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 .
The Office Action is in response to the application filed 12/26/2023.
Claim Analysis
Summary of Claim 1:
A dental photopolymerizable composition for 3D printer, comprising
(a) methacrylic polymerizable compound having an allophanate group,
(b) methacrylic polymer having one or two (meth)acryloyloxy groups, and
(c) photoinitiator.
Claim Objections
Claims 1-19 are objected to because of the following informalities:
The claim language “a dental photopolymerizable composition for 3D printer” (emphasis added) is improper grammar. Applicant is suggested to rephrase to “a dental photopolymerizable composition for a 3D printer” or “a dental photopolymerizable composition for 3D printing” (emphasis added). Appropriate correction is required.
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 1-16 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Ding et al. (WO 2021/089313; hereafter as “Ding”).
Regarding Claims 1-2 and 8, Ding teaches a curable composition for a photopolymerization 3D printing process for producing dental molds [Claim 13], corresponding to a dental photopolymerizable composition for 3D printer of Claim 1, comprising:
11-59 wt. % methacrylated polyurethane comprising an allophanate group [Claim 4; Page 17, Lines 31-32; Page 43, Lines 1-9] corresponding to the methacrylic polymerizable compound having an allophanate group of Claim 1, to 30 to 99% by weight of the (a) methacrylic polymerizable compound having an allophanate group of Claim 2;
9-59 wt. % methacrylamides with methacryloylmorpholine [Claim 1; Page 11, Lines 19-20], thereby reading on the methacrylic polymer having one methacryloyloxy group of Claim 1, and to 1 to 70% by weight of the (b) methacrylic polymer having one or two methacryloyloxy groups of Claim 2, which is equivalent to 15-100 parts by weight, which corresponds with 1 to 25 parts by weight of a methacrylic polymer having one methacryloyloxy group of Claim 8;
0.5-5 wt. % photoinitiator [Claims 1, 11; Page 43, Lines 1-9], corresponding to the photoinitiator of Claim 1, and 0.01 to 5 parts by weight of Claim 2.
However, Ding does not teach all the claimed elements in a single embodiment.
Nevertheless, Ding teaches the curable composition for a photopolymerization 3D printing process for producing dental molds, methacrylic polymerizable compound having an allophanate group, methacrylamides, such as methacryloylmorpholine, and photoinitiator with sufficient specificity that one of ordinary skill in the art would arrive at the claimed combination. Moreover, one of ordinary skill in the art at the time of the claimed invention would have found it “obvious to try” (methacrylic polymerizable compound having an allophanate group, methacrylamides, such as methacryloylmorpholine, and photoinitiator) as the teaching represents a finite number of identified, predictable combinations. KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398 (2007).
Regarding Claims 3-4 and 11-12, Ding teaches a cured photopolymerized 3D printed product with a viscosity of 90-136 mPa·s [Page 82], and a glass transition temperature of 79-129˚C. Ding also teaches the methacrylic polymerizable compound having an allophanate group preferably has a low viscosity because it permits the formation of a homogenous, single phase mixture when mixed [Page 9, Line 32– Page 10, Line 6].
However, Ding does not explicitly teach the viscosity of Claims 3 and 11, and the glass transition temperature of the cured product of the (a) methacrylic polymerizable compound of Claims 4 and 12.
However, the properties of photopolymerization 3D printing composition such as viscosity and glass transition temperature are functions of the composition of the photopolymerization composition and the method by which it is made. Since Ding teaches the photopolymerization 3D printing composition formed by the same method as required by the instant claims, as set forth in the rejection above, the photopolymerization 3D printing composition of Ding would be expected to result in the same viscosity and glass transition temperature as required by the instant claims. Furthermore, since Ding teaches the photopolymerization composition for the same 3D printing process, the photopolymerization composition of Ding would necessarily have the claimed viscosity and glass transition temperature in order to be similarly processed by a 3D printer. Case law has held that claiming of a new use, new function or unknown property which is expectedly present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977). The courts have stated that a chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 15 USPQ2d 1655, (Fed. Cir. 1990). See also In re Best, 562 F.2d 1252, 195 USPQ 430, (CCPA 1977). "Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established." Further, if it is the applicant's position that this would not be the case, evidence would need to be provided to support the applicant's position. In the alternative that the above disclosure is insufficient to anticipate the above listed claims, it would have nonetheless been obvious to the skilled artisan to produce the claimed photopolymerization 3D printing composition properties, as the reference teaches each of the claimed ingredients (methacrylic compound having an allophanate group, methacrylic polymer with a methacryloyloxy group, and photoinitiator) for the same utility (to make 3D printing compositions) and for the same purpose (to produce 3D printed dental products).
Regarding Claims 5 and 7, Ding teaches methacrylic groups preferably have methacryloyl mono-hydroxy compounds that have nucleophilic function capable of reacting with an isocyanate [Page 18, Lines 30-35].
However, Ding does not explicitly teach the (a) methacrylic polymerizable compound having an allophanate group has three of more methacryloyloxy groups of Claim 5, and the (b) methacrylic polymer having one or two methacryloyloxy groups contains at least one methacrylic polymer having two methacryloyloxy groups of Claim 7.
Nevertheless, Ding teaches the importance of methacrylic groups with hydroxyl functionality. Therefore, the number of methacryloyloxy groups of Claims 5 and 7 can be optimized to reach the desired reactivity with isocyanate via a routine optimization. The case law has held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). See MPEP 2144.05. Thus, it would have been obvious to one having ordinary skill in the art at the time of the invention was made to adjust the number of methacryloyloxy groups for the intended isocyanate reactivity and functionality via a routine optimization, thereby obtaining the present invention.
Regarding Claim 6, Ding is silent to the methacryloylmorpholine containing a urethane structure, so for the purposes of examination, will be interpreted to read on wherein the (b) methacrylic polymer having one or two methacryloyloxy groups does not contain a urethane structure of Claim 6.
Regarding Claims 9-10, 13-15: Ding teaches:
methacrylic with polymethacryloyl mono-hydroxy groups [Page 18, Lines 30-35], corresponding to the (b) methacrylic polymer having one or two methacryloyloxy groups contains a methacrylic polymer containing one or more hydroxyl groups of Claim 9;
the photoinitiator is preferably 2,4,6-trimethylbenzoyl-diphenyl-phosphine oxide [Page 47, Lines 12-16], thereby reading on the (c) photoinitiator is an acylphosphine oxide compound of Claim 10;
0.1-3% by weight of additives [Page 63, Lines 6-10], corresponding to the additive of Claim 13, and to 0.0001 to 2 parts by weight of the additive of Claim 15;
Pigments [Page 66, Lines 5-14], thereby reading on the colouring agent of Claim 14.
Regarding Claims 16 and 19, Ding further teaches:
Producing a dental mold through the use of stereolithograph [Claim 13; Page 72, Lines 26-28], corresponding to a dental product prepared by a stereolithographic 3D printer of Claim 16, and to the dental mouthpiece of Claim 19.
Claims 17-18 are rejected under 35 U.S.C. 103 as being unpatentable over Ding et al. (WO 2021/089313; hereafter as “Ding”) in view of Klun et al. (US 2021/0163664 A1; hereafter as “Klun”).
Ding teaches the orthodontic article, photopolymerizable composition for 3D printing, methacrylic compound with an allophanate group, methacrylic polymer having a methacryloyoxy group, and photoinitiator of Claim 1 as set forth above and incorporated herein by reference.
However, Ding does not explicitly teach the dental aligner of Claim 17, and denture base material of Claim 18.
Nevertheless, Klun teaches a system comprising a 3D printer to create an orthodontic article comprising a reaction product of a photopolymerizable composition [Claim 24], comprising a (meth)acrylate mono-ol with an allophanate group [Claim 1; ¶ 0080], 1-(acryloyloxy)-3-(methcryloyloxy)-2-propanol [Table 2], hydroxyethyl methacrylate [Table 2], and a photoinitiator [Claim 21].
Nevertheless, Klun teaches:
an aligner created by 3D printing [¶ 0178, 0325], corresponding to the dental aligner of Claim 17;
dentures created by 3D printing [¶ 0179], corresponding to the denture base material of Claim 18.
Klun offers the motivation that 3D printing aligners and other dental products would allow new aligner designs and give more degrees of freedom in the treatment plan [¶ 0178].
Ding and Klun are considered to be analogous art as the claimed invention, as all are in the same field of photopolymerization compounds for 3D printing dental products.
Therefore, it would be obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the dental products of Klun with the photopolymerization process of Ding, with the motivation to improve dental treatment plans, thereby arriving at the claimed invention.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DORIS LING whose telephone number is (571)270-3961. The examiner can normally be reached Monday-Friday, 8:30am-5:00pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, ARRIE LANEE REUTHER can be reached on (571)270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DORIS LING/Examiner, Art Unit 1764
/ARRIE L REUTHER/Supervisory Primary Examiner, Art Unit 1764
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