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 .
Election/Restrictions
Claims 10-19 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on May 12, 2026. Without acquiescing with the arguments provided, once the elected claims have been determined to be in condition for allowance, rejoinder will be considered where possible.
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 4, 5, and 6 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.
Claims 4 and 5 state that the vinyl monomer includes…, however, does not specify whether the claim is further limiting either the first or second monomer or is an additional monomer altogether.
Claim 6 states that the monomer is “(2-methyl-2-ethyl-1,3-dioxolane-4-yl) methacrylate” but the specification states that its 2-methyl-2-ethyl-1,3-dioxolane-4-yl) methyl acrylate. It is unclear as to which compound is the desired compound.
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 1-5 and 7-9 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.
With regards to claim 1, Hamakubo teaches a resin composition that is photopolymerizable (abstract) and contains a urethane (meth)acrylate and a photopolymerizable compound, and an anti-static material (abstract). Hamakubo teaches urethane (meth)acrylate to be an oligomer (0023) and the monomer to include isobornyl (meth)acrylate (0032) (reading on the claimed second monomer as specified in the specification and dependent claims) and 2-phenoxyethyl acrylate (0066) (having a Tg of 5°C and, therefore reading on the claimed first monomer). Hamakubo teaches the anti-static material to include carbon nanotubes (0037).
With regards to claim 2, Hamakubo teaches the amount of urethane oligomer to be 20%, the amount of a monomer having a Tg of the claimed second monomer to be 15% and the monomer reading on the claimed first monomer to be 20% (0096 table 1).
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.
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.
Claims 1-5 and 7-9 are rejected under 35 U.S.C. 103 as being unpatentable over Fujimoto et al (US 2006/0167200) in view of Hamakubo et al (WO 2022/009529) with US 2023/0312778 used for translation purposes.
With regards to claim 1, Fujimoto teaches an active energy ray curable composition (abstract) containing a urethane (meth)acrylate (abstract), an ethylenically unsaturated compound (abstract) includes two or more compounds (0037) wherein the monomers include isobornyl acrylate (0146) (as applicants cite in the dependent claims and specification as reading on the claimed second monomer) and tetrahydrofurfuryl acrylate (THFA) (0145) (having a glass transition temperature of -25°C and reading on the claimed first monomer).
Fujimoto does not teach the addition of carbon nanotubes.
The disclosure of Hamakubo is adequately set forth in paragraph 6 above and is herein incorporated by reference. Hamakubo teaches the motivation for adding the carbon nanotube to be because it minimizes coloration on the optical fibers and easily obtains an antistatic effect with a small amount (0037). Fujimoto and Hamakubo are analogous in the art of curable compositions. In light of the discussion above, it would have been obvious to one skilled in the art prior to the effective filing date of the present invention to add the carbon nanotubes of Hamakubo to the composition of Fujimoto, thereby obtaining the present invention.
With regards to claim 2, Fujimoto teaches the amount of urethane (meth)acrylate to be 50%, the amount of monomer reading on the claimed first monomer to be 20%, and the amount of isobornyl (meth)acrylate to be 15% (example 1, table 1).
With regards to claim 3, Fujimoto teaches the composition to contain a urethane (meth)acrylate (abstract).
With regards to claims 4 and 5, Fujimoto teaches the monomers to include monofunctional (meth)acrylates (0145-0147).
With regards to claim 7, Fujimoto teaches the monomer include isobornyl acrylate (0146).
With regards to claim 8, Fujimoto teaches the viscosity of the composition to be from 2000 to 8000 mPas (0063).
With regards to claim 9, Fujimoto is silent on 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 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.
Conclusion
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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joseph Del Sole can be reached at 5712721130. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JESSICA WHITELEY/Primary Examiner, Art Unit 1763
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