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 .
Response to Amendment
Applicant’s claim amendments and remarks filed May 11, 2026 are entered and have
been fully considered. Applicant has amended claims 3 and 10 to overcome the 112b rejections, therefore they are withdrawn. Applicant has amended claim 1, incorporating the subject of claim 6, and cancelling claim 6.
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.
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.
Claims 1, 3-8, 10-11, 17-20, and 23 are rejected under 35 U.S.C. 103 as being unpatentable over Matzner et al, US20190224914A1.
Regarding claim 1, 3, 7-8, Matzner teaches a curable formulation comprising curable elastomeric materials and silica, abstract. The curable elastomeric materials comprise a mono-functional elastomeric material in a concentration of 20-70 wt.% ¶[0278], and a multi-functional elastomeric material in a concentration of 10-30 wt.% ¶[0279], which read on the first two claimed elastomeric materials of claim 1. The weight percent ranges overlap with the claimed ranges for each material. Matzner further teaches the functional groups for all of the curable materials are (meth)acrylates, ¶¶[0030, 0163, 0190, 0242-0243], also teaches (meth)acrylamide groups in the elastomeric curable materials, ¶¶[0165, 0166, 0198], which reads on claim 3.
The formulation further comprises silica nanoparticles that are functionalized with curable groups so that they form bonds with moieties on their surface, ¶¶[0215, 0222], and is in the formulation in an amount of about 1-20 wt.%, ¶[0031, 0227], which actually refers to 0.9-22 wt.% because in ¶[0431] it states “about” refers to +/- 10%. The functionalized silica reads on the claimed curable multi-functional non-elastomeric material; the weight percent range overlaps with the claimed range of no more than 5 wt.%, and additionally overlaps with the limitation that the formulation comprises silica particles in an amount of no more than 1 wt.% of the formulation.
Regarding the claimed curable material that comprises at least two hydrogen bond forming groups, Matzner teaches the curable materials further comprise at least one additional curable material ¶¶[0038-0039] and the total amount of additional curable materials ranges from 10-40 wt.%, ¶[0280], which encompasses the claimed ranges of claims 1 and 8 for the curable material with hydrogen bond forming groups.
Matzner specifically lists the (meth)acrylamide monomer ¶[0165] as a curable material, which reads on claim 7 and has two hydrogen bond forming groups, and a molecular weight of 85.106 g/mol, therefore the ratio is 2/85.106 or 0.0235, which is greater than the claimed ratio of claim 1.
The fact that Matzner discloses numerous types of additional curable materials which can be suitably selected as monomers to form the curable formulation for additive manufacturing does not render any particular combination less obvious. A reference is available for all that it teaches to a person of ordinary skill in the art. Merck & Co., Inc. v. Biocraft Laboratories, Inc. 874 F.2d 804, 807 (Fed. Cir. 1989).
Therefore it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have practiced the invention of Matzner and selected the (meth)acrylamide monomer as an additional curable material with the motivation of producing another permutation of a curable formulation for additive manufacturing with a reasonable expectation of success because Matzner teaches (meth)acrylamide monomer is a curable material for the formulation, and furthermore selected the overlapping portion of the weight percent ranges disclosed by Matzner because selection of overlapping portion of ranges has been held to be a prima facie case of obviousness. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).
Regarding claims 4-5, the methacrylamide monomer ¶[0165] has one hydrogen bond donor and one acceptor group, which reads on claims 4. The (meth)acrylamide hydrogen bond forming groups are separated from one another by no more than 2 atoms, which reads on claim 5.
Regarding claims 10-11, Matzner teaches that the mono and multi-functional elastomeric curable materials include (meth)acrylate functional groups, ¶¶[0047, 0062, 0163, 0190], and acrylamide groups are also contemplated ¶[0198], which are hydrogen bonding, and satisfies the at least 50% limitation. Matzner further teaches the elastomeric materials can comprise urethane moieties for elasticity ¶¶[0158, 0191], which comprise carbamate groups.
Regarding claims 17-18, Matzner teaches that the formulation further comprises additional curable materials, which can be mono-functional, ¶[0234] and non-elastomeric, ¶0241], and further lists examples of additional monofunctional (meth)acrylates such as isobornyl(meth)acrylate, which applicant also specifies (page 28 of the instant specification) as an example of the additional mono-functional non-elastomeric material. The total additional curable mono-functional material ranges from 10-30 wt.% ¶[0073], which encompasses the range of claim 18.
Regarding claim 19, Matzner teaches the silica particles can feature surface groups of amine groups ¶[0217], and then also states that the term “amine” as used in the disclosure can refer to primary, secondary, or tertiary amines, ¶¶[0444-0445].
Regarding claim 20, Matzner teaches the silica particles can be (meth)acrylate functional, which means there would be multiple (meth)acrylate groups on the silica surface, giving it a functionality of greater than 2.
Regarding claim 23, Matzner teaches in some of the embodiments a material formed by the formulation when hardened has a tear resistance of at least 4,000 N/m ¶[0048], which converts to 4.08 Kg/cm, and further teaches that in some of the embodiments the formulation when hardened has a tensile strength of at least 2 MPa, ¶[0050], both of which satisfy the claim.
Allowable Subject Matter
Claim 16 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: Matzner teaches the curable mono-functional elastomeric material comprises a total of 20-70 wt.% ¶[0278] and the additional curable material which is the (meth)acrylamide with two hydrogen bond forming groups is 10-40 wt.% ¶[0280]. The ratio of the two then ranges from 1:2 to 7:1 which does not read on the claimed ratios.
Response to Arguments
Applicant's arguments filed May 11, 2026 have been fully considered but they are not persuasive.
In response to applicant’s argument regarding the use of Matzner as prior art, pages 9-10 of remarks, examiner reminds applicant that the claimed invention is evaluated and prior art is not excluded simply because applicant addressed it in the as-filed specification. Applicant has addressed no parts of the claimed invention which prevent Matzner from being applied against the claims nor has Applicant presented any §102(b)(1) or §102(b)(2) exceptions to exclude Matzner. Despite applicant’s assertion that the claimed invention improves upon the work of Matzner which has silica, the claim allows for up to 1% of silica, which the amount taught by Matzner overlaps with, as stated above in the rejection.
In response to applicant’s argument of unexpected results, pages 10-11 of remarks, the data is unconvincing and is not commensurate in scope with the claims. It is noted that claim 1 claims broad ranges and generic components, and the data in Table 1B of the as-filed specification shows that components D and A are present in all of the inventive formulations but they are not required in claim 1; component A is part of claim 17, and component D corresponds to the curable multi-functional non-elastomeric material in an amount of no more than 5 wt.% of claim 1 which includes 0 wt.%, the claim must have all the required components that produce the unexpected results. Additionally, applicant argues that component E is required for the unexpected results (page 14 of remarks), but it is not clear what applicant used as component E since it not defined other than the broad description given on page 56 of the instant specification. Applicant does not detail the compounds used in the examples therefore examiner is unable to judge if the results can be probative of these broad categories, and the amounts used are listed in ranges in Table 1B, therefore it is not clear if there are sufficient results for claimed weight percent range of each component. Additionally, the inventive examples have zero silica, but the claim allows up to 1 wt.%, and the only reference with silica is Ref. 1, which has an unknown amount between 2-10%, therefore there is no comparison for a formulation at 1 wt.% of silica which is within the scope of Matzner’s invention. Examiner notes that the results, insofar as they relate to the presence of component E, show an improvement versus those formulations that do not have it, but without knowing what applicant used as component E, it cannot be judged how it compares to Matzner’s teachings or if the results are truly unexpected.
In response to applicant’s argument that the examiner has not identified a single embodiment that contains the claimed combination and that claim 1 requires four components, page 11 of remarks, examiner points out that Matzner is applied under 103 not 102, the claimed ranges are for each component with respect to formulating a curable formulation. Furthermore, the claimed curable multi-functional non-elastomeric material in a total amount of no more than 5 wt.% also includes the amount of 0%, and is therefore optional and not actually required. The claimed ranges overlap those with the prior art for each component, therefore, burden shifts to Applicant to demonstrate a non-obvious difference between the claimed range and that of the prior art’s broader teachings. Applicant only speculates that there is no motivation to arrive at the claimed inventive ranges. The art is operating within Applicant’s claimed invention and burden has been shifted to Applicant to show a non-obvious difference for operating in the specific portions of the claimed ranges.
Applicant’s arguments to the “piecemeal” application of the ranges or components is not persuasive. Matzner’s examples have overlapping ranges for each of these (tables 1 and 2 page 27, elastomers A and B) and Applicant has not provided any indication as to how the claimed combination of ranges cannot be arrived at and only speculates the combinations claimed are not all together simultaneously. Applicant is reminded they have argued they specifically compared against Matzner as PHOSITA and yet now argue that simultaneously PHOSITA cannot be directed to the claimed invention. Furthermore, applicant’s labels of components B, C, D, and E are not defined in the claims and applicant’s argument that no single embodiment of Matzner contains components B and C together and further with D and E together is not persuasive because the labels of the components are arbitrary. Applicant can choose any label for these. Examiner points to tables 1 and 2, page 27 of Matzner, elastomers A and B where there are combinations of mono and multifunctional elastomeric materials with curable mono functional monomers in ranges that overlap with the claimed ranges.
Applicant’s arguments regarding component E, page 12 of remarks, are not persuasive. Applicant cites Panduit Corp v Dennison and then states each element of the claims must be independently satisfied as a distinct material on its own. In the previous rejection of record, examiner addressed each element of claim 1 and each element was satisfied by a distinct material. Applicant’s argument that examiner pointed to the same materials is moot in light of amended claim 1 and the above rejection which now states that the curable material that comprises at least two hydrogen bond forming groups, what applicant calls component E, is satisfied by Matzner’s (meth)acrylamide monomer, ¶[0165], which is a distinct and separate material to the other curable elastomeric and non-elastomeric materials.
Examiner reminds applicant that the labels B, C, D and E are arbitrary and are not part of the claims. Due to the incorporation of claim 6 into claim 1, the rejection now states the curable material is (meth)acrylamide which satisfies the claimed ratio, and applicant’s argument against the use of additional elastomeric materials (bottom page 12) as previously cited by examiner is moot.
In response to applicant’s argument that formula I of Matzner does not include the acrylamide monomer, examiner points to ¶[0165] where it states “In some embodiments, R1 is amide, and the compound is a mono-functional acrylamide monomer. In some of these embodiments, R2 is methyl, and the compound is mono-functional methacrylamide monomer. Curable materials in which R1 is amide and R2 is hydrogen or methyl are collectively referred to herein as “(meth)acrylamide”.” Therefore Matzner does teach the use of a (meth)acrylamide monomer as an additional curable material. Furthermore, applicant argues that claim 7 is only directed to the (meth)acrylamide monomer, but examiner points out that in the instant specification, page 19, applicant describes unsubstituted and substituted (meth)acrylamides as “(meth)acrylamides” and does not limit it to the (meth)acrylamide monomer only.
Examiner also notes that the claim does not state that the curable material is elastomeric or non-elastomeric, it only needs to satisfy the claimed ratio and H bonding sites, and applicant’s argument as to Matzner’s formulas being elastomeric is moot and has no bearing on the language of the claim. Applicant’s argument that Matzner’s formulas are broad and encompass millions of materials is unpersuasive because applicant’s claims are also broad and possibly encompasses millions of materials.
In response to applicant’s argument that Matzner teaches the elastomeric mono-functional material is 30-50%, examiner points out this is incorrect, as stated above in the rejection and in ¶[0278], the total amount is 20-70 wt.% with some embodiments being 50-70 wt.% ¶[0074]. Additionally, the rejection is based on the teaching of additional curable materials which Matzner states the total additional curable materials are from 10-40% ¶[0280], this is separate from the total mono-functional elastomeric materials. Examiner has shown that Matzner does teach (meth)acrylamide per se and examiner reminds applicant that a specific curable material is not claimed in claim 1, it is described broadly, but that Matzner teaches (meth)acrylamide as a curable material to be used and it satisfies the hydrogen bond limitation and H-bond number to molecular weight ratio limitation; the motivation to combine as additional curable material is to produce another permutation of a curable formulation for additive manufacturing because it would do no more than produce a predictable result of a curable formulation as taught by Matzner.
The fact that Matzner discloses numerous types of additional curable materials which can be suitably selected as monomers to form the curable formulation for additive manufacturing does not render any particular combination less obvious. A reference is available for all that it teaches to a person of ordinary skill in the art. Merck & Co., Inc. v. Biocraft Laboratories, Inc. 874 F.2d 804, 807 (Fed. Cir. 1989).
There is also no requirement that Matzner teach a result effective variable for any component. This does not separate the prior art from the claimed invention as there is no requirement the prior art specifically teach every function Applicant has discovered for a specific component. In response to the (meth)acrylates being the preferred material, page 15 of remarks, disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments (In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971)).
Applicant’s arguments regarding their definition of curable material, page 15 of remarks, are not persuasive as Applicant does not define the curable material to be curable on its own. Applicant has implied that after the fact but the broadest reasonable interpretation of the cured material in their definition is a material in which functionalized silica nanoparticles are cured within. Applicant only defines it to result in a solid cured material which functionalized silica nanoparticles do when they are present with other curable materials.
Applicant’s arguments to Component D and Component F being definitions, pages 15-16 of remarks, are not persuasive. The claims do not define any of these components and there is no requirement that Matzner’s components coincide exactly with the same labels as Applicant uses. Applicant’s examples do not define terms in the invention and has no definition in the as filed specification excluding functionalized silica nanoparticles from being the multi-functional curable non-elastomeric material of the claims, which is not required to be present in the claims as it includes 0 wt%. The comprising language of the claims coupled with the lack of requirement for the multi-functional curable non-elastomeric material still permits Matzner to read on the claims for the reasons of record.
Applicant’s argument that Matzner teaches away from the claimed invention because it requires silica is not persuasive because the claimed invention is up to 1 wt% which the rejection establishes is taught by Matzner. Further, Applicant’s arguments are to eliminating silica from the formulations which is not the entire scope of the claim.
For the reasons given above, the 103 rejection over Matzner is maintained.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to VIRGINIA L STONEHOCKER whose telephone number is (571)272-3431. The examiner can normally be reached Monday-Friday 7:00AM-4:00PM EST.
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/V.L.S./Examiner, Art Unit 1766
/RANDY P GULAKOWSKI/Supervisory Patent Examiner, Art Unit 1766
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