DETAILED ACTION
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 3/30/2026 has been entered.
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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55. The priority document was received 9/28/2023.
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.
Claims 1, 2, 5-10, 12, 14, and 17 (all pending claims are 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.
With regards to independent claims 1, 5, 7, and 8, said claims are held to be indefinite because it is unclear what is meant by “selected from the group consisting of elastomers and thermoplastic resins which are solid at 25C and have a skeleton in which the same structure is repeated. “ Specifically, it is unclear if the clauses “which are solid at 25C” and “have a skeleton in which the same structure is repeated” apply to both the elastomers and the thermoplastic resins or just the thermoplastic resins. Furthermore, it is unclear how one of ordinary skill in the art would determine if a compound has “a skeleton in which the same structure is repeated.” For instance, does a random copolymer meet said criteria? Does any compound with a repeating unit (e.g. oligomers and (co)polymers) meet said definition? Does the term further limit the claimed “elastomers and thermoplastic resins”?
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, 2, 10, 12, and 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yamada et al (US 2017/0145137) in view of Baba et al (US 2024/0227284).
Yamada teaches a photocurable composition having a sheet shape at 25°C in an uncured state (0032-wherein a viscosity of 500 Pa*s indicates a thick fluid that flow slowly and would be difficult to pour). The photocurable composition consists of: a component (A); and a component (B), wherein the photocurable composition is free from a film-forming component, the component (A) is a urethane-modified (meth)acrylate oligomer synthesized from a component (A-1), a component (A-2) and a component (A-3) (abstract) wherein the (A-1) is a polyol (A-2) is an aromatic polyisocyanate compound, and the component (A-3) is a (meth)acrylate having a hydroxy group within a molecule (abstract), and component (B) is a photoinitiator (0039-0040). The polyol (A1) may comprise a polyether modified aromatic polyol such as those obtained from bisphenol A (0019) and ethylene oxide or propylene oxide (0020). Said polyol is understood to anticipate component A1 of claim 1. The reference teaches diluting agent can be added to the composition consisting of initiator and urethane acrylate “if needed” (0039). Thus, said reference is understood to read on the claimed photocurable composition consisting of the component(A) and the component (B). With regards to the limitation of claim 1 that the “the photocurable composition is free from a film-forming component…”, Yamada is understood to anticipate said limitations since the reference is silent to the presence of said film-forming components.
Yamada is relied upon as above but does not teach the aromatic diisocyanate component may comprise isophorone diisocyanate. However, Baba teaches the composition detailed above wherein the diisocyanate component may be an isophorone diisocyanate (0084). Thus, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to utilize isophorone diisocyanate as the diisocyanate component taught in Yamada. The motivation for doing so would have been Baba teaches said diisocyanates are functionally equivalent to the diisocyanate disclosed in Yamada for such photocurable compositions.
With regards to claim 2, Yamada is relied upon as above. Yamada is understood to have two (meth)acrylol groups per molecule. Yamada does not teach the component A should have a weight average molecular with of 1,000-50,000 However, Baba teaches a photocurable composition comprising a component (A); and a component (B), wherein the photocurable composition is free from a film-forming component (Baba is silent to the presence of a film-forming component), the component (A) is a urethane-modified (meth)acrylate oligomer synthesized from(A-1) an ethylene oxide-modified bisphenol or a propylene oxide modified bisphenol (0082-0083; herein understood to read on the general formula of claim 1), (A-2) a polyisocyanate compound (0082), and (A-3) a (meth)acrylate having a hydroxy group within a molecule (0082), and a photo-initiator (0102). Baba teaches component (A) preferably has a weight average molecular weight of 1,000 to 50,000 (0087). Thus, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to utilize a component A with a molecular weight of 1,000-50,000 because Baba teaches urethane modified (meth)acrylate compositions are preferred in photocurable compositions.
With regards to claim 10, Yamada teaches the photocurable composition may be applied to a PET release film (0101).
With regards to claim 17, Yamada fails to teach the claimed compound wherein R3 and R4 are each independently a divalent hydrocarbon having 4 or more carbon atoms. However, the courts have held that compounds which are homologs (compounds differing regularly by the successive addition of the same chemical group, e.g., by -CH2- groups) are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties (see MPEP 2144.09). Thus, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to utilize a compound wherein R3 and R4 are each independently a divalent hydrocarbon having 4 or more carbon atoms as said compounds are homologs of the structure taught in Yamada wand would be expected to possess the same or similar properties.
Response to Arguments
Applicant's arguments filed 3/30/2026 have been fully considered but they are not fully persuasive. To the extent the examiner maintains previous rejections, applicant’s arguments are addressed herein.
Patentability over Yamada and Baba
With regards to the rejection of claims under 35 U.S.C. §103 as being unpatentable over Yamada, and further in view of Baba, Applicant argues Baba relates to a technique for producing a three-dimensional molded object by additive manufacturing and contains no disclosure whatsoever
regarding the problems addressed by the present application. Said argument is noted but is not persuasive as the examiner maintains the position that Baba is relevant prior art because it is drawn to the same field of endeavor-photocurable resin compositions comprising diisocyanates. Applicant further argues the rejection is based upon hindsight and that there is insufficient guidance or instruction to one of ordinary skill in the art in selecting isophorone diisocyanate from among the large number of polyisocyanates disclosed by Baba, and to combine it in the manner proposed by the Examiner. The examiner respectfully disagrees as the courts have held it is prima facie obvious to substitute one functionally equivalent component for another.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. US 20204/00076526 teaches a photocurable composition comprising a resin polymerized from components (A-1), (A-2) , and (A-3).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KEVIN R KRUER whose telephone number is (571)272-1510. The examiner can normally be reached M-F 8am-5pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Callie Shosho can be reached at (571) 272-1123. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KEVIN R KRUER/Primary Examiner, Art Unit 1787
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