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 with traverse of Group II (i.e., claims 2-9) in the reply filed on 01/20/2026 is acknowledged. The traversal is on the ground(s) that the “bis(hydroxymethyl)cresol” of Hirata, also known as “2,6-Bis(hydroxymethyl)-p-cresol” as noted by Applicant, does not read on the claimed “formaldehyde derivative” because there is no -O-C-O moiety in this molecule.
Applicant’s argument is not found persuasive. Examiner respectfully submits that the claim or Applicant’s disclosure does not limit the claimed “formaldehyde derivative” to molecules having a -O-C-O moiety. Thus, Applicant’s argument is not commensurate with the scope of the claim. Examiner maintains that “2,6-Bis(hydroxymethyl)-p-cresol” reads on the claimed “formaldehyde derivative” (See the preparation section of 2,6-Bis(hydroxymethyl)-p-cresol: https://www.chemicalbook.com/ChemicalProductProperty_EN_CB1468885.htm).
The traversal is also on the ground(s) that “Hirata does not disclose heating of the composition to cure it and it is not cured layer-by-layer in an additive manufacturing method as presently claimed.”
Applicant’s argument is not found persuasive. Claim 2 fails to recite that heating of the composition cures it. Claim 2 also fails to explicitly recite that the composition is cured layer by layer. Thus, Applicant’s argument is not commensurate with the scope of the claim. Examiner further submits that the argued missing features are steps directed to the manner of using the composition which cannot be special (i.e., patentable) features of the composition of claim 1 (Group I) or of the object of claim 10 (Group III). See §§ MPEP 2103 C and 2113. Additionally, Applicant’s argument about the layer-by-layer relies on language solely recited in the preamble recitation of claim 2. However, the preamble of claim 2 is not considered a limitation. Thus, the argued missing steps cannot be considered common/shared special technical features among Groups I-III.
Therefore, the requirement is still deemed proper and is therefore made FINAL. Accordingly, claims 1 and 10 are withdrawn as being drawn to nonelected Groups I and III and claim(s) 2-9 is/are examined herein.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The listing of references in the specification is not a proper information disclosure statement. 37 CFR 1.98(b) requires a list of all patents, publications, or other information submitted for consideration by the Office, and MPEP § 609.04(a) states, "the list may not be incorporated into the specification but must be submitted in a separate paper." Therefore, unless the references have been cited by the examiner on form PTO-892, they have not been considered.
Claim Objections
Claim(s) 3 is/are objected to because of the following informalities:
Claim 3, “Pa.s” should be changed to --Pa·s--.
Appropriate correction is required.
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 2-9 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.
Claim 2 recites “generative manufacturing method for producing three-dimensional objects by irradiating, layer by layer, a photopolymerizable composition” in the preamble which is indefinite because the body of claim 1 fails to recite steps of forming and irradiating layers of the composition in a layer by layer fashion. See MPEP §§ 2103 C and 2112.02. The claim can have multiple plausible interpretations including an interpretation in which the preamble is not considered a limitation. In this case, the prior art only needs to disclose the composition and steps set forth in the body of the claim to disclose claim 2. Thus, the language of claim 2 makes it difficult to ascertain the subject matter for which protection is sought.
Claim 2 recites the limitation “a) the composition is heated to a reaction temperature of at least 70 °C before and during curing” which is indefinite. According to Applicant’s arguments submitted on 01/20/2026, heating of the composition causes its curing. It is unclear to the examiner how the composition can be heated to the reaction temperature of at least 70 °C before and during curing because a person of ordinary skill in the art would understand that heating the composition to the reaction temperature of at least 70 °C will immediately trigger the reaction/curing. Thus, the language of claim 2 makes it difficult to ascertain the subject matter for which protection is sought.
Claim 2 recites the limitation “c) curing of the composition is conducted at normal pressure” which is indefinite. It is unclear to the examiner if curing of the composition is achieved via irradiating, heating, or both? According to Applicant’s argument submitted on 01/20/2026, heating and irradiating of the composition causes its curing. However, the claimed language fails to explicitly link curing to heating and/or irradiating. Thus, the language of claim 2 makes it difficult to ascertain the subject matter for which protection is sought.
Claim 2 recites the limitation “a formaldehyde derivative stable at the reaction temperature as said curing agent” which is indefinite. The term “stable at the reaction temperature” is a relative/undefined term which renders the limitation indefinite. If the curing agent is “stable” at the reaction temperature, then it is unclear how the curing agent initiates/performs its curing function when it is stable at the reaction temperature. Thus, the language of claim 2 makes it difficult to ascertain the subject matter for which protection is sought.
Claim(s) 3-9 is/are rejected as being dependent from claim 2 and therefor including all the limitation thereof.
Claim 3 recites the limitation “a novolak is used as said phenol formaldehyde resin” which is indefinite. It is unclear if the “novolak” of claim 2 is same or different from the “novolak” of claim 3.
Claim 3 recites the limitation “a viscosity of not more than 10 Pa.s, not more than 5 Pa.s or not more than 1 Pa.s at the reaction temperature” which is indefinite. Since the claim recites both the broad range “not more than 10 Pa.s” and “not more than 5 Pa.s or not more than 1 Pa.s” which are narrower statements/ranges of the broad range, the claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05 C. For purposes of examination, claim 3 has been examined below as if the narrower range(s) were not present in the claim.
Claim 4 recites the limitation “a formaldehyde derivative is used as said curing agent” which is indefinite. It is unclear if the “formaldehyde derivative” of claim 2 is same or different from the “formaldehyde derivative” of claim 4.
Claim 4 recites the limitation “the formaldehyde derivative is preferably selected from polyoxymethylene, polyoxymethylene diesters, polyoxymethylene diethers, as well as derivatives of 1,3-dioxolane and 1,3-dioxane, more preferably from 4-phenyl-1,3-dioxane as well as polyoxymethylene diacetate and other polyoxymethylene diesters” which is indefinite. The list of alternatives is not a closed group. See MPEP §§ 2111.03 II, 2117, 2173.05(h). Furthermore, since the claim recites both the broad limitations “polyoxymethylene” and “derivatives of 1,3-dioxane” in combination with “polyoxymethylene diesters, polyoxymethylene diethers, polyoxymethylene diacetate” and “4-phenyl-1,3-dioxane” which are narrower statements/limitations of the broad limitations, the claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05 C. Additionally, the phrases “preferably” and “more preferably” renders the claim(s) indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Claim 5 recites the limitation “a photoacid generator is used as said photoinitiator” which is indefinite. It is unclear if the “photoacid generator” of claim 2 is same or different from the “photoacid generator” of claim 5.
Claim 5 recites the limitation “which is selected from diaryliodonium and triarylsulfonium salts; wherein the photoacid generator is preferably selected from corresponding hexafluoroantimonate, tetrafluoroborate and tetrakis(pentafluorophenyl)borate salts” which is indefinite. The list of alternatives is not a closed group. See MPEP §§ 2111.03 II, 2117, 2173.05(h). Furthermore, since the claim recites both the broad limitation “diaryliodonium and triarylsulfonium salts” and “corresponding hexafluoroantimonate, tetrafluoroborate and tetrakis(pentafluorophenyl)borate salts” which are narrower statements/limitations of the broad limitation, the claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05 C. Additionally, the phrase “preferably” renders the claim(s) indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Claim 6 recites the limitation “the composition is heated to a reaction temperature of not more than 130°C; wherein the composition is preferably heated to a temperature in the range of 80 °C to 120 °C” which is indefinite. It is unclear if the “ reaction temperature” of claim 2 is same or different from the “reaction temperature” of claim 6. Additionally, the phrase “preferably” renders the claim(s) indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d). Furthermore, since the claim recites both the broad limitation/range “a reaction temperature of not more than 130° C” and “a temperature in the range of 80 °C to 120 °C” which is narrower limitation/range of the broad limitation/range, the claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05 C.
Claim 7 recites the limitation “wherein the composition preferably comprises an epoxy, melamine formaldehyde or urea formaldehyde resin as said prepolymer or bisphenol A diglycidyl ether (“BADGE”), 3,4-epoxycyclohexane carboxylic acid-3′,4′-epoxycyclohexylmethylester (“CE”) or another epoxy as said co-monomer” which is indefinite. The phrase “preferably” renders the claim(s) indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d). Also, there is not sufficient antecedent basis for “said co-monomer” in the claim(s).
Claim 7 recites the limitation “the composition optionally comprises one or more carboxylic acid anhydrides as additives, which are preferably selected from dicarboxylic acid anhydrides and more preferably from phthalic acid anhydride, butane dicarboxylic acid anhydride, maleic acid anhydride, and cyclohexane-1,2-dicarboxylic acid anhydride” which is indefinite. The list of alternatives is not a closed group. See MPEP §§ 2111.03 II, 2117, 2173.05(h). Furthermore, since the claim recites the broad limitation “dicarboxylic acid anhydrides” and “phthalic acid anhydride, butane dicarboxylic acid anhydride, maleic acid anhydride, and cyclohexane-1,2-dicarboxylic acid anhydride” which are narrower statements/limitations of the broad limitation, the claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05 C. Additionally, the phrases “preferably” and “more preferably” renders the claim(s) indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Claim 8 recites the first limitation “the composition comprises 30 to 90 wt. % of novolak, 10 to 50 wt. % of a curing agent, and 1 to 10 wt. % of a photoacid generator in such proportions that their sum results in 100 wt. %” which is indefinite. It is unclear if the “curing agent” of claim 2 is same or different from the “curing agent” of claim 8. It is unclear if the “photoacid generator” of claim 2 is same or different from the “photoacid generator” of claim 8. The sum of 90 wt. % of novolak, 10 wt. % of the curing agent, and 1 wt. % of the photoacid generator yields 101 wt. %. The sum of 30 wt. % of novolak, 50 wt. % of the curing agent, and 10 wt. % of the photoacid generator yields 90 wt. %. Thus, the scope of the claim is unclear.
Claim 8 recites the second limitation “wherein the composition preferably comprises 50 to 80 wt. % of novolak, 20 to 40 wt. % of a curing agent, and approximately 5 wt. % of a photoacid generator in such proportions that their sum results in 100 wt. %” which is indefinite. It is unclear if the “curing agent” of claim 2 is same or different from the “curing agent” of claim 8. It is unclear if the “photoacid generator” of claim 2 is same or different from the “photoacid generator” of claim 8. Additionally, the phrase “preferably” renders the claim(s) indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d). The sum of 80 wt. % of novolak, 20 wt. % of the curing agent, and 5 wt. % of the photoacid generator yields 105 wt. %. The sum of 50 wt. % of novolak, 20 wt. % of the curing agent, and 5 wt. % of the photoacid generator yields 75 wt. %. Furthermore, since the claim recites the broad first limitation above and the second limitation which is a narrower statement/limitation of the broad first limitation, the claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05 C.
Claim 9 recites the limitation “the generative manufacturing method is a 3D printing method” which is indefinite. It is unclear to the examiner how the scope of the term “generative manufacturing” is different from and narrower than the term “3D printing” when Applicant uses the terms interchangeably ([0003-0004], [0010-0011] of Applicant’s published application). Thus, the language of claim 9 makes it difficult to ascertain the subject matter for which protection is sought.
Note
Claims 2-9 cannot be evaluated with respect to prior art at this time as the examiner cannot reasonably apprised of the scope of the claimed invention and cannot make a proper comparison between the claims and the prior art due to the 112 issues explained above.
Prior Art Made of Record
Talken (US 20220234292) discloses a generative manufacturing method for producing three-dimensional objects (P0001, claim 1) by irradiating, layer by layer, a photopolymerizable composition (P0004, 0074) comprising a phenol formaldehyde resin (novolak: P0021, claim 30), a curing agent (organic peroxide: P0072; the described cross-linking function of organic peroxide is equivalent to the function of a curing agent; additionally, organic peroxides are a well-know curing agents in the art), and a photoinitiator (P0028),
providing the composition (P0017, claim 1);
heating the composition to a temperature of at least 70 °C (P0018, 0031, claim 3);
irradiating the composition (P0019, claim 1);
heating the composition to the temperature of at least 70 °C during irradiating (P0036, claim 13);
wherein the composition comprises b1) a novolak as said phenol formaldehyde resin (novolak: P0021, claim 30), which has a viscosity of not more than 20 Pa*s at the reaction temperature (P0006),
wherein the irradiating of the composition is conducted at normal pressure (no pressurization is disclosed during irradiation/curing and bottom-up SLA is conducted at normal pressure: P0074);
with the proviso that the curing agent is not an amine-containing formaldehyde derivative (organic peroxide is not an amine-containing formaldehyde derivative: P0072).
Hirata (JP 6209035B2 with English machine translation – FOR of record) discloses a relevant photopolymerizable composition (photosensitive resin composition) comprising: bl) a novolak as a phenol formaldehyde resin (novolak as phenol resin A: pg. 2 and pg. 7), b2) a formaldehyde derivative stable at the reaction temperature as a curing agent (“Bis(hydroxymethyl) cresol” as a crosslinking agent C: pg. 2 and pg. 11; wherein “Bis(hydroxymethyl) cresol” is a known formaldehyde derivative and expected to be stable at the reaction temperature to function as the crosslinking agent for the composition), and b3) a photoacid generator as a photoinitiator (photoacid generator B as a photoinitiator: pg. 2 and pg. 8-9), with the proviso that the curing agent is not an amine-containing formaldehyde derivative (Bis(hydroxymethyl) cresol” is a known formaldehyde derivative that does not contain amine groups: the preparation section of 2,6-Bis(hydroxymethyl)-p-cresol: https://www.chemicalbook.com/ChemicalProductProperty_EN_CB1468885.htm). Hirata also discloses a relevant method comprising:
providing the composition as a layer (pg. 16);
heating the composition to a temperature of at least 70 °C (pg. 16);
irradiating the composition (pg. 16);
heating the composition to the temperature of at least 70 °C after irradiating it (pg. 16).
Hanyuda (US 4640937) discloses a relevant photopolymerizable composition (photocurable phenolic resinous composition: Abstract) comprising: bl) a novolak as a phenol formaldehyde resin (, phenolic novolac: claim 1), b2) a formaldehyde derivative thermally stable as a curing agent (unsaturated cycloacetal radical-containing compound derived from an aldehyde such as formaldehyde as a crosslinking agent: claim 1, C1, L5-10; C3, L9-31), and b3) a photoacid generator as a photoinitiator (onium salt is a photoacid generator and used as a photoinitiator: claim 1, C1, L5-10, C4, L7-49), with the proviso that the curing agent is not an amine-containing formaldehyde derivative (the crosslinking agent is not an amine-containing formaldehyde derivative: C1, L5-10, C3, L9-31). Hanyuda also discloses a relevant method comprising:
providing the composition as a layer (C8, L18-55);
heating the composition to a temperature of 120°C (C8, L18-55);
irradiating the composition (C8, L18-55);
heating the composition to the temperature of 120 °C after irradiating it (C8, L18-55).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JERZI H MORENO HERNANDEZ whose telephone number is (571)272-0625. The examiner can normally be reached 1:00-10:00 PM PT.
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/JERZI H MORENO HERNANDEZ/Primary Examiner, Art Unit 1743
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