of the crosslinking agent/oligomer/diacrylate used in the preparation of the copolymer can be determined to vary/optimize the physical properties of the product and only generally suggest an upper limit of 40% based on a molar basis (col. 3, lines 10-20). As such, one having ordinary skill in the art would have found it prima facie obvious at the time of the claimed invention to have optimized/determined an appropriate concentration of both the monomer and the oligomer in order to produce a resin having desired physical properties. The amount/concentration of the ingredients is disclosed in Hwa as effecting the results of the formed product and would have accordingly been optimized as a routine expedient.
As to claim 23, the combination suggests inclusion of photoabsorbers as set forth above. One having ordinary skill in the art would have found it prima facie obvious to have selected the amount of photoabsorber as a routine expedient, in order to facilitate light absorption, and the desired properties. Further, Poelma suggest amounts of UV absorbers/photoabsorbers to be utilized that overlap the claimed range (paragraph [0075]). It would have been prima facie obvious at the time of the claimed invention to have combined the teaching of Hwa and Poelma and to have utilized the amount of UV absorber/photoabsorber as claimed in the mixture of Hwa, as suggested by Poelma, for the purpose, as suggested by the references of achieving a desired degree of UV absorbing capability
As to claim 24, the combination teaches and suggests the same claimed and disclosed mixture. It follows that this mixture is configured to/capable of forming a self-supporting structure using a stereolithography technique. The same materials can be processed in the same manner.
As to claim 25, Hwa exemplifies an amount of benzoyl peroxide within the claimed range (e.g. 15 parts out of 4517 parts = 0.33 wt. % in the Examples). Further, Hwa discloses a range of applicable amounts of initiator (col. 3, lines 48-51).
As to claims 32 and 33, the combination teaches and suggests the same claimed and disclosed mixture. It follows from a technical and rational basis that the same mixture will have the same properties.
Claims 8 and 34 are rejected under 35 U.S.C. 103 as being unpatentable over Kadobayashi et al. (US 2013/0030080) in view of any one of Rist (US 11,697,696), Bringley (US 2016/0113746), Jia (US 2006/0241205) or Barnes et al. (US 5,430,074), as evidenced by either one of Kobayashi et al. (US 2013/0209816) or Lewinska et al. (BBOT for applications in photovoltaic cells devices and organic diodes).
Regarding claim 1, Kadobayashi et al. teach a mixture capable of/for forming an anion exchange membrane, the mixture comprising: a rigid oligomer having multiple polar substituents (paragraph [0058] and [0083]; tri-ethylene glycol dimethacrylate (TEGDMA)); an active monomer comprising an acrylate group and a functional group configured to be substituted with a cation group (paragraph [0058] and [0083]; bis-GMA, wherein the hydroxyl groups of the bis-GMA are understood to be configured to/capable of being substituted with a cation group for functionalizing the polymer; hydroxyl groups may not be generally considered ideal or good leaving groups, but they are leaving groups broadly defined and neither the claim nor the specification requires a particular leaving group; any leaving group that would be capable of leaving as claimed is understood to read upon the recitation); a photoinitiator capable of/for initiating polymerization (paragraphs [0049], [0061], [0065], [0069] and [0083]).
Kadobayashi et al. do not teach the inclusion of a photoabsorber for reducing light penetration into the mixture comprising 2,5, Bis(5-tert-butyl-benzoxazol-2-yl)thiophene. However, each of Rist (col. 13, lines 18-40), Bringley (paragraph [0037] – Uvitex OB for whitening), Jia (paragraph [0013]; Table 2) and Barnes et al. (Table 1) disclose analogous mixtures wherein 2,5, Bis(5-tert-butyl-benzoxazol-2-yl)thiophene/Uvitex OB is added to the composition as a fluorescent brightener. Further, each of Lewinska et al. (section 2, first full paragraph; Figure 1 a showing BBOT has the same composition as Figure 3 (314) in the instant application) and Kobayashi et al. (paragraph [0165] showing that Uvitex OB is the composition as claimed) provide evidence showing that Uvitex OB is a tradename by which the composition is known.
Therefore it would have been prima facie obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have combined the teaching of Kadobayashi et al. and any one of the secondary references and to have utilized 2,5, Bis(5-tert-butyl-benzoxazol-2-yl)thiophene in the composition of Kadobayashi et al., as suggested by any one of the secondary references, for the purpose, as suggested by the references of providing a whitening/optical brightening material to improve the properties/aesthetic effect of the dental composition. In the combination, each and every claimed material is provided in the mixture. As such, the same composition/mixture will have the same properties as claimed (e.g. photoabsorbing for reducing light penetration).
The recitation “for forming an anion exchange membrane” in the preamble is a statement of purpose or intended use and is not considered to be a limitation in the claims (see MPEP 2111.02 I & II). To the extent the recitation could be understood to be a limitation, the recitation only limits the scope of the claim such that the recited materials would be capable of forming an anion exchange membrane (see MPEP 2111.01 I & II). Similarly, the language “configured to be substituted with a cation group”, is language that described the stated purpose or the intended use of the active monomer. An active monomer having the claimed structure and that is capable of being substituted with a cation group to functionalize a polymer that could be formed from the mixture as claimed, reads upon the scope of the claimed invention. Since Kadobayashi discloses the same materials as claimed. These same materials would be capable of “forming an anion exchange membrane” and the corresponding active monomer is “configured to be substituted with a cation group”.
As to claim 8, each of Rist (col. 3, lines 20-31; col. 8, lines 42-52), Bringley (paragraph [0031]), Jia (paragraphs [0002], [0011], [0012]) and Barnes et al. (col. 1, lines 28-31; col. 2, lines 40-54; Table 1) further teach and suggest utilizing diurethane dimethacrylate in a dental composition. It would have been prima facie obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have combined the teaching of Kadobayashi et al. and any one of the secondary references and to have utilized diurethane dimethacrylate in the dental composition of Kadobayashi et al., as suggested by any one of the secondary references, for the purpose, as suggested by the references, of providing an acrylate/methacrylate oligomer that is known in the art for providing an alternative and equivalent starting material for forming the final dental article/polymerized composition (see MPEP 2144.06 and 2144.07).
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Kadobayashi et al. (US 2013/0030080) in view of any one of Rist (US 11,697,696), Bringley (US 2016/0113746), Jia (US 2006/0241205) or Barnes et al. (US 5,430,074), as evidenced by either one of Kobayashi et al. (US 2013/0209816) or Lewinska et al. (BBOT for applications in photovoltaic cells devices and organic diodes), as applied to claim 8 and 34 above, and further in view of any one of Matsura (US 2024/0074946) or Noguchi et al. (US 2022/0325025) or Miyata et al. (US 2021/0283022).
As to claim 5, the combination teaches the composition set forth above. Kadobayashi et al. do not teach utilizing the active monomer is a methacrylate having a chlorine group. However, each Matsura (paragraphs [0057] and [0073]), Noguchi et al. (paragraph [0043]), or Miyata et al. (US 2021/0283022; paragraph [0040] – urethane dimethacrylate and 3-chloro-2-hydroxypropylmethacrylate) teach analogous compositions wherein a corresponding monomer includes a methacrylate having a chlorine group.
Therefore It would have been prima facie obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have combined the teaching of Kadobayashi et al. and any one of the secondary references and to have utilized a methacrylate having a chlorine group as a monomer in the dental composition of Kadobayashi et al., as suggested by any one of the secondary references, for the purpose, as suggested by the references, of providing an methacrylate monomer that is known in the art for providing an alternative starting material for forming the final dental article/polymerized composition (see MPEP 2144.06 and 2144.07) and that further facilitates producing desirable properties in the dental material (e.g. Miyata et al. Abstract– good photosensitivity; Matsura et al. Abstract – good strength and shrinkage; Noguchi et al. Abstract – excellent curing capability).
Response to Arguments
Applicant’s arguments filed April 14, 2026 have been fully considered. The amendment to claim 1 has overcome the previous prior art rejections based upon Kadobayashi et al. and Sun et al. as primary references. As such, the rejections have been withdrawn. Applicant’s argument regarding the section 103 rejection based upon Hwa has been fully considered, but is not persuasive.
Applicant argues that Hwa does not teach the rigid oligomer as required in claim 1. This argument is not persuasive. The amendment to claim 1 incorporated the subject matter of previous claim 8 and now requires the rigid oligomer to include “a diurethane dimethacrylate”. Hwa is not relied upon in the rejection for teaching this limitation. As set forth in the previous rejection of claim 8 and now as part of the rejection of claim 1, each of Macedo et al. (paragraph [0059] – ethylene glycol dimethacrylate and diurethane dimethacrylate analogously utilized as equivalent or alternative crosslinking agents), Blomstrom et al. (paragraph [0083]), and Vepsalainen et al. (paragraphs [0074]-[0079]) are relied upon to teach and suggest the utilizing diurethane dimethacrylate as the crosslinking agent in the composition of Hwa.
As to the arguments against the rejection of previous claim 8, applicant argues the rejection suffers from the same deficiencies set forth above with respect to claim 1. This argument is not persuasive. Each of Macedo et al., Blomstrom et al. and Vepsalainen et al. were utilized in the previous rejection of claim 8 and now in the rejection of claim 1 to remedy this exact deficiency in the teaching of Hwa. For the reasons set forth above, they are understood to provide an appropriate basis for combination with Hwa (e.g. MPEP 2144.06 II, 2144.07, 2143 Rationale (B)).
For the purposes of clarity, the examiner notes that the statement of the rejection based upon Hwa looks more complicated than it is. Each of Gacek et al., Kraft et al. and Poelma are primarily utilized as evidence references in the rejection of claim 1 and merely establish that the relied upon materials from the other references have the required properties recited in the claim. Further, each of Kamada et al, Li et al. and Matsuoka et al. are utilized in the alternative to provide a teaching and suggestion to add conventional additive materials like titanium dioxide (which is a photoabsorber as claimed even if it is not added to the composition of Hwa for that reason) or a UV absorber to the composition of Hwa. Finally, each of Macedo et al., Blomstrom et al. and Vepsalainen et al. are utilized in the alternative to provide a teaching and suggestion to utilize diurethane dimethacrylate as the crosslinking agent of Hwa. Hwa teaches and discloses substantially similar materials for use as crosslinking agents, but does not specifically recite one of the materials is diurethane dimethacrylate. Each of the secondary reasons relied upon in the rejection provide a teaching and suggestion or an appropriate rationale to utilize diurethane dimethacrylate as the crosslinking agent in the composition of Hwa.
It is submitted that the claims would need to be further amended to overcome the rejection based upon Hwa.
As to claim 34, Kadobayashi et al. is still understood to be pertinent in view of new secondary references. The photoabsorber set forth in claim 34 is a known fluorescent brightener/whitening agent in the dental arts. Its usage in the dental composition of Kadobayashi et al. is understood to be prima facie obvious. Since the claim is directed to the mixture of materials and only recites an intended use for the mixture, the rejection is understood to be applicable.
It is submitted that claims would need to be further amended to overcome the rejection based upon Kadobayashi et al.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jeff Wollschlager whose telephone number is (571)272-8937. The examiner can normally be reached M-F 7:00-3:30.
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/JEFFREY M WOLLSCHLAGER/Primary Examiner, Art Unit 1742
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