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
In response to the amendment received on 05/25/2026:
claims 1-2, 4, 8-9, 12-13, 26, 28, 29-33 and 39 are currently pending;
claims 13, 26, 28, 33 and 39 are withdrawn;
the prior art rejection based on Li in view of Koenig for the respective independent claims 1 and 29 are withdrawn in light of the narrowing amendment incorporating the transitional phrase “consisting of”; and
the prior art grounds of rejection based on Huang is maintained for at least the reasons as set forth herein.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
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, 8-9, 12, 29 and 31-32 are rejected under 35 U.S.C. 103 as being unpatentable over Huang et al. (CN 109438999 A, with reference to the machine translation) (“Huang” hereinafter); evidenced by JECFA (Microcrystalline wax, 1995) (“Jecfa” hereinafter) with respect to claims 1 and 29 and Netzsch (Viscosity Converting Chart) (“Netzsch” hereinafter) with respect to claims 1 and 29.
Regarding claim 1, Huang teaches a mold material formulation (see Huang at [0021] teaching dental 3D-printed wax material). The wax material is taken to meet the claimed mold material formulation based on the structure below,
usable as forming a mold material in a cast-mold process in combination with a cast material formulation (the limitations directed towards the intended use of the claimed mold material formulation (see MPEP § 2111.02 II)),
the mold material formulation comprising:
Microcrystalline paraffin wax featuring a viscosity lower than 1000 cps at 90 oC and a melting temperature lower than 70 oC, in an amount of from about 40 to about 70 weight percent of the total weight of the formulation (see Huang at [0022] teaching according to the mass fractions… mix 20-50 parts of microcrystalline wax), wherein the mass fractions is taken to meet the claimed “weight percent of the total weight of the formulation”, because in this instance, the mass fractions can be treated as weight percent (see MPEP 2144.05(I)). Microcrystalline wax is taken to meet the claimed “viscosity lower than 1000 cps at 90 oC and a melting temperature lower than 70 oC” as evidenced by Jecfa and Netzsch (see Jecfa at row 2 evidencing definition… microcrystalline wax is a refined mixture of solid, saturated hydrocarbons, mainly branched paraffin, obtained from petroleum, see Jecfa at row 8 evidencing melting range… 62-102oC (see MPEP 2144.05(I)), see Jecfa at row 12 evidencing Viscosity, 100o… not less than 11 cSt, see Netzsch at row 6 evidencing 10 cSt… 10 cps). Less than 11 cSt (or not 10 cps) overlaps with the claimed lower than 1000 cps (see MPEP 2144.05(I));
Vegetable-based (natural) wax consisting of a vegetable-based (natural) wax characterized by thermal conductivity higher than 0.4 W/m oC, and an acid number higher than 2; in an amount of from about 30 to about 50 weight percent of the total weight of the formulation (see Huang at [0022] teaching according to the mass fractions… 10-30 parts of plant wax, see Huang at [0014] teaching in one embodiment, the plant wax is selected from at least one of… candelilla wax). Candelilla wax is taken to meet the claimed “vegetable-based (natural) wax featuring thermal conductivity higher than 0.4 W/m oC, and featuring an acid number higher than 2” based on the specification at pages 54-55 disclosing B2… vegetable wax… candelilla wax); and
Fischer-Tropsch wax, in an amount of from about 1 to about 20 weight percent of the total weight of the formulation (see Huang at [0022] teaching according to the mass fractions… 5-15 parts of Fischer-Tropsch wax) (see MPEP 2144.05(I)).
Regarding claim 4, Huang teaches the limitations as applied to claim 1 above, and Huang further teaches wherein said vegetable-based wax is characterized by… an acid number higher than 10 (see Huang at [0014] teaching in one embodiment, the plant wax is selected from at least one of… candelilla wax). Candelilla wax is taken to meet the claimed “vegetable-based (natural) wax features… an acid number higher than 10” based on the specification at pages 54-55 disclosing B2… vegetable wax… candelilla wax).
Regarding claim 8, Huang teaches the limitations as applied to claim 1 above, and Huang further teaches wherein an amount of said Fischer-Tropsch wax ranges from 2 to 10, weight percent of the total weight of the formulation (see Huang at [0022] teaching according to the mass fractions… 5-15 parts of Fischer-Tropsch wax) (see MPEP 2144.05(I)).
Regarding claim 9, Huang teaches the limitations as applied to claim 1 above, and Huang further teaches wherein the mold material formulation is characterized by a viscosity in a range of from about 6 to about 15 centipoises, at a temperature in a range of from 70 to 90 oC; and as providing a mold material that is characterized by at least one… of the following characteristics… melting point lower than 80 oC (since the wax material as taught by Huang and the claimed mold material formulation of claims 1 and 9 employ substantially similar materials and process, it is reasonable to believe that the claimed properties (i.e., wherein the mold material formulation is characterized by a viscosity in a range of from about 6 to about 15 centipoises, at a temperature in a range of from 70 to 90 oC)) would have naturally flowed following the teaching of Huang (see MPEP 2112.01).
Regarding claim 12, Huang teaches the limitations as applied to claim 1 above, and Huang further teaches usable in forming a mold in a configured pattern in an additive manufacturing process such as 3D inkjet printing (the wax material as taught by Huang is expected to be capable of being usable in forming a mold in a configured pattern in an additive manufacturing process such as 3D inkjet printing).
Regarding claim 29, Huang teaches a mold material formulation (see Huang at [0021] teaching dental 3D-printed wax material). The wax material is taken to meet the claimed mold material formulation based on the structure below,
usable as forming a mold material in a cast-mold process in combination with a cast material formulation (the limitations directed towards the intended use of the claimed mold material formulation (see MPEP § 2111.02 II)),
the mold material formulation comprising:
Microcrystalline paraffin wax featuring a viscosity lower than 1000 cps at 90 oC and a melting temperature lower than 70 oC, in an amount of from about 40 to about 70 weight percent of the total weight of the formulation (see Huang at [0022] teaching according to the mass fractions… mix 20-50 parts of microcrystalline wax), wherein the mass fractions is taken to meet the claimed “weight percent of the total weight of the formulation”, because in this instance, the mass fractions can be treated as weight percent) (see MPEP 2144.05(I)). Microcrystalline wax is taken to meet the claimed “viscosity lower than 1000 cps at 90 oC and a melting temperature lower than 70 oC” as evidenced by Jecfa and Netzsch (see Jecfa at row 2 evidencing definition… microcrystalline wax is a refined mixture of solid, saturated hydrocarbons, mainly branched paraffin, obtained from petroleum, see Jecfa at row 8 evidencing melting range… 62-102oC (see MPEP 2144.05(I)), see Jecfa at row 12 evidencing Viscosity, 100o… not less than 11 cSt, see Netzsch at row 6 evidencing 10 cSt… 10 cps). Less than 11 cSt (or not 10 cps) overlaps with the claimed lower than 1000 cps (see MPEP 2144.05(I));
Vegetable-based (natural) wax consisting of a vegetable-based (natural) wax characterized by thermal conductivity higher than 0.25 W/m oC, and an acid number higher than 7; in an amount of from about 30 to about 50 weight percent of the total weight of the formulation (see Huang at [0022] teaching according to the mass fractions… 10-30 parts of plant wax, see Huang at [0014] teaching in one embodiment, the plant wax is selected from at least one of… candelilla wax). Candelilla wax is taken to meet the claimed “vegetable-based (natural) wax featuring thermal conductivity higher than 0.25 W/m oC, and featuring an acid number higher than 7” based on the specification at pages 54-55 disclosing B2… vegetable wax… candelilla wax); and
Fischer-Tropsch wax, in an amount of from about 1 to about 20 weight percent of the total weight of the formulation (see Huang at [0022] teaching according to the mass fractions… 5-15 parts of Fischer-Tropsch wax) (see MPEP 2144.05(I)).
Regarding claim 31, Huang teaches the limitations as applied to claim 29 above, and Huang further teaches wherein said vegetable-based wax is characterized by an acid number higher than 10 (see Huang at [0014] teaching in one embodiment, the plant wax is selected from at least one of… candelilla wax). Candelilla wax is taken to meet the claimed “vegetable-based wax features an acid number higher than 10” based on the specification at pages 54-55 disclosing B2… vegetable wax… candelilla wax).
Regarding claim 32, Huang teaches the limitations as applied to claim 29 above, and Huang further teaches wherein the mold material formulation is characterized by a viscosity in a range of from about 6 to about 15 centipoises, at a temperature in a range of from 70 to 90 oC; and as providing a mold material that is characterized by at least one… of the following characteristics… melting point lower than 80 oC (since the wax material as taught by Huang and the claimed mold material formulation of claims 29 and 32 employ substantially similar materials and process, it is reasonable to believe that the claimed properties (i.e., wherein the mold material formulation is characterized by a viscosity in a range of from about 6 to about 15 centipoises, at a temperature in a range of from 70 to 90 oC)) would have naturally flowed following the teaching of Huang (see MPEP 2112.01).
Claims 2 and 30 are rejected under 35 U.S.C. 103 as being unpatentable over Huang as applied to claims 1 and 29, respectively above, and further in view of Craig et al. (Properties of Natural Waxes Used in Dentistry. Journal of Dental Research, 1965) (“Craig” hereinafter).
Regarding claims 2 and 30, Huang teaches the limitations as applied to claims 1 and 29, respectively above, and as mentioned, Huang teaches a dental 3D-printed wax material comprising microcrystalline wax (see Huang at [0021]-[0022]).
However, Huang does not explicitly teach wherein said microcrystalline paraffin wax is characterized by a melting point range lower than 10 oC and/or an acid number lower than 2 (claims 2 and 30).
Like Huang, Craig teaches microcrystalline paraffin wax used in dentistry (see Craig at Title teaching properties of natural waxes used in dentistry, see Craig at page 1308, left column, section Materials and Methods teaching selection of waxes… the waxes investigated, together with the general categories and sources, are listed in Table 1… paraffin waxes are of mineral origin from high boiling fractions of petroleum and are mixtures of chiefly straight-chain-saturated hydrocarbons which crystallize in plates or needles, see Craig at page 1309, right column, section Results teaching setting and melting ranges… the setting ranges of the mineral and insect waxes are listed in Table 2, see Craig at page 1310, Table 2 teaching paraffin wax… temperature range oC… 7.0). 7 oC melting temperature range for paraffin wax is taken to meet the claimed wherein said microcrystalline paraffin wax is characterized by… a melting point range lower than 10 oC (claims 2 and 30).
Craig further teaches the melting and setting ranges of waxes are valuable in identifying and classifying wax as well as indicating purity (see Craig at page 1313, right column, section Discussion).
Additionally, MPEP states that “the selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination” (see MPEP § 2144.07). In this case, one of ordinary skill in the art would appreciate that microcrystalline paraffin wax with a 7 oC melting temperature range is suitable for its intended use.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, to use a microcrystalline paraffin wax with a 7 oC melting temperature range as taught by Craig in the wax material as taught by Huang because the microcrystalline paraffin wax is suitable for its intended use, and the melting ranges of waxes are valuable in identifying and classifying wax as well as indicating purity.
Response to Arguments
Applicant’s amendments that narrows the claim limitations of the respective independent claims 1 and 29 have obviated the prior art rejection based on Li in view of Koenig. However, the prior art rejection based on Huang is maintained. Thus, relevant arguments are addressed below.
Applicant discusses that Huang at [0014] do not meet the claimed “vegetable-based (natural) wax featuring thermal conductivity higher than 0.4 W/moC and acid number higher than 2 (claim 1), and thermal conductivity higher than 0.25 W/moC and acid number higher than 7 (claim 29) because Huang at [0014] teaches that the plant wax is “selected from at least one of 1#1 Carnauba wax, 3# Carnauba wax, candelilla wax, rice bran wax and wood wax”… candelilla wax as one option among five listed plant waxes, with no preference expressed for candelilla wax over the other four options… Huang makes no reference to thermal conductivity or acid number as parameters as guide… the plant waxes are presented as functionally equivalent… Examiner’s selective reacting of Huang as specifically teaching candelilla wax is not supported in Huang… Candelilla wax is the preferred plant wax… a person skilled in the art starting from Huang would have had no motivation to select candelilla wax… it is noted that the gap between Huang’s sole candelilla example (10 wt%) and the claimed minimum (30 wt%) is a factor of three, which is not a case of routine optimization (see Applicant’s arguments at page 11 paragraph 1 to page 13 paragraph 5).
Examiner acknowledges the arguments and respectfully notes that MPEP states that “disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments” (see MPEP § 2123.II), and “when the reference relied on expressly anticipates or makes obvious all of the elements of the claimed invention, the reference is presumed to be operable” (see MPEP 2121.I). Additionally, “a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including nonpreferred embodiments” (see MPEP 2123.I). In this instance, Examiner is not preferentially selecting candelilla wax, rather Huang at [0014] teaches the plant wax is selected from at least one of… candelilla wax. Even if candelilla wax is a non-preferred embodiment, Huang would have reasonably suggested to one having ordinary skill in the art that candelilla wax is suitable.
In response to applicant's argument that Huang makes no reference to thermal conductivity or acid number as parameters as guide, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
Furthermore, with respect to the rejection on the claimed “ranges”, the rejection is based on overlap (see MPEP 2144.05(I)), not the argued “case of routine optimization” (see MPEP 2144.05(II).A).
As such, Huang has reasonably met the limitations of the respective independent claims 1 and 29, and the rejections are maintained.
Applicant notes that a significant inconsistency in the Examiner’s treatment of the two cited primary references… with respect to Li… Examiner maintains that the “comprising” language of the claims permits carnauba wax to included as part of the claimed vegetable wax component, and relies on the combined teaching of the carnauba and candelilla wax to meet the claimed limitations… with respect to Huang… Examiner selectively reads only candelilla wax from Huang’s equally non-preferential list of five plant waxes, which includes also carnauba wax… these interpretive positions are contradictory (see Applicant’s arguments at page 13 paragraph 6 to page 14 paragraph 4).
Examiner acknowledges the arguments and respectfully notes that prior to the narrowing amendment, the transitional phrase is “comprising of” is inclusive or open-ended and does not exclude additional, unrecited elements or method steps (see MPEP 211.03(I)), and the amended transitional phrase “consisting of” excludes any element, step, or ingredient not specified in the claim (see MPEP 211.03(II)). Examiner interpretation is adjusted to what is claimed.
Additionally, “as long as the judgment on obviousness takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper” (see MPEP § 2145.X.A).
Examiner’s interpretation is based on what is required of the claim and what is within the level of ordinary skill at the time the claimed invention was made. What would the prior art, in this instance, Huang would have reasonably suggested to one having ordinary skill in the art at the time the claimed invention was made? As mentioned in bullet 19, Huang has reasonably met the limitations of the respective independent claims 1 and 29. Thus, the rejections are maintained.
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 MARITES A GUINO-O UZZLE whose telephone number is (571)272-1039. The examiner can normally be reached M-F 8am-4pm EST.
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/MARITES A GUINO-O UZZLE/Examiner, Art Unit 1731
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