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 .
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.
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1 - 11 in the reply filed on 2/20/26 is acknowledged.
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.
Claim(s) 1 – 2, 5 – 6 and 11 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 20200131356 A1 to Zech et al. hereinafter “Zech”.
Zech is directed to radiation curable compositions which can be used for additive manufacturing to produce 3-D articles such as orthodontic treatment brackets [0002 – 0004].
Regarding claims 1 – 2 and 5 – 6, Zech teaches compositions at [0418] comprising Diol-6000-DMA (alpha, gamma methacrylated copolymer of ethylene oxide / THF), diurethane methacrylate (UDMA / 2,2,4-trimethylhexamethylenebis(2-carbamoyloxyethyl) dimethacrylate / CAS 72869-86-4) and Irgacure 819 (photoinitiator). UDMA is equivalent to applicant’s (a-1), Irgacure 819 is a photoinitiator. UDMA is a difunctional reactive monomer.
The composition of Zech is capable of being used in a stereolithograph process to produce a 3-D article using radiation to cure the product.
As to claim 11, Zech is directed to radiation curable compositions which can be used for additive manufacturing to produce 3-D articles such as orthodontic treatment brackets [0002 – 0004]. Stereolithography is a type of 3-D printing.
The determination of whether a preamble limits a claim is made on a case-by-case basis in light of the facts in each case; there is no litmus test defining when a preamble limits the scope of a claim. Catalina Mktg. Int’l v. Coolsavings.com, Inc., 289 F.3d 801, 808, 62 USPQ2d 1781, 1785 (Fed. Cir. 2002).
No terminology in the preamble limits the structure of the claimed invention. The preamble in this case was read as a future intended use. If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999). See also Rowe v. Dror, 112 F.3d 473, 478, 42 USPQ2d 1550, 1553 (Fed. Cir. 1997).
Claim(s) 1 – 3, 5 - 7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 20050014861 A1 to Quan, Xuejun et al. hereinafter “Quan”.
Quan is directed to self-adhering dental compositions with improved adhesion to various dental substrates [0001].
Regarding claims 1 – 3, Zech teaches a composition at Example 1, [0071] which when mixed comprises BisGMA (monomer a-2), GDM-P (glyceryldimethacrylate phosphate), GDM (glycerlydimethacrylate, monomer A), HEMA (monofunctional monomer (C)), UDMA (monomer a-1), ETMPTA (ethoxylated trimethylolpropane triacrylate, monomer (A)) and CQ (camphorquinone, photoinitiator).
Bis-GMA (a-2) is an aromatic compound based (meth)acrylic acid ester comprising 2 hydroxyl groups.
As to claims 5 – 7, UDMA is equivalent to compound (a-1) = CAS 72869-86-4 = Di-2-methacryloxyethyl 2,2,4-trimethylhexamethylenedicarbamate = 2,2,4-trimethylhexamethylenebis(2-carbamoyloxyethy) dimethacrylate. HEMA is a monofunctional monomer with one hydroxyl group.
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.
Claim(s) 8 - 10 are rejected under 35 U.S.C. 103 as being unpatentable over US 20050014861 A1 to Quan, Xuejun et al. hereinafter “Quan”.
Quan is directed to self-adhering dental compositions with improved adhesion to various dental substrates [0001].
For the limitations of the independent claim refer to paragraphs 14 – 16 supra.
Regarding claims 8 and 10, Quan is silent as to the inclusion of these limitations. However, Quan teaches that phenyl methacryloxyethyl phosphate (phenyl-P) can be used as a monomer with an acidic group. Therefore, it would have been obvious to one of ordinary skill to add or substitute phenyl-P for GDM-P in Example 1 as this is directly taught. Pheny-P in monofunctional, comprises a phenyl ring, and has a BP of approximately 411.8C. See phenyl methacryloxyethyl phosphate AND boiling point - Google Search.
As to claim 9, Quan is silent as to the inclusion of this limitation. However, Quan teaches that lauryl methacrylate can be used as a monomer without an acidic group [0049]. Therefore, it would have been obvious to one of ordinary skill to add or substitute lauryl methacrylate in Example 1 as this is directly taught.
Allowable Subject Matter
Claim 4 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PETER A. SALAMON whose telephone number is 571-270-3018. The examiner can normally be reached M-F: 9AM - 6PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Curt Mayes can be reached at 571-272-1234. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
PAS 4/4/26
/PETER A SALAMON/Primary Examiner, Art Unit 1759