DETAILED ACTION
Pending Claims
Claims 1-3, 5, 8, 11, 13, 16, 19, 24, 27, 31, 34, 36, 40, 42, 44, 56, 58, and 69 are pending.
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 .
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.
Claim Objections
Claim 58 is objected to under 37 CFR 1.75(c) as being in improper form because a multiple dependent claim should refer to other claims in the alternative only. See MPEP § 608.01(n).
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.
Claims 1-3, 5, 8, 11, 13, 16, 19, 24, 27, 31, 34, 36, 40, 42, 44, 56, 58, and 69 are rejected under 35 U.S.C. 103 as being unpatentable over Carter et al. (US 2021/0277152 A1) in view of Holmberg et al. (US 2017/0015775 A1).
Regarding claims 1-3, 5, 8, 11, 13, 16, 19, 24, 27, 36, 40, 42, 44, 56, 58, and 69, Carter et al. disclose: (1) a curable composition (Abstract; paragraphs 0050 & 0202-0204) for forming a medical device (Abstract; paragraphs 0137-0148) by additive manufacturing (Abstract; paragraphs 0123 & 0130), comprising:
an initiator (paragraphs 0062-0065 & 0202-0204); and
a polymerizable monomer (paragraphs 0068-0072 & 0202-0204),
wherein the content of the polymerizable monomer is such that the composition has a viscosity from 30 cP to 50,000 cP at a printing temperature (paragraphs 0059-0061);
(19) wherein the initiator comprises a photoinitiator (paragraphs 0062-0065 & 0202-0204);
(24) further comprising a telechelic oligomer, a telechelic polymer, or a combination thereof (paragraphs 0051-0053 & 0202-0204); (27) wherein the telechelic oligomer or the telechelic polymer comprises a photoreactive moiety at both each of termini thereof, wherein the photoreactive moiety is an acrylate, methacrylate, vinyl acrylate, vinyl methacrylate, allyl ether, silene, alkyne, alkene, vinyl ether, maleimide, fumarate, maleate, itoconate, or styrenyl moiety (paragraphs 0051-0053 & 0202-0204);
(36) wherein the curable composition is capable of being 3D printed at a printing temperature greater than 25 °C (paragraphs 0059-0061 & 0134);
(40) wherein the curable composition is a liquid at a temperature from about 40 °C to about 100 oC (paragraphs 0059-0061 & 0134); (42) wherein the curable composition is a liquid at a temperature of above about 40 oC with a viscosity less than about 1 PaS (paragraphs 0059-0061);
(44) a polymeric material formed from the curable composition (paragraphs 0084-0123 & 0211-0212); (56) an orthodontic appliance comprising a polymeric material, wherein the orthodontic appliance is an aligner, expander or spacer (paragraph 0141); (58) a method of forming an orthodontic appliance comprising the polymeric material, the method comprising: providing the curable composition; exposing the curable composition to a light source; and curing the curable composition to form the polymeric material (paragraphs 0134-0136, 0140-0141 & 0211-0212);
(69) a method for preparing an article by an additive manufacturing process, comprising: providing the curable composition; heating the curable composition to a processing temperature; exposing the curable composition to radiation; curing the curable composition layer-by-layer based on a predefined design, thereby polymerizing and crosslinking the polymerizable monomer to form a polymeric material; and fabricating the article with the polymeric material (paragraphs 0134-0136, 0140-0141 & 0211-0212).
The curable composition of Carter et al. is formulated with one or more reactive monomers that act as reactive diluents (see paragraphs 0068-0071 & 0202-0204). These include (meth)acrylates (see paragraphs 0069-0071 & 0202-0204). They fail to explicitly disclose the instantly claimed (1-3, 5, 8, 11, 13 & 16) substituted phenyl (meth)acrylate having a vapor pressure of at most about 12 Pa at 60 oC, wherein at least one ortho position of the phenyl ring is substituted with a group comprising at least one heteroatom selected from N, O and S or a group comprising a silicon atom.
Holmberg et al. disclose functionalized dimethoxyphenol monomers, including (meth)acrylates of syringol, methyl syringol, and ethyl syringol (see paragraphs 0035-0037 & 0039-0040; see also claim 10). These monomers are suitable for forming (co)polymers (see paragraphs 0047-0081) and as modifiers for polymer-based materials (see paragraph 0085). These monomers are also suitable for use in 3D-printing applications (see paragraph 0085) and for forming medical materials (see paragraphs 0085-0086). In light of this, it has been found that the selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination – see MPEP 2144.07.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to formulate the curable composition of Carter et al. with the instantly claimed substituted phenyl (meth)acrylate because: (a) the curable composition of Carter et al. is formulated with one or more reactive monomers that act as reactive diluents; (b) the reactive monomers of Carter et al. include (meth)acrylates; (c) Holmberg et al. disclose functionalized dimethoxyphenol monomers, including (meth)acrylates of syringol, methyl syringol, and ethyl syringol; (d) the monomers of Holmberg et al. are suitable for forming (co)polymers and as modifiers for polymer-based materials; (e) the monomers of Holmberg et al. are also suitable for use in 3D-printing applications and for forming medical materials; and (f) it has been found that the selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination.
Regarding claims 31 and 34, the combined teachings of {Carter et al. and Holmberg et al.} are as set forth above and incorporated herein. They fail to disclose: (31) wherein the polymerizable monomer according to Formula (I) is a first polymerizable monomer, the curable composition further comprises a second polymerizable monomer different from the polymerizable monomer of Formula (I), wherein the second polymerizable monomer comprises a homosalic acrylate, a homosalic methacrylate, or a combination thereof; and (34) wherein the curable composition comprises 25-35 wt% of the first polymerizable monomer and 10-50% of the second polymerizable monomer. Rather, the primary teachings of Carter et al. contemplate combinations of reactive monomers (see paragraphs 0068 & 0069), which would have obviously embraced equal parts monomer blends. Furthermore, the reactive monomers of Carter et al. include salicylic ester (meth)acrylate (see paragraph 0070), and the reactive monomer content of Carter et al. can range up to 75 wt% (see paragraph 0068).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to formulate the curable composition resulting from the combined teachings of {Carter et al. and Holmberg et al.} with the instantly claimed monomer blend (and amounts thereof) because: (a) the primary teachings of Carter et al. contemplate combinations of reactive monomers, which would have obviously embraced equal parts monomer blends; (b) the reactive monomers of Carter et al. include salicylic ester (meth)acrylate; and (c) the reactive monomer content of Carter et al. can range up to 75 wt%.
Communication
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL J FEELY whose telephone number is (571)272-1086. The examiner can normally be reached Monday-Friday 8am-5pm.
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/MICHAEL J FEELY/Primary Examiner, Art Unit 1766
May 30, 2026
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