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 .
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-11 in the reply filed on April 23, 2026 is acknowledged.
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 1 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. Claims 2-11 depend on claim 1 and, therefore, are also rejected.
With regards to claim 1, the claim states that the first crosslinker has a rigid backbone and that the second crosslinker has a flexible background. However, neither the specification or the claims make clear as to what is considered to be rigid and flexible. Further, the specification makes no mention of what compounds it considers to be rigid or flexible in the backbone. The specification does give one example of the first claimed crosslinker and the second claimed crosslinker, however, both compounds are very similar in structure with no showing of how one is considered to be flexible and one rigid.
The terms “flexible” and “rigid” in claim 1 are a relative term which renders the claim indefinite. The terms “flexible” and “rigid” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
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 and 11 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Chen et al (WO 2017/006173).
With regards to claim 1, Chen teaches crosslinked polymers for orthodontic appliances and light polymerizable liquid composition used to make the crosslinked polymer (abstract) using additive manufacturing (page 12). Chen teaches the composition to include a photoinitiator (page 11-12) and a combination of monomers that include CN991 and CN9782 (page 36 table 2) which correspond to Aliphatic urethane diacrylate and aromatic urethane diacrylate oligomer. Chen teaches the tensile strength of the polymer to be greater than 4000 psi (37.6 MPa) (page 4), a tensile modulus of 800 to 2000 MPa (page 4), and an elongation at break greater than 30% (page 4).
Chen is silent on the rigidity of the compounds, however, as stated above, it is unclear as to what constitutes a compound having a rigid or flexible backbone. It is considered by those skilled in the art prior to the effective filing date of the present invention that compounds consider monomers having aromatic rings to be rigid and those without being flexible.
With regards to claim 11, Chen teaches the composition to be used to form an aligner for teeth (abstract).
Claims 1-11 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Ling et al (US 2022/0251250).
With regards to claim 1, Ling teaches a photo-curable resin composition for fabrication of printed objects including clear aligners (abstract) that includes a photo-initiator (0019) and a mixture of monomers including BisGMA (bisphenol A Glycidyl methacrylate (0028)) and EBPADMA (ethoxylated bisphenol A dimethacrylate (0029)) (0036 table 1) as applicants cite in the specification as reading on the claimed first and second crosslinker. Ling teaches the tensile strength to be 49.8 +/- 3.3 MPa (reading on about 50 MPa) and the modulus to be 1554.9 MPa.
Ling is silent on the strain at break of the composition. However, because the composition contains the same compounds as claimed and have the claimed tensile strength and modulus strength, 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 are used, the claimed physical properties relating to the strain at break 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 2-5, Ling teaches the composition to include bisphenol A glycidyl methacrylate (0036 table 1) as applicants cite in the specification as reading on the claimed first crosslinker.
With regards to claims 6-9, Ling teaches the composition to include ethoxylated bisphenol A dimethacrylate (0036 table 1) as applicants cite in the specification as reading on the claimed second crosslinker.
With regards to claim 10, Ling teaches the composition to include a photo-initiator that includes bis(2,4,6-trimethylbenzoyl)-phenylphosphine oxide (0019 and 0036 table 1).
With regards to claim 11, Ling teaches the composition to be used for clear aligners to align a person’s teeth (abstract).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The following references teach the claimed composition containing a cyclic (meth)acrylate and a non-cyclic (meth)acrylate with a photoinitiator: Takada et al (US 2021/0038481), Hohmann (US 2021/0353508), Bonderer et al (US 2020/0172747), and Sun (US 2021/0108014).
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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/JESSICA WHITELEY/Primary Examiner, Art Unit 1763
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