DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claims 1-11 are pending as amended on 9/29/2023.
Election/Restrictions
Applicant’s election without traverse of Group I (claims 1-8) and species wherein:
(A) is produced from isocyanurate-type hexamethylene diisocyanate (a1-1) and a compound (a2) having caprolactone units, and,
the composition comprises a combination of ACMO (B1) and TCDDA (B2),
in the reply filed on 6/16/2026 is acknowledged.
Claims 9-11 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
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 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Nakamura et al (US 20170313804).
Nakamura discloses a curable resin composition which includes a urethane (meth)acrylate resin (A) and a polymerization initiator (B) [0012]. Nakamura exemplifies a composition (which anticipates claim 1) comprising a urethane acrylate A13, which has 2.13 mmol/g acryloyl group content (see table 2) and photopolymerization initiators (Irgacure 907 and EAB-SS) (see Table 6, Example 13).
Nakamura fails to teach that the composition is “for stereolithography” as presently recited. However, if the body of a claim fully and intrinsically sets forth all 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. Furthermore, statements in the preamble reciting the purpose or intended use of the claimed invention must be evaluated to determine whether the purpose or intended use results in a structural difference between the claimed invention and the prior art. Only if such structural difference exists, does the recitation serve to limit the claim. If the prior art structure is capable of performing the intended use, then it meets the claim. (See MPEP 2111.02 regarding the effect of the preamble).
While Nakamura fails to expressly describe the curable resin composition as being “for stereolithography” as presently recited in the preamble of the claim, Nakamura teaches a composition comprising the same components as is presently claimed, and must therefore possess the same physical properties as the presently claimed composition. There is reasonable basis to conclude, therefore, that Nakamura discloses a composition which is capable of being used for stereolithography.
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) 1-8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ishikawa et al (JP 2019112627A; citations made to the included machine translation).
As to claims 1-4, Ishikawa discloses a curable resin composition comprising a urethane (meth)acrylate (A) (overview) and a photopolymerization initiator [0058]. The urethane (meth)acrylate is formed from reaction of a polyvalent isocyanate compound (a1) [0015] with a hydroxyl group-containing acrylate containing structure derived from caprolactone (a2) [0014].
Ishikawa discloses a trimer of hexamethylene diisocyanate as a most preferred polyvalent isocyanate [0016], and exemplifies an isocyanurate of hexamethylene diisocyanate [0075], corresponding to a polyisocyanate (a1) represented by formula (1) as recited in instant claim 2 (wherein R1 is linear C6 alkyl, as recited in claim 3).
Ishikawa’s hydroxyl group-containing (meth)acrylate compound modified with caprolactone has a structure [0018]:
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535
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wherein “n” is preferably 1 to 5, which corresponds to compound (a2) recited in instant claim 4 having a structure according to formula (4), wherein “n” is 1 to 5.
Ishikawa teaches that the ethylenically unsaturated group content (i.e., the (meth)acryloyl group content) of the urethane (meth)acrylate resin is preferably 1 to 3 mmol/g; if too small, hardness after irradiation decreases, and if too large, flexibility of the coating film decreases [0031]. It would have been obvious to the person having ordinary skill in the art, therefore, to have selected any appropriate content of meth(acryloyl) group within Ishikawa’s preferred range of 1 to 3 mmol/g in order to achieve a desired balance of hardness and flexibility, including a content within the presently claimed range of 0.8 to 2.2 mmol/g.
Ishikawa fails to teach that the composition is “for stereolithography” as presently recited. However, if the body of a claim fully and intrinsically sets forth all 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. Furthermore, statements in the preamble reciting the purpose or intended use of the claimed invention must be evaluated to determine whether the purpose or intended use results in a structural difference between the claimed invention and the prior art. Only if such structural difference exists, does the recitation serve to limit the claim. If the prior art structure is capable of performing the intended use, then it meets the claim. (See MPEP 2111.02 regarding the effect of the preamble).
While Ishikawa fails to expressly describe the curable resin composition as being “for stereolithography” as presently recited in the preamble of the claim, Ishikawa suggests a composition comprising the same components as is presently claimed, and must therefore possess the same physical properties as the presently claimed compositions. There is reasonable basis to conclude, therefore, that Ishikawa suggests a composition which is capable of being used for stereolithography.
As to claims 5-8, Ishikawa teaches that the composition comprises a compound (B), and names (meth)acryloylmorpholine (b11) (which has a structure according to formula 5 recited in instant claim 8) as particularly preferred from the viewpoint of excellent balance between substrate adhesion and surface hardness [0038]. Ishikawa exemplifies a composition comprising a urethane resin (a-1) and acryloyl morpholine, wherein the content of the urethane resin (a-1) is 29 mass% ([0082], example 6), which falls within the presently claimed range of 1 to 50 mass%. As evidenced by the instant specification, the Tg of a polymer of ACMO is 145 C, which falls within the range recited in claim 6. Note that claim 7 is met for the same reasons discussed for claim 5; while claim 7 further limits the Tg of a polymer of B2, both claims 5 and 7 are met by a composition which has only a monofunctional compound B1 and no difunctional compound B2 in view of the “and/or” in claim 5.
Alternatively as to claim 7 (and as to the elected species):
Ishikawa teaches that the compound (B) can include bifunctional monomers [0037] in addition to nitrogen-containing compound (b1). See also [0045]: Ishikawa teaches that the content of (b1) is preferably 30-100 wt% of the unsaturated compound (B), otherwise it is difficult to achieve a balance between substrate adhesion and surface hardness. Ishikawa names tricyclodecane dimethanol di(meth)acrylate as an example bifunctional monomer [0040]. As Ishikawa’s compound (B), it would have been obvious to the person having ordinary skill in the art to have utilized ACMO (i.e., (b1)) in combination with any of the additional monomers named by Ishikawa, including tricyclodecane dimethanol diacrylate (TCDDA), in order to provide a composition which achieves a desired balance between surface hardness and substrate adhesion. TCDDA is the elected difunctional (B2) compound and has a Tg of 111 C (see instant specification), which falls within the presently claimed range of 40 C or more.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RACHEL KAHN whose telephone number is (571)270-7346. The examiner can normally be reached Monday to Friday, 8-5.
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/RACHEL KAHN/Primary Examiner, Art Unit 1766
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