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 10/16/2025, the examiner has carefully considered the amendments. The examiner acknowledges the addition of new claim 28. The claim rejection under 35 U.S.C. § 112, 2nd paragraph for claims 11-12 has been overcome by the amendment and has hereby been withdrawn for consideration.
The Declaration under 37 CFR 1.132 filed 10/16/2025 is insufficient to overcome the rejection of claims 1 based upon Hiratani et al (WO 2020/085166) as set forth in the last Office action because: While agreed upon the urethane (meth) acrylate oligomer, Kayarad UX-6101 does not include a structure represented by formula (1) or (2), Hiratani sets forth explicit examples of compositions including a urethane (meth) acrylate oligomer including a structure represented by general formula (1) and (2) in the examples. Hiratani sets forth a polyester urethane (meth) acrylate corresponding to the claimed urethane (meth) acrylate oligomer including a structure represented by general formula (2) in examples 7 and 8—Kayarad UT-8101 and UA-122P are both polyurethane (meth) acrylate oligomer having a functionality of 2 and which includes a polyester backbone having a structure corresponding to general formula (2). Additionally, examples 28 and 30 a polycarbonate-urethane (meth) acrylate corresponding to the claimed urethane (meth) acrylate oligomer including a structure represented by general formula (1) in examples 28 and 30— KUA-PC21 and see A-5 in col. 18, lines 5-13 both are polyurethane (meth) acrylate oligomers having a functionality of 2 and which includes a polycarbonate backbone having a structure corresponding to general formula (1)—evidenced by Nishiura et al: section [0165].
In view of the foregoing, when all of the evidence is considered, the totality of the rebuttal evidence of nonobviousness fails to outweigh the evidence of obviousness.
Response to Arguments
Applicant's arguments filed 10/16/2023 have been fully considered but they are not persuasive. Applicant appears to argue the office action fails to set forth non-obviousness based upon the reasons set forth in the Declaration by Applicant, as well as, the disclosure demonstrates criticality and unexpected results, as seen in the examples, inventive vs. comparative. The office does not find this persuasive for the reasons set forth above.
Additionally, Hiratani sets explicitly sets forth in example 7 a resin composition comprising (A-2) 20 parts of urethane acrylate oligomer, Kayarad UC-8101 a polyester containing urethane (meth) acrylate oligomer (corresponding to claim (a-1) having formula (2)); 80 parts of an acrylate monomer, acrylolmorpholine; 25 parts of core-shell particles; and 2 parts of a photoinitiator. The deflection temperature is 68 deg. C and the Charpy strength is 9.8 kJ/m^2—see table 1. This is within the tolerances of applicant’s claimed invention when compared with inventive example 5. Example 8 (Hiratani) comprises 20 parts of urethane (meth) acrylate: UA-122P a polyester-urethane acrylate (corresponding to structure 2); 80 parts of acrylolmorpholine; 25 parts core shell rubber particles; and 2 parts photoinitiator. The deflection temperature is 81 deg. C and the Charpy strength is 8.2 kJ/m^2—see table 1. This is within the tolerances of applicant’s claimed invention when compared with inventive example 9. Example 28 (Hiratani) comprises 20 parts of a polycarbonate-containing polyurethane (meth) acrylate oligomer (corresponding to formula (1)); 80 parts of acrylolmorpholine; 25 25 parts core shell rubber particles; and 2 parts photoinitiator. The deflection temperature is 63 deg. C and the Charpy strength is 20.5 kJ/m^2—see table 3. This is within the tolerances of applicant’s claimed invention when compared with inventive example 11. Example 28 (Hiratani) comprises 20 parts of a polycarbonate-containing polyurethane (meth) acrylate oligomer (corresponding to formula (1)); 80 parts of acrylolmorpholine; 25 25 parts core shell rubber particles; and 2 parts photoinitiator. The deflection temperature is 64 deg. C and the Charpy strength is 11.6 kJ/m^2—see table 3. This is within the tolerances of applicant’s claimed invention when compared with inventive example 11. The primary difference is composition comprises 25 parts by mass of rubber particles; however, in the overall teachings of the reference said rubber particles are found in amounts from 2 to 65 parts by mass based on the urethane (meth) acrylate. Therefore, where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 124 (CCPA 1955). In this case, one skilled in the art prior to the effective filing date of the present invention would altering the addition amount of the rubber- based particles would tailor the impact resistance of the cured product. Furthermore, Hiratani sets forth the composition has a viscosity of 50 to 5000 MPa*s, which corresponds to applicant’s defined 0.050 Pa*s to 5 Pa*s in section [0013]. Therefore, in absence of evidence to the contrary, it is deemed a skilled artisan would have expected the argues properties. The Patent and Trademark Office is not equipped to conduct experimentation in order to determine whether Applicant’s composition differs and, if so, to what extent, from the discussed reference. Therefore, with the showing of the reference, the burden of establishing non-obviousness by objective evidence is shifted to the Applicants.
The rejection still stands (above arguments with previous rejection), wherein new claim 28 will be added—see below.
Claim Rejections - 35 USC § 102/35 USC § 103
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.
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) 1-2, 5-6, 13-14, 18-19, and 21-25 is/are rejected under 35 U.S.C. 102(a1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Hiratani et al (WO 2020/085166, wherein family member US 12,146,021 will be used as the English language equivalent).
Hiratani sets forth a curable resin composition for producing three-dimensional objects formed of a curable composition comprising a polyfunctional urethane (meth) acrylate oligomer having a molecular weight of 1,000 to 60,000; a monofunctional radically polymerizable compound having one radically polymerizable functional group; a polyfunctional radically polymerizable compound other than the urethane (meth) acrylate; rubber particles; and a radical polymerization initiator—see abstract.
Said polyurethane (meth) acrylate are reaction products obtained by allowing a hydroxyl group-containing compound and a polyisocyanate-based compound to react with each other; a product obtained by allowing an isocyanate group-containing (meth) acrylate-based compound and a polyol-based compound to react with each other; or a product obtained by allowing a hydroxy group-containing (meth) acrylate compound, a polyisocyanate compound and a polyol-based compound to react with reaction, wherein the last method is preferred from a viewpoint of imparting high impact resistance—see col. 3, lines 1-15. Said polyurethane (meth) acrylate is contained in the curable resin composition in amounts from 5 parts by mass to 70 parts by mass with respect to 100 parts by mass of the total amount of the polyurethane (meth) acrylate, monofunctional radically polymerizable compound and the polyfunctional radically polymerizable compound, preferably from 10 to 60 parts by weight with respect to 100 parts by mass of the total amount of the polyurethane (meth) acrylate, monofunctional radically polymerizable compound and the polyfunctional radically polymerizable compound —see col. 5, lines 15-25.
The radically polymerizable monofunctional monomer preferably contains a monofunctional acrylamide-based compound or a monofunctional (meth) acrylate-based compound—see col. 6, lines 50-65. Said monofunctional radically polymerizable acrylamide-based compound or monofunctional radically polymerizable (meth)acrylate-based compound is found in amounts from 5 to 100 parts by mass of with respect to 100 parts by mass of the monofunctional radically polymerizable compound—see col. 7, lines 17-30. The polyfunctional radically polymerizable compound other than the urethane (meth) acrylate includes a compound a having a radically polymerizable functional group equivalent of less than 300 g/eq and a compound having a radically polymerizable functional group equivalent of 300 g/eq or more—see col. 7, lines 45-55. Said polyfunctional monomer having a radically polymerizable functional group equivalent of less than 300 g/eq is found in amounts from 0 to 20 parts by mass with respect to 100 parts by mass of the total amounts of the monofunctional radically polymerizable compound and the polyfunctional radically polymerizable compound and the polyfunctional radically polymerizable compound having a radically polymerizable group equivalent of 300 g/eq or more is found in amounts from 0 to 50 parts by mass with respect to 100 parts by mass of the total amounts of the monofunctional radically polymerizable compound and the polyfunctional radically polymerizable compound—see col. 7, lines 65-67 and col. 8, lines 25-29.
The rubber particles include butadiene rubber, a styrene/butadiene copolymer rubber, acrylonitrile/butadiene copolymer rubber, a saturated rubber obtained by hydrogenating or partially hydrogenating any of the previous diene rubbers, a crosslinked butadiene rubber, an isoprene rubber and the like as outlined in col. 9, lines 40-50. Said rubbers are diene-based rubbers. Said rubber particles are preferrable core/shell type structure, wherein preferably the core portion is previously mentioned rubber particle and the shell portion preferably has the form of a graft-polymerized onto the surface of the core via a chemical bond—see col, 9, lines 35-55 and col. 9, line 66 to col. 10, lines 1-5, lines 17-25. The average diameter of the rubber particles is preferably from 20 nm or more to 10 microns or less, more preferably from 50 nm or more to 5 microns or less—see col. 12, lines 3-5. Said rubber particles are found in amounts from 2 parts by mass to 65 parts by mass with respect to 100 parts by mass of the polyurethane (meth) acrylate, monofunctional radically polymerizable compound and the polyfunctional radically polymerizable compound—see col. 12, lines 38-42. The radical polymerization initiator may be a photoradical polymerization initiator used in amounts from 0.1 to 15 parts by mass of the polyurethane (meth) acrylate, monofunctional radically polymerizable compound and the polyfunctional radically polymerizable compound —see col. 13, lines 59-62.
Said curable resin composition is intended for producing three-dimensional objects formed of said curable composition by selectively curing said composition layer by layer to build a three-dimensional object—see col. 16, lines 42-58.
Per examples, Hiratani sets forth compositions which appears to anticipate the instantly claimed photocurable resin composition. Hiratani sets forth in example 2 a curable resin composition comprising 30 parts by mass polyester-polyether polyurethane (meth) acrylate oligomer having a weight average molecular weight of 6.7 x 10^3 (6700 g/mol); 70 parts by mass of acrylolmorpholine (monofunctional methacrylamide monomer, wherein methacrylamide is considered methacrylate derivative); 18 parts by mass of 0.32 micron sized rubber particles having a polybutadiene core (diene core) having a grafted radically polymerizable (meth) acrylate shell; 2 parts by mass of Irgacure 819, as a photoinitiators. The polyester/polyether urethane (meth) acrylate has a polyester backbone which appears to anticipate general formula (1), wherein it is deemed the R2 group should inherently be an alkylene group having at least one carbon atom; however, the office is unable to obtain/find a general formula, and sine the Patent and Trademark Office is not equipped to conduct experimentation in order to determine whether Applicant’s composition differs and, if so, to what extent, from the discussed reference. Therefore, with the showing of the reference, the burden of establishing non-obviousness by objective evidence is shifted to the Applicants.
Thus, in absence of evidence to the contrary it is deemed the composition of claims 1-2, 5-6, 13-14, 18-19, and 21-24 are deemed anticipated by the composition of example 3, wherein the urethane (meth) acrylate having a polyester moiety reading on formula (2) is found in a content of 20 parts by mass based on (A) + (B) and the rubber particles are found in an amount of 18 parts by mass based on (A) + (B)., wherein in this instance claim 21 is met since the composition does not comprise an alicyclic methacrylate compound The cured product is deemed to anticipate and/or render obvious claim 25.
Claim(s) 7-10 and 12 is/are rejected under 35 U.S.C. 102(a1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Hiratani et al (WO 2020/085166, wherein family member US 12,146,021 will be used as the English language equivalent).
Hiratani is set forth above as anticipating and/or rendering obvious instant claims 1-2, 5-6, 13-14, 18-19, and 22-24 for the reasons set forth above.
Regarding claims 7-10 and 12: Per example 29, Hiratani sets forth a composition comprising 20 parts by mass of a polyester/polyether urethane (meth) acrylate oligomer having a weight average molecular weight of 6700 g/mol; 60 parts by mass of acrylolmorpholine (monofunctional acrylamide monomer); 20 parts of a polycarbonate diol diacrylate having an acrylate equivalent of 450 g/eq; 25 parts of core/shell rubber particles having a polybutadiene core and an grafted (meth) acrylate (radically polymerizable shell); and 2 parts by weight of Irgacure 819 as a photoinitiator.
The polyester/polyether urethane (meth) acrylate has a polyester backbone which appears to anticipate general formula (1), wherein it is deemed the R2 group should inherently be an alkylene group having at least one carbon atom; however, the office is unable to obtain/find a general formula, and sine the Patent and Trademark Office is not equipped to conduct experimentation in order to determine whether Applicant’s composition differs and, if so, to what extent, from the discussed reference. Therefore, with the showing of the reference, the burden of establishing non-obviousness by objective evidence is shifted to the Applicants. Another primary difference is the rubber diene-based particles are found in an amount of 25 part by weight based on the total of A + B. However, in the overall teachings of the reference said rubber particles are found in amounts from 2 to 65 parts by mass based on the urethane (meth) acrylate. Therefore, where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 124 (CCPA 1955). In this case, one skilled in the art prior to the effective filing date of the present invention would altering the addition amount of the rubber- based particles would tailor the impact resistance of the cured product.
Claim(s) 11 and 20 is/are rejected under 35 U.S.C. 102(a1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Hiratani et al (set forth above).
Regarding claim 11: In example 5 Hiratani sets forth a composition comprising Hiratani sets forth in example 2 a curable resin composition comprising 20 parts by mass polyester-polyether polyurethane (meth) acrylate oligomer having a weight average molecular weight of 6.7 x 10^3 (6700 g/mol); 70 parts by mass of acrylolmorpholine (monofunctional methacrylamide monomer, wherein methacrylamide is considered methacrylate derivative); 10 parts of diacrylic acid ester of caprolactone 2 mol adduct of neopentyl glycol hydroxypivalate (270 g/eq acrylic functional groups); 25 parts by mass of 0.32 micron sized rubber particles having a polybutadiene core (diene core) having a grafted radically polymerizable (meth) acrylate shell; 2 parts by mass of Irgacure 819, as a photoinitiators. The polyester/polyether urethane (meth) acrylate has a polyester backbone which appears to anticipate general formula (1), wherein it is deemed the R2 group should inherently be an alkylene group having at least one carbon atom; however, the office is unable to obtain/find a general formula, and sine the Patent and Trademark Office is not equipped to conduct experimentation in order to determine whether Applicant’s composition differs and, if so, to what extent, from the discussed reference. Therefore, with the showing of the reference, the burden of establishing non-obviousness by objective evidence is shifted to the Applicants. Another primary difference is the rubber diene-based particles are found in an amount of 25 part by weight based on the total of A + B. However, in the overall teachings of the reference said rubber particles are found in amounts from 2 to 65 parts by mass based on the urethane (meth) acrylate. Therefore, where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 124 (CCPA 1955). In this case, one skilled in the art prior to the effective filing date of the present invention would altering the addition amount of the rubber- based particles would tailor the impact resistance of the cured product.
Regarding claim 20: Hiratani sets forth in example 11 a resin composition comprising 30 of urethane (meth) acrylate; 50 parts of acrylolmorpholine; 20 parts by weight of acryloylpiperidine; 25 parts by weight of core/shell rubber particles; and 2 parts by weight Irgacure 819, wherein the 20 parts by weight of acryloylpiperidine reads on claim 20. The primary difference is composition comprises 25 parts by mass of rubber particles; however, in the overall teachings of the reference said rubber particles are found in amounts from 2 to 65 parts by mass based on the urethane (meth) acrylate. Therefore, where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 124 (CCPA 1955). In this case, one skilled in the art prior to the effective filing date of the present invention would altering the addition amount of the rubber- based particles would tailor the impact resistance of the cured product.
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) 3-4,15-17, and 28 is/are rejected under 35 U.S.C. 103 as obvious over Hiratani et al (cited above).
Hiratani is set forth above. Hiratani fails to expressly set forth the chemical formula of the urethane (meth) acrylate oligomers found in the examples; however, in the overall teachings of the reference Hiratani sets forth polyesters polyols based on polyhydric alcohols, such as ethylene glycol, propylene glycol, diethylene glycol, trimethylene glycol, 1,4-tetramethylenediol, 1,3-tetramethylenediol, 2-methyl-1,3-trimethylenediol, 1,5-pentamethylenediol, neopentyl glycol, 1,6-hexamethylenediol, 3-methyl-1,5-pentamethylenediol, 2,4-diethyl-1,5-pentamethylenediol, glycerin, trimethylolpropane, trimethylolethane, cyclohexanediols (e.g., 1,4-cyclohexanediol), bisphenols (e.g., bisphenol A), and sugar alcohols (e.g., xylitol and sorbitol) and polyvalent carboxylic acid such as malonic acid, maleic acid, fumaric acid, succinic acid, glutaric acid, adipic acid, suberic acid, azelaic acid, sebacic acid, and dodecanedioic acid; alicyclic dicarboxylic acids, such as 1,4-cyclohexanedicarboxylic acid; and aromatic dicarboxylic acids, such as terephthalic acid, isophthalic acid, o-phthalic acid, 2,6-naphthalenedicarboxylic acid, p-phenylenedicarboxylic acid, and trimellitic acid—see col. 4, lines 7-25. Therefore, from the overall teachings of the reference it would have been obvious to obtain a polyurethane (meth) acrylate oligomer having general formula (2), wherein R2 is defined as found in instant claim 3 and/or claim 4 with a reasonable expectation of obtaining a cured resin product having excellent impact resistance in absence of evidence to the contrary. Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 124 (CCPA 1955). In this case, one skilled in the art prior to the effective filing date of the present invention would altering the addition amount of the rubber- based particles would tailor the impact resistance of the cured product.
Regarding claims 15-17: Hiratani sets forth the monofunctional radically polymerizable compound may be selected from monofunctional radically polymerizable compound having an ethylenically unsaturated group other than the (meth)acryloyl group include: N-vinyl compounds, such as N-vinylpyrrolidone, N-vinylcaprolactam, N-vinylimidazole, N-vinylmorpholine, and N-vinylacetamide—see col. 6, lines 43-46. The content of said monofunctional radically polymerizable compounds are found in amounts from 5 to 100 parts of more with respect to 100 parts total of the monofunctional polymerizable monomer—see col. 7, lines 17-30. Thus, it would have been within the skill level of an ordinary artisan to use an N-vinyl compound having cyclic structures such as those listed above with a reasonable expectation of obtain a cured product having excellent impact resistance in absence of evidence to the contrary and/or unexpected results.
Regarding claim 28: Hiratani sets forth monofunctional acrylate compounds useable in the composition in columns 5-6, it would have been within the skill level of an ordinary artisan to use an any monofunctional monomer, such as those listed above with a reasonable expectation of obtain a cured product having excellent impact resistance in absence of evidence to the contrary and/or unexpected results.
Conclusion
THIS ACTION IS MADE FINAL. 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 SANZA L MCCLENDON whose telephone number is (571)272-1074. The examiner can normally be reached 8-5.
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/SANZA L. McCLENDON/Primary Examiner, Art Unit 1765
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