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 .
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1-7, 9-10, and 12-15 are rejected under 35 U.S.C. 103 as being unpatentable over Dake et al. (US 2012/0259031 A1) in view of Cook et al. (US 2021/0047510 A1), Matsumura (US 2020/0301272 A1), and Isobe et al. (US 2020/0079972 A1).
Regarding Claims 1-7, 9-10, and 13-15, Dake discloses a photocurable resin composition (Abstract). The photocurable resin composition comprises up to 95% cationic polymerizable component (para 0047), such as a mixture of cycloaliphatic epoxy and oxetane (paras 0044, 0046). The cycloaliphatic epoxy may be 3,4-epoxycyclohexylmethyl-3',4-epoxycyclohexanecarboxylate (para 0045). The oxetane compound may be bis((1-ethyl(3-oxetanyl))methyl)ether (para 0043), which corresponds to the claimed oxetane of Formulas (I) and (IA).
The photocurable resin composition further comprises up to 15 wt% free radical photoinitiator (para 0059) and up to 10 wt% photoacid generating cationic photoinitiator (paras 0061, 0088). The photocurable resin composition may further comprise additives including dyes and fillers (paras 0093-0094).
Dake does not disclose the amount of filler in the photocurable resin composition. Dake discloses the photocurable resin composition used in additive fabrication (Abstract), and discloses the filler may comprise silica particles (para 0094).
Cook discloses organic resin systems for additive manufacturing (Abstract) comprising resin such as epoxy and/or oxetane (para 0020), photoinitiator, and 50-90 wt% inorganic particulate filler (para 0006) such as fumed silica particles (i.e. amorphous silica particles) (para 0025) wherein the filler particles can have D50 of from 100 nm to 8 microns (para 0023). The high filler load of the resin system allows production of articles that can be post-processed to remove the organics, leaving a high-density, fully-inorganic structure, without the previous issues of particle settling in low viscosity solution, low particle loading, and low part shrinkage and stress build up in green or cured article (para 0018).
Therefore it would have been obvious to a person having ordinary skill in the art to modify Dake to incorporate the teachings of Cook and produce the photocurable resin composition of Dake comprising 50-90 wt% of the inorganic particulate filler of Cook (i.e. fumed silica particles having D50 of from 100 nm to 8 microns). Doing so would produce an article without the previous issues of particle settling in low viscosity solution, low particle loading, and low part shrinkage and stress build up in green or cured article.
Dake in view of Cook does not disclose the amount of dye in the photocurable resin composition, or the dye being a near-infrared absorbing dye.
Matsumura discloses near-infrared absorbing colorant content of 0.1-70% (para 0213) such as squarylium compound (para 0112), in a composition comprising curable compounds such as cyclic ether resins including Celloxide 2021P (i.e. 3,4-epoxycyclohexylmethyl-3',4-epoxycyclohexanecarboxylate) and/or Oxetane OXT-221 (para 0279-0280), photopolymerization initiator (para 0322), photoacid generator (para 0327), and filler (para 0365). Use of the near infrared colorant produces film having excellent light fastness and moisture resistance (para 0094).
Therefore it would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the present invention to modify Dake in view of Cook to incorporate the teachings of Matsumura, and produce the curable composition of Suzuki further comprising 0.1-70% near-infrared absorbing colorant such as squarylium compound. Doing so would produce film having excellent light fastness and moisture resistance. According to the present specification, squarylium is suitable for the dye claimed (para 00092) and therefore would necessarily be un-reactive with the cation polymerization initiator.
Dake in view of Cook and Matsumura does not separately disclose the amounts of oxetane and cycloaliphatic epoxy.
Isobe discloses a curable composition comprising polymerizable compounds including 1-100% epoxy compound (A) (para 0072) which may consist of alicyclic epoxy resin compounds (para 0041) (i.e. may be 100% cycloaliphatic epoxide) such 3,4-epoxycyclohexylmethyl(3,4-epoxy) cyclohexanecarboxylate (paras 0054); hydroxy compound (B) (para 0074), which is preferable a compound having one oxetane ring in order to obtain cured product having high hardness, low cure shrinkage, and improved adhesion (paras 0076-0077), wherein the ratio of Epoxy compound (A) and hydroxy compound (B) is 1/99 to 99/1 (para 0102); and up to 90% third polymerizable compound (para 0119) such as an oxetane compound (para 0104) according to formula (7-1) (i.e. bis((1-ethyl(3-oxetanyl))methyl)ether) (para 0117). Isobe discloses the amount of epoxy compound (A) in the polymerizable compounds produces desirable hardness, heat resistance, sliding properties, and abrasion resistance (para 0102), and the use of the oxetane third polymerizable compound produces curable composition having a fast curability and a cured product having a high hardness (para 0117). The curable composition further comprises a curing agent such as cationic photoacid generator (para 0188).
Therefore it would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the present invention to modify Dake in view of Cook and Matsumura to incorporate the teachings of Isobe and use the polymerizable compound mixture of Isobe as the cationic polymerizable component of Dake. Doing so would produce desirable hardness, heat resistance, sliding properties, abrasion resistance, low cure shrinkage, improved adhesion, and fast curability.
As shown above, Dake in view of Cook, Matsumura, and Isobe discloses the photocurable resin composition comprises up to 95% cationic polymerizable component, up to 15 wt% free radical photoinitiator, up to 10 wt% photoacid generating cationic photoinitiator, 50-90% inorganic particulate filler, and 0.1-70% near-infrared absorbing colorant. Therefore the photocurable resin composition comprises up to 49.9% cationic polymerizable component (100% total composition – 50% filler – 0.1% near-infrared absorbing colorant – up to 15 wt% free radical photoinitiator – up to 10 wt% photoacid generating cationic photoinitiator).
As shown above, Dake in view of Cook, Matsumura, and Isobe discloses the cationic polymerizable component comprises 1-100% epoxy compound (A), a ratio of (A)/(B) of 1/99 to 99/1, and up to 90% oxetane third polymerizable compound. Therefore, the photocurable resin composition comprises up to 49.4% (49.9*0.99) epoxy compound (A), up to 49.4% hydroxy compound (B), and up to 44.9% (49.9*0.9) oxetane third polymerizable compound.
While Dake in view of Cook, Matsumura, and Isobe does not disclose the photocurable resin composition is an adhesive or sealant, since Dake in view of Cook, Matsumura, and Isobe discloses photocurable resin composition as presently claimed, including types and amounts of compounds as claimed, the photocurable resin composition of Dake in view of Cook, Matsumura, and Isobe would necessarily function as an adhesive or sealant.
Regarding Claim 12, Dake in view of Cook, Matsumura, and Isobe disclose all the limitations of the present invention according to Claim 1 above. Dake further discloses curing successive layers of the photocurable resin composition to form a three-dimensional article having a plurality of layers (para 0024) (i.e. including a first and second material layer, with a layer disposed between and in contact with the first and second material layers, wherein each layer comprises a cured product of the photocurable resin composition).
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Dake in view of Cook, Matsumura, and Isobe as applied to claim 1 above, and further in view of Jung et al. (US 2019/0382591 A1).
Regarding Claim 8, Dake in view of Cook, Matsumura, and Isobe discloses all the limitations of the present invention according to Claim 1 above. Dake in view of Cook, Matsumura, and Isobe does not disclose the epoxy-functional silane as claimed.
Jung discloses a coating composition comprising cycloaliphatic epoxy (para 0137) and discloses use of silanes improves drying properties at low temperature, flexibility, adhesion to substrates, and anti-corrosive performance (para 0147), the silane preferably containing epoxy groups (para 0147), such as Silquest A-187 (para 0164).
Therefore it would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the present invention to modify Dake in view of Cook, Matsumura, and Isobe to incorporate the teachings of Jung, and produce the curable composition further comprising Silquest A-187. Doing so would improve drying properties at low temperature, flexibility, adhesion to substrates, and anti-corrosive performance.
According to the present specification, Silquest A-187 is the epoxy-functional silane used in the present examples (para 00122).
Response to Arguments
In light of applicant’s amendments filed 12/16/2025, the Claim Objections and 35 USC 112(b) rejection of record are withdrawn.
Applicant’s arguments, see Remarks, filed 12/16/2025, with respect to Suzuki have been fully considered and are persuasive. Specifically, that Suzuki teaches filler amount of 5-40% in view of improving surface hardness (para 0161), and therefore it would not be obvious to amend to use the amount of filler as claimed. The 35 USC 103 rejections of record over Suzuki in view of Matsumura, Tsumura, and/or Jung have been withdrawn.
New grounds of rejection are set forth above.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BETHANY M MILLER whose telephone number is (571)272-2109. The examiner can normally be reached M-F 8:00-4:00.
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/BETHANY M MILLER/Examiner, Art Unit 1787
/CALLIE E SHOSHO/Supervisory Patent Examiner, Art Unit 1787