CTNF 18/483,352 CTNF 82977 DETAILED ACTION Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA. Claims filed 10/9/2023 are made of record. Claims 1-20 are currently pending in the application. Claim Rejections - 35 USC § 103 07-06 AIA 15-10-15 In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status. 07-20-aia AIA 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. 07-23-aia AIA The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows: 1. Determining the scope and contents of the prior art. 2. Ascertaining the differences between the prior art and the claims at issue. 3. Resolving the level of ordinary skill in the pertinent art. 4. Considering objective evidence present in the application indicating obviousness or nonobviousness. 07-20-02-aia AIA This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention. 07-21-aia AIA Claim s 1-9 and 11-20 are rejected under 35 U.S.C. 103 as being unpatentable over Ganapathiappan et al (US 2020/0157265 A1) . Regarding claims 1-3 and 8, Ganapathiappan et al disclose low viscosity UV-curable formulation for 3D printing (title) which reads on curable formulation in present claim 1. The liquid precursor material for dispensing in an additive manufacturing process (i.e., reads on printable resin precursor composition in present claim 1) includes a (meth)acrylate functional oligomer, a reactive diluent, (meth)acrylamide monomer and N-vinyl containing monomer (abstract) which read on at least one reactive monomer in present claim 1. See example 1 (Fig. 3), wherein the composition includes BR-744BT (i.e., aliphatic polyester urethane acrylate (see paragraph 0032) and reads on urethane acrylate oligomer in present claim 1, aliphatic urethane acrylate oligomer in present claim 2; and polyester urethane acrylate in present claim 3) and has a viscosity at 70 0 C of 15.6 cP at 70 0 C (i.e., reads on the viscosity of less than about 15 cP in present claim 1), and Omnirad 819 (i.e., reads on photoinitiator in present claim 1, see paragraph 0032). Ganapathiappan et al fail to disclose a curable precursor composition having the presently claimed properties. However, Ganapathiappan et al in the general disclosure teach that preferred ranges for the 3D printed samples are UTS (i.e., ultra tensile strength), % elongation (i.e., % elongation at break) of 25-35 MPa and 20-75%, respectively (paragraph 0036). Hence, with a % elongation at 75%, product of ultimate tensile strength falls within the range of 1,875 to 2,625 (i.e., overlaps with the product of UTS and elongation at break in present claims 1 and 8). Case law holds that when the range of instant claims and that disclosed in prior art overlap, a prima facie case of obviousness exists. See In re Wertheim , 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05. Therefore, in light of the teachings in general disclosure of Ganapathiappan et al and case law, it would have been obvious to one skilled in art prior to the filing of present application to have selected the overlapping range, for the product of ultimate tensile strength and % elongation at break, of greater than or about 2,000 as in present claim 1 and greater than or about 2,500 as in present claim 8, absent evidence to the contrary. Regarding claims 4 and 5, examples of oligomers include EB270 oligomer (aliphatic urethane acrylate) (paragraph 0032) and reads on acrylate functionality of greater than 1 as in present claim 4 and greater than about 1.3 as in present claim 5 (see paragraph 0049 of present specification). Regarding claims 6-7, Ganapathiappan et al teach that the viscosity of final formulation needs to be between 10-20 cP (paragraph 0018) which overlaps with the viscosity in present claims 6-7. Case law holds that when the range of instant claims and that disclosed in prior art overlap, a prima facie case of obviousness exists. See In re Wertheim , 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05. Regarding claim 9, Ganapathiappan et al teach that the elongation at break is 20-75% (paragraph 0036) which overlaps with the elongation at break of about 80% . Case law holds that term "about" permits some tolerance, wherein about 10% was held to be anticipated by a teaching of a content not to exceed about 8% (i.e. the prior art amount differs from claimed amount by 20%). See In re Ayers, 154 F 2d 182, 69 USPQ 109 (CCPA 1946). Regarding claims 11-12, Ganapathiappan et al teach that ultimate tensile strength is in the range of 25-35 MPa (paragraph 0036) which overlaps with the ultimate tensile strength in present claims 11-12. Case law holds that when the range of instant claims and that disclosed in prior art overlap, a prima facie case of obviousness exists. See In re Wertheim , 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05. Regarding claim 13, Ganapathiappan et al teach that ultimate tensile strength is in the range of 25-35 MPa (paragraph 0036) which overlaps with the ultimate tensile strength of about 40 MPa. Case law holds that term "about" permits some tolerance, wherein about 10% was held to be anticipated by a teaching of a content not to exceed about 8% (i.e. the prior art amount differs from claimed amount by 20%). See In re Ayers, 154 F 2d 182, 69 USPQ 109 (CCPA 1946). Regarding claims 14-15, Ganapathiappan et al teach that compositions comprising oligomers such as BR-744BT (aliphatic polyester urethane acrylate), EB270 (aliphatic urethane acrylate) in combination with diluent monomers such as DEAA and NVP, and photoinitiator (see Table 3). Given that compositions, of Ganapathiappan et al, include oligomers, reactive diluents, photoinitiator and can exhibit a product of ultimate tensile strength and elongation at break of > 2000 as in present invention and is in the same field of endeavor, one skilled in art prior to the filing of present application would have a reasonable basis to expect the precursor formulation, of Ganapathiappan et al, to exhibit the presently claimed Young’s modulus of greater than or about 500 MPa as in present claim 14 and greater than or about 1500 MPa as in present claim 15. Since PTO cannot conduct experiments, the burden of proof is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). Regarding claim 16, see examples, in Ganapathiappan et al, where in the urethane oligomer is present in amounts greater than 20 wt% (see Figure 3). Regarding claim 17, in addition to 7a and 7i above, given that product of ultimate tensile strength and elongation at break are obvious based on the teachings in Ganapathappan et al, and formulations comprise substantially similar oligomers, reactive diluents and photoinitiator as in present invention, one skilled in art prior to the filing of present application would have a reasonable basis to expect tensile strength of the curable precursor formulation, of Ganapathiappn et al, at elongation of break to be greater than or equal to the ultimate tensile strength, absent evidence to the contrary. Since PTO cannot conduct experiments, the burden of proof is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). Regarding claim 18, examples of oligomers include EB270 oligomer (aliphatic urethane acrylate) (paragraph 0032) and reads on acrylate functionality of greater than 1 as in present claim 18 (see paragraph 0049 of present specification) and BR-744BT (Figure 3 of Ganapathiappan). Given that oligomers used in Ganapathiappan et al are either the same as in present invention or include urethane acrylate oligomers, and is in the same field on endeavor, one skilled in art prior to the filing of present application would have a reasonable basis to expect the urethane acrylate oligomers, of Ganapathiappan to exhibit the present claimed Young’s modulus of greater than or about 10 MPa, absent evidence to the contrary. Since PTO cannot conduct experiments, the burden of proof is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). Regarding claim 19, in addition to 7a-7c above, see figure 1, wherein droplets of curable liquid precursor material are deposited on a support of 3D printing system (paragraph 0021 and fig. 1). See claim 9, wherein the precursor material is cured (i.e., reads on curing the curable precursor formulation in present claim 19). Regarding claim 20, see example 1, wherein the ratio of E30 to E90 is about 11 (Figure 3) which reads on the ratio of E30 to E90 in present claim 20 . 07-21-aia AIA Claim s 1-20 are rejected under 35 U.S.C. 103 as being unpatentable over Bajaj et al (US 2016/0107287 A1) . Regarding claims 1 and 8, Bajaj et al disclose a precursor (i.e., reads on precursor formulation in present claim 1) which includes a reactive difunctional oligomer comprising aliphatic chain segments and a reactive diluent. The printable composition has a viscosity from about 15 cP to about 30 cP at 70 0 C (paragraph 0105) which overlaps with the viscosity in present claim 1. Case law holds that when the range of instant claims and that disclosed in prior art overlap, a prima facie case of obviousness exists. See In re Wertheim , 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05. The radiation curable precursor compositions contain oligomers, monomers and/or reactive diluents. The unsaturated groups may undergo radical polymerization when exposed to radiation in the presence of curing agents such as photoinitiators (paragraph 0119) which reads on photoinitiator in present claim 1. It is the Office’s position that the composition is curable is implicit in the use of photoinitiators as curing agents (i.e., reads on curable precursor formulation in present claim 1). See item no. 1, wherein the composition comprises O1:O2:M3:M1:M2, and exhibits UTS (i.e., ultimate tensile strength) of 9.8 MPa and % elongation at break of 38.5 (Table 5, paragraph 0154). O1 is aliphatic urethane acrylate oligomer (i.e., reads on at least one urethane acrylate oligomer n present claim 1) and M1 is dipropylene glycol diacrylate (paragraph 0149, Table 3) which reads on at least one reactive monomer in present claim 1. Bajaj et al ail to disclose a curable precursor composition having the presently claimed properties (i.e., product of ultimate tensile strength and elongation at break (%)). However, Bajaj et al in the general disclosure teach that in some embodiments, the ultimate tensile strength of material used to form the polishing pad material is between about 5,000 to about 9,000 psi (i.e., equivalent to about 35 MPa to about 62 MPa). The elongation of fracture is between about 5% and 200% (paragraph 0140). Hence, the product of ultimate tensile strength falls within the range of 175 to 12,400 (i.e., overlaps with the product of UTS and elongation at break in present claims 1 and 8). Case law holds that when the range of instant claims and that disclosed in prior art overlap, a prima facie case of obviousness exists. See In re Wertheim , 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05. Therefore, in light of the teachings in general disclosure of Bajaj et al and case law, it would have been obvious to one skilled in art prior to the filing of present application to have selected the overlapping range, for the product of ultimate tensile strength and % elongation at break, of greater than or about 2,000 as in present claim 1 and greater than or about 2,500 as in present claim 8, absent evidence to the contrary. Regarding claims 2-5, Bajaj teach that examples of oligomers include CN 991 (paragraph 0151). It is noted that CN 991 is an aliphatic polyester based urethane diacrylate oligomer (i.e., reads on aliphatic urethane acylate oligomer of present claim 2; polyester urethane acrylate in present claim 3; acrylate functionality of greater than 1 in present claim 4; and greater than about 1.3 in present claim 5). Regarding claims 6-7, Bajaj et al teach that printable composition has a viscosity from about 15 cP to about 30 cP at 70 0 C (paragraph 0105). It is the examiner’s position that instantly claimed viscosity of about 14 cP at 70 0 C and about 13 cP at 70 0 c and that taught by Bajaj i.e. about 15 cP at 70 0 C are so close to each other that the fact pattern is similar to the one in In re Woodruff , 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) or Titanium Metals Corp. of America v. Banner , 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) where, despite a slight difference in the ranges, court held that such a difference did not “render the claims patentable,” or, alternatively, that “a prima facie case of obviousness exists where the claimed range and prior art range do not overlap, but are close enough so that one skilled in the art would have expected them to have the same properties. Additionally, case law holds that term "about" (such as in prior art and preset claims) permits some tolerance, wherein about 10% was held to be anticipated by a teaching of a content not to exceed about 8% (i.e. the prior art amount differs from claimed amount by 20%). See In re Ayers, 154 F 2d 182, 69 USPQ 109 (CCPA 1946). Regarding claims 9-10, Bajaj et al teach that elongation of fracture is between about 5% and 200% (paragraph 0140) which overlaps with the elongation at break in present claims 9 and 10. Regarding claims 11-13, Bajaj et al teach that in some embodiments, the ultimate tensile strength of material used to form the polishing pad material is between about 5,000 to about 9,000 psi (i.e., equivalent to about 35 MPa to about 62 MPa) (paragraph 0140) which overlaps with the ultimate tensile strength in present claims 11-13. Case law holds that when the range of instant claims and that disclosed in prior art overlap, a prima facie case of obviousness exists. See In re Wertheim , 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05. . Regarding claims 14-15, examples of oligomers, in Bajaj et al, include similar oligomers such as CN 959, CN 962, CN 965, CN 986, CN 996, CN 991 and EB 270 (paragraph 0151) as in present invention (see paragraph 0049 of present application), and has product of ultimate tensile strength and elongation at break in overlapping ranges, one skilled in art prior to the filing of present application would have a reasonable basis to expect the precursor formulation, of Bajaj et al, to exhibit the presently claimed Young’s modulus of greater than or about 500 MPa as in present claim 14 and greater than or about 1500 MPa as in present claim 15. Since PTO cannot conduct experiments, the burden of proof is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). Regarding claim 16, see item no. 1 (Table 4) wherein the oligomer O1 is used in amounts of about 55 wt% (paragraph 0152) which overlaps with the amount of oligomer in present claim 16. Regarding claim 17, in addition to 8a-8c and 8i, above, given that product of ultimate tensile strength and elongation at break are obvious based on the teachings in Bajaj et al, and formulations comprise substantially similar oligomers, reactive diluents and photoinitiator as in present invention, one skilled in art prior to the filing of present application would have a reasonable basis to expect the tensile strength of the curable precursor formulation, of Ganapathiappn et al, to tensile strength at elongation of break to be greater than or equal to the ultimate tensile strength, absent evidence to the contrary. Since PTO cannot conduct experiments, the burden of proof is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). Regarding claim 18, examples of oligomers include CN 991 (paragraph 0151). It is noted that CN 991 is an aliphatic polyester based urethane diacrylate oligomer (i.e., reads on acrylate functionality of greater than 1 in present claim 18) and has Young’s modulus of about 12 MPa (i.e., overlaps with Young’s modulus of aliphatic urethane acrylate in present claim 18). Regarding claim 19, in addition to 8a-8c above, Bajaj et al teach method of forming a polishing article comprising depositing plurality of droplets of a first precursor formulation comprising multifunctional urethane acrylate oligomer, multifunctional acrylate precursor and a curing agent (paragraph 0017) and comprises cured droplets (paragraph 0018) which reads on curing the curable precursor formulation in present claim 19. Regardingg claim 20, see item no. 2 (paragraph 0152 and Table 4) wherein the ratio of E’30/E’90 is 9.4 (i.e., reads on the storage modulus ratio in present claim 20. Conclusion Any inquiry concerning this communication or earlier communications from the examiner should be directed to KARUNA P REDDY whose telephone number is (571)272-6566. The examiner can normally be reached 8:30 AM to 5:00 PM M-F. 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, Arrie (Lanee) Reuther can be reached at 571-270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /KARUNA P REDDY/Primary Examiner, Art Unit 1764 Application/Control Number: 18/483,352 Page 2 Art Unit: 1764 Application/Control Number: 18/483,352 Page 4 Art Unit: 1764 Application/Control Number: 18/483,352 Page 5 Art Unit: 1764 Application/Control Number: 18/483,352 Page 6 Art Unit: 1764 Application/Control Number: 18/483,352 Page 7 Art Unit: 1764 Application/Control Number: 18/483,352 Page 8 Art Unit: 1764 Application/Control Number: 18/483,352 Page 9 Art Unit: 1764 Application/Control Number: 18/483,352 Page 10 Art Unit: 1764 Application/Control Number: 18/483,352 Page 11 Art Unit: 1764 Application/Control Number: 18/483,352 Page 12 Art Unit: 1764
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