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 .
This Office Action is in response to the amendments and arguments filed September 17, 2026 wherein claims 1 and 3-9 are currently pending and claims 10, 12-15, and 17-19 are withdrawn due to a restriction requirement.
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.
Claims 1 and 3-9 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hamakubo et al (WO 2022009529) with US 2023/0312778 used for citation purposes as evidenced by Allnex (TPGDA Technical Datasheet, 07-14-2021).
With regards to claim 1, Hamakubo teaches a resin composition that is photopolymerizable (abstract) and contains a urethane (meth)acrylate, a photopolymerizable compound, and an anti-static material (abstract). Hamakubo teaches urethane (meth)acrylate to be an oligomer (0023) and the monomer to include 2-phenoxyethyl acrylate (PO-A) (0096 examples 1-7) which has a Tg of 5°C (reading on the claimed first monomer) and TPGDA (0096 examples 1-7) (tripropylene glycol diacrylate (0066) which Allnex teaches the glass Tg to be 80°C (reading on the claimed second monomer). Hamakubo teaches the anti-static material to include carbon nanotubes (0037). Hamakubo further teaches the amount of urethane oligomer to be 20%, the amount of the PO-A to be 20%, and the amount of TPGDA to be 15% (0096 examples 1-7). The claim states that the amount of the oligomer and the vinyl compound is 100%. Therefore, when adjusted so that the combination of the above monomers is 100%, the amount of oligomer is 36.36%, the amount of PO-A is 36.36% and the amount of TPGDA is 27.27%, reading on the claimed concentrations.
With regards to claim 3, Hamakubo teaches the oligomer to be a urethane (meth)acrylate (abstract).
With regards to claims 4 and 5, Hamakubo teaches the vinyl monomer to include monofunctional (meth)acrylates, difunctional, trifunctional, and tetrafunctional (meth)acrylates (0032-0033).
With regards to claim 7, Hamakubo teaches the monomer to include isobornyl acrylate (0032).
With regards to claims 8 and 9, Hamakubo is silent on the viscosity of the composition and the use for stereolithography. However, the viscosity of the composition is dependent on the types and amounts of compounds used in the composition. Because the art teaches the composition having the claimed components in the claimed amounts, when the composition recited in the reference is substantially identical to that of the claims, the claimed properties or function are presumed inherent. MPEP 2112.01. Because the prior art exemplifies Applicant’s claimed composition in that the claimed components in the claimed amounts are used, the claimed physical properties relating to the viscosity and purpose of stereolithography are inherently present in the prior art. Absent an objective showing to the contrary, the addition of the claimed physical properties to the claim language fails to provide patentable distinction over the prior art.
Response to Arguments
Applicant’s arguments, see pages 6-9, filed September 17, 2026, with respect to claims 4-6 under 35 USC 112(b) and claims 1-5 and 7-9 under 35 USC 103 with respect to Fujimoto have been fully considered and are persuasive. The rejection of the above claims with respect to the referenced rejection has been withdrawn.
Applicant's arguments filed September 17, 2026 have been fully considered but they are not persuasive.
Argument - Applicant argues that comparative evidence shows the advantages of having the amount of carbon nanotube when within a certain concentration range in the comparative examples.
Response - It is important to note that there are no comparative examples in the specification. However, it is seen that there are examples containing varying amounts of carbon nanotube. It is also important to note that although applicants have shown the criticality of the concentration, the amount of the carbon nanotube is not claimed. Therefore, the data does not affect the patentability with respect to the art on record.
Argument - Applicant argues that it is unclear as to the glass transition temperature (Tg) of the TPGDA.
Response - The npl provided by Allnex proves that the Tg of TPGDA is 80°C and, therefore, reads on the claimed second monomer.
Argument - Applicant argues that the amount of the oligomer is 20% and the amount of the PO-A (reading on the first monomer) is 20% and both concentrations are out of the claimed range.
Response - Although applicant is correct in the above concentrations, it is important to note that the claim states that the claimed concentrations are when the total amount of the urethane oligomer and the vinyl monomer is 100%. Therefore, the concentrations need to be adjusted so that their total is 100%. This gives the oligomer a concentration of 36.36, the amount of PO-A to be 36.36% and the amount of the TPGDA to be 27.27%. All of these concentrations are within the claimed concentration range of the components.
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 JESSICA WHITELEY whose telephone number is (571)272-5203. The examiner can normally be reached 8 - 5:00.
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/JESSICA WHITELEY/Primary Examiner, Art Unit 1763
