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 § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 24, 26, 31-32, 34, 36, and 38-43 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Yamada (JP 2010-222437A), wherein the machine English translation is used for citation.
Regarding claims 24, 26, 31-32, 34, and 36; Yamada teaches, in a preferred embodiment, a light activated resin composition comprising a cyclic allyl sulfide monomers (M36; instant M1), tricyclodecane diacrylate (instant M2), which is substituted by polyethylene glycol diacrylate [0095], and 2,2-dimethoxy-1,2-diphenylethane-1-one (i.e. 2,2-dimethoxy-2-
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phenylacetophenone; instant claim 36) [Ex4].
Yamada does not explicitly teach the polymerization rates of the monomers of the preferred embodiment; however the Examiner takes the position that since Yamada teaches the claimed monomers, the polymerization rate of M2 would be similar or higher than that of M1. The courts have held that “a compound and all its properties are mutually inseparable”, In re Papesch, 315F.2d 381, 137 USPQ 42, 51 (CCPA 1963). Further, attention is drawn to MPEP 2112.01, which states that “products of identical chemical composition cannot have mutually exclusive properties. A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present.”, In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
Regarding claims 38-41 and 42; Yamada teaches a manufacturing method of a three dimensional molded item via UV light polymerization from an ultra-high pressure mercury lamp [0115].
Yamada is silent with respect to the polymer being “degradable.” The Office realizes that all the claimed effects or physical properties are not positively stated by the reference. However, the reference teaches all of the claimed reagents, claimed amounts, and substantially similar processes. Since Yamada teaches same claimed components, the claimed effects and physical properties, i.e. degradability, would necessarily be present in a composition with all the claimed ingredients. If it is the applicants' position that this wouldn’t be the case: (1) evidence would need to be presented to support applicants' position; and (2) it would be the Offices' position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties and effects with only the claimed ingredients, claimed amounts, and substantially similar processes. See In re Spada, MPEP §2112.01, I & II.
Regarding claim 42; Yamada teaches stereolithographic three dimensional printing (i.e. vat polymerization) [0115].
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.
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(s) 33 and 37 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yamada (JP 2010-222437A), as applied to claim 24, wherein the machine English translation is used for citation.
Yamada teaches the basic claimed light-activated resin composition, as set forth above, with respect to claim 24.
Regarding claim 33; Yamada teaches the cyclic allyl sulfide monomer is present in an amount of 10-80 mass% based on all polymerizable compounds [0067] and the radically polymerizable compound (acrylate monomer) is present in an amount of 10-70 mass% based on all polymerizable compounds [0099]. In the instance the cyclic allyl sulfide monomer is present in an amount of 10 mass% and the acrylate monomer is present in an amount of 70 mass%, the weight ratio of the second monomer (cyclic allyl sulfide) to the first monomer (acrylate) is 14.28/100. 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.
Regarding claim 37; Yamada teaches the radical polymerization initiator is preferably 0.1-10 mass parts based on 100 mass parts of the polymerizable compounds 0092]. In the instance the initiator is employed in an amount of 2.5 parts and the acrylate monomer is present in an amount of 100 parts (based on the reasoning above), the weight ratio of initiator to first monomer M1 is 2.5/100. 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.
Claim(s) 35 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yamada (JP 2010-222437A), wherein the machine English translation is used for citation, as applied to claim 24, and further in view of Ely et al. (US Serial No. 2019/0010270).
Yamada teaches the basic claimed light-activated resin composition, as set forth above, with respect to claim 24.
Regarding claim 35; Yamada teaches suitable acrylate monomers employed in the present invention include, for example, di(meth)acrylate of tricyclodecane dimethylol fails to teach said first monomer is pentaerythritol triacrylate. Ely et al. teaches curable formulations for three dimensional printing processes, comprising multifunctional acrylate monomers, such as tricyclodecane dimethanol diacrylate and pentaerythritol triacrylate [Table2]. Therefore, Ely et al. teaches that tricyclodecane dimethanol diacrylate and pentaerythritol triacrylate are functional equivalents for the purpose of functioning as difunctional acrylate monomers for use in three dimensional printing processes. It is prima facie obvious to substitute art-recognized functional equivalents known for the same purpose (See MPEP § 2144.06).
Claim(s) 24, 25, and 27-30 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bingham et al. (“Degradable vinyl copolymers through thiocarbonyl addition-ring-opening (TARO) polymerization”, Chem Commun. (2019) 55(1): 55-58), in view of Ely et al. (US Serial No. 2019/0010270).
Regarding claims 24, 25, and 27-30; Bingham et al. teaches degradable vinyl copolymers prepared from the radical copolymerization of thionolactone dibenzo[c,e]oxepane-5-thione with acrylates [abs]. Specifically, Bingham et al. teaches a thionolactone of having the structure below [Scheme 1, compound 6].
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Bingham et al. teaches the copolymerization with acrylate monomers, however fails to teach acrylate monomer comprising at least two (meth)acrylate functional groups. Ely et al. teaches curable breakable (i.e. degradable) formulations for three dimensional printing processes, comprising monofunctional and multifunctional acrylate monomers, such as pentaerythritol triacrylate [Table2]. Bingham et al. and Ely et al. are analogous art because they are both concerned with the same field of endeavor, namely degradable polymers for use in three dimensional printing. At the time of filing, a person of ordinary skill in the art would have found it obvious to add pentaerythritol triacrylate, as taught by Ely et al., to the composition of Bingham et al., and would have been motivated to do so in order to achieve a combination of properties, related to rigidity, charge, water absorbance, hydrophilicity/lipophilicity ratio; also achieving polymer that is degradable, as suggested by Ely et al. [0133].
Bingham et al. in view of Ely et al. do not explicitly teach the polymerization rates of the monomers of the preferred embodiment; however, the Examiner takes the position that since Bingham et al. in view of Ely et al. teach the claimed monomers, the polymerization rate of M2 would be similar or higher than that of M1. The courts have held that “a compound and all its properties are mutually inseparable”, In re Papesch, 315F.2d 381, 137 USPQ 42, 51 (CCPA 1963). Further, attention is drawn to MPEP 2112.01, which states that “products of identical chemical composition cannot have mutually exclusive properties. A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present.”, In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Eashoo can be reached at 571-272-1197. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JESSICA M ROSWELL/ Primary Examiner, Art Unit 1767
