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 .
Specification
The disclosure is objected to because of the following informalities: The specification does not include a section entitled brief description of the drawings.
Appropriate correction is required.
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.
Claim 10 is 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.
Regarding claim 10, the phrase "very specifically" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 10 recites the broad recitation that the hydroxyalkyl(meth)acrylate is one of the listed monomers, and the claim also recites that its very specifically a shorter list of monomers, which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-8, 15-19, and 20-32 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Coats et al (US 2004/0135292).
With regards to claim 1, Coats teaches a photocurable resin (abstract) that contains a urethane acrylate oligomer and an acrylate monomer (abstract) wherein the urethane acrylate is an elastic urethane acrylate oligomer (0073) and the acrylate monomer includes trimethylolpropane triacrylate (0021) reading on having a functionality of 3. Coats further teaches the composition to contain a photoinitiator (0009).
With regards to claim 2, Coats teaches the acrylate monomer to include trimethylolpropane triacrylate (0021 and 0034), ethoxylated pentaerythritol tetraacrylate (0031).
With regards to claim 3, Coats teaches the acrylate monomer to include ethoxylated pentaerythritol tetraacrylate (0031).
With regards to claims 4 and 5, Coats teaches the acrylate monomer to include trimethylolpropane triacrylate (0021 and 0034), ethoxylated pentaerythritol tetraacrylate (0031).
With regards to claims 6 and 7, Coats teaches the acrylate monomer to include ethoxylated pentaerythritol tetraacrylate (0031).
With regards to claim 8, Coats teaches the urethane oligomer to have the following structure:
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(0011) wherein
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(0012-0014).
With regards to claims 15 and 16, Coats teaches the amount of tetrafunctional oligomer to be 48% and the amount of urethane oligomer to be 38.25% (0105 example 1) reading on a ratio of 55:44.
With regards to claim 17, Coats teaches the amount of multifunctional (meth)acrylate to be 51% and the amount of oligomer to be 32.25 (0114 example 4) reading on a ratio of 61:39.
With regards to claim 18, Coats teaches the amount of oligomer to be 14.8-38.8 and total amount of trifunctional (meth)acrylate to be 25.7-73.7% (0083 table 1B).
With regards to claim 19, Coats teaches the amount of oligomer to be from 21.8-31.8% (0083 table 1B).
With regards to claims 21-22, 27-28, and 31-32, Coats teaches the composition to have a high heat deflection temperature (0048) but is silent as to values. However, 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 heat deflection temperature 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.
With regards to claims 24 and 25, Coats teaches a process of making a three-dimensional object by stereolithography to include applying a coating and applying actinic radiation to said layer followed by applying the composition in another layer, and exposing to radiation and repeating as much as desired (0038) wherein the radiation is an ultraviolet radiation (0004).
With regards to claim 26, Coats teaches the composition to be applied using an ink-jet printer (0006).
With regards to claims 29 and 30, Coats teaches the composition to be used to create three-dimensional objects (0003)
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 9-14 are rejected under 35 U.S.C. 103 as being unpatentable over Coats et al (US 2004/0135292) in view of Schwalm et al (US 2016/0107987).
The discourse of Coats is adequately set forth in paragraph 8 above and is herein incorporated by reference.
With regards to claims 9-14, Coats does not teach the urethane acrylate oligomer to be formed from the claimed reaction.
Schwalm teaches a method for preparing urethane (meth)acrylates (title) that includes reacting a hydroxyalkyl (meth)acrylate with a lactone followed by reacting with an aliphatic diisocyanate (abstract) wherein the urethane has the following structure:
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(0031) wherein
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(0033-0037). Schwalm teaches the hydroxy alkyl (meth)acrylate to include the following structure:
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(0031) and includes hydroxyethyl (meth)acrylate (0044). Schwalm teaches the lactone compound to have the following compound:
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(0031) and to include epsilon-caprolactone (0047). Finally, Schwalm teaches the isocyanate compound to include di(isocyanatocyclohexyl)methane (reading on dicyclomethane diisocyanate) (0086). Schwalm teaches the motivation for using this urethane acrylate in a radiation curable composition (0029) to be because it gives increased flexibility (0030). Schwalm and Coats are analogous in urethane (meth)acrylates and their use of (meth)acrylate in a photocurable coating composition. In light of the benefit above, it would be obvious to one skilled in the art prior to the effective filing date of the present invention to use the urethane of Schwalm in the composition of Coats, thereby obtaining the present invention.
Claim(s) 20 is rejected under 35 U.S.C. 103 as being unpatentable over Coats et al (US 2004/0135292).
The disclosure of Coats is adequately set forth in paragraph 8 above and is herein incorporated by reference.
With regards to claim 20, Coats teaches the amount of multifunctional (meth)acrylate to be 51% and the amount of oligomer to be 32.25 (0114 example 4) reading on a ratio of 61:39.
Coats does not teach the addition of carbon black.
It is known to those skilled in the art prior to the effective filing date of the present invention that the motivation for adding carbon black is because it provides enhanced color and tinting, is an effective UV absorber, it has strong electrical conductivity, high thermal stability and is cost efficient and readily available. Due to the above benefit, it would have been obvious to one skilled in the art prior to the effective filing date of the present invention to add carbon black to the composition of Coats, thereby obtaining the present invention.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The following references also teach a coating composition that contains a urethane acrylate oligomer and a multifunctional (meth)acrylate: Decker et al (1989, Macromolecules, 22, 4455-4462), Ramos et al (WO 2006/107759), and Kuzutani et al (JP 2013170200).
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