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 .
Claim Rejections - 35 USC § 103
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.
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) 14-22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kudo et al. (JP 2015-028607), wherein the machine English translation is used for citation.
Regarding claims 14-18, and 20; Kudo et al. teaches a photopolymerizable composition comprising, in a preferred embodiment, 40 wt% of a urethane component (urethane acrylamide oligomer prepared from a trimer of hexamethylene diisocyanate) [T2, Ex17; 0103]. Kudo et al. teaches the composition further comprises 1 to 40 wt% of a monofunctional (meth)acrylate, such as 2-ethylhexyl (meth) acrylate isobornyl and (meth)acrylate [045-046], 0.1 to 30 wt% of a polymerizable tertiary amine, such as diethylaminoethyl (meth)acrylate [050-053], and 0.5 to 5 wt% of a photopolymerization initiator, such as bisacylphospine oxides [078-080]. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. See In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990), see MPEP §2144.05. The Examiner makes note that instant components e) and f) are optional, and thus not explicitly required by the claims.
Kudo et al. teaches all of the above required components, however fails to explicitly disclose each in a preferred embodiment. A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art, including the non-preferred embodiments. See Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.); MPEP §2123. Kudo et al. does not specifically disclose an embodiment containing at least one urethane component, at least one monofunctional reactive diluent, at least one initiator, and at least one amine-functional (meth)acrylate monomer. However, at the time of invention a person of ordinary skill in the art would have found it obvious to prepare a composition containing at least one urethane component, at least one monofunctional reactive diluent, at least one initiator, and at least one amine-functional (meth)acrylate monomer based on the invention of Kudo et al., and would have been motivated to do so since Kudo et al. suggests that the composition can contain at least one urethane component [T2, Ex17; 0103], at least one monofunctional reactive diluent [045-046], at least one initiator [078-080], and at least one amine-functional (meth)acrylate monomer[050-053]. Additionally, “It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art.” In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) (citations omitted) [see MPEP 2144.06].
Regarding claims 19, 21, and 22; the limitations of the claims merely further define optional limitations of the independent claim and thus are encompassed by the rejection.
Terminal Disclaimer
The terminal disclaimer filed on 08 May 2026 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of US Patent No. 11891469 has been reviewed and is accepted. The terminal disclaimer has been recorded.
Response to Arguments
Applicant's arguments filed 08 May 2026 have been fully considered but they are not persuasive.
Applicants argue the cited example in Kudo not only fails to disclose the required amount of initiator, but also fails to meet the feature “at least one amine-functional (meth)acrylate monomer”. The Examiner makes note that the rejection of record only relies on the example 17 to teach 40 wt% of the urethane component and relies on the body of the disclosure for rendering obvious the photopolymerizable composition components as required by the claim language. A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art, including the non-preferred embodiments. Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.); See MPEP §2123.
Applicants argue Kudo is directed to adhesive compositions for polarizing plates and focuses on achieving properties such as heat resistance, transparency, adhesion, water resistance and curing speed for adhesive applications. In contrast, claim 14 is adapted for 3D printing processes, which impose fundamentally different requirements on material composition, curing behavior, and performance. The Examiner respectfully disagrees. The claims of the instant invention are directed to a composition, not to the method or using or the intended use of said composition. If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999). See also Rowe v. Dror, 112 F.3d 473, 478, 42 USPQ2d 1550, 1553 (Fed. Cir. 1997); see MPEP §2111.02.
Applicants argue claim 14 recites that “the amine functional (meth)acrylate monomer is not an amide,” which expressly excludes amide-containing compounds. The Examiner respectfully disagrees. The claim language of instant claim 14 does not expressly exclude amide-containing compounds; rather the claim merely requires the amine functional (meth)acrylate monomer is not an amide. The Examiner notes that the instant claim 14 requires "a photopolymerizable composition comprising...". The transitional term “comprising”, which is synonymous with “including,” “containing,” or “characterized by,” is inclusive or open-ended and does not exclude additional, unrecited elements or method steps. See, e.g., > Mars Inc. v. H.J. Heinz Co., 377 F.3d 1369, 1376, 71 USPQ2d 1837, 1843 (Fed. Cir. 2004) (“like the term comprising,’ the terms containing’ and mixture’ are open-ended.”). Invitrogen Corp. v. Biocrest Mfg., L.P., 327 F.3d 1364, 1368, 66 USPQ2d 1631, 1634 (Fed. Cir. 2003).
Applicants argue nowhere does Kudo teach a motivation to select this specific, comparatively narrow concentration range from its much broader disclosure, nor does Kudo recognize the disadvantages associated with higher concentrations that are addressed by the present application, such as reduced UV-curing rates and increased hydrophilicity and water absorption. In response to applicant's argument that Kudo does not teach reduced UV-curing rates and increased hydrophilicity and water absorption, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). Kudo teaches ranges suitable for use in achieving the particulars of the invention and one of ordinary skill in the art would have found it obvious to optimized said ranges in order to achieve desired results.
As such, Kudo is still relied upon for rendering obvious the basic claimed photocurable composition as required by the claimed language.
Conclusion
THIS ACTION IS MADE FINAL. 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.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JESSICA ROSWELL whose telephone number is (571)270-5453. The examiner can normally be reached M-F 8:00 am to 5:00 pm.
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/JESSICA M ROSWELL/Primary Examiner, Art Unit 1767
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