DETAILED CORRESPONDENCE
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 of invention and/or species, and corresponding claims (1-8) is acknowledged. The election has been made without traverse. Non-elected claims are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Allowable Subject Matter
Claim 2 would be allowable if the rejection(s) under 35 U.S.C. 101, set forth in this Office action is overcome (terminal disclaimer) and to include all of the limitations of the base claim and any intervening claims.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-2 and 8 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 and 4 of U.S. Patent No. US12359027B2. Although the claims at issue are not identical, they are not patentably distinct from each other.
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
Claim 1 and 7-8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lin (NPL 20211)
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Lin demonstrates the ink but does not teach providing the ink as a kit. Lin is demonstrating an ink for 3D printing. It would be obvious to provide the materials of Lin as a kit.)
In reference to claim 7 the cited prior art discloses the invention as in claim 1.
Lin shows the mixture is aqueous.
In reference to claim 8 the cited prior art discloses the invention as in claim 1.
Lin is silent regarding the addition of surfactants and cosolvents to the ink, however, Lin is a research publication. Examiner takes notice that commercial formulation of the inks would include as an obvious matter the incorporation of solvents and surfactants at least in order to optimize viscosity and stability.
Claim 3-6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lin (NPL 20212) and in view of Conceicao (NPL 20193)
In reference to claim 3 the cited prior art discloses the invention as in claim 1.
Lin uses alpha cyclodextrin. The claim requires beta cyclodextrin.
In the same field and for the same intended use, Conceicao demonstrates the use of beta cyclodextrin in 3D printing (title).
It would be obvious to use the beta cyclodextrin.
In reference to claim 4 the cited prior art discloses the invention as in claim 3.
Lin shows the UV absorber being photo-initiator Irgacure D-2959 (33.3 mg/mL, 148 mM), which corresponds to 3.3 weight/volume % and is about 1-2 weight/weight %.
Alternatively, Examiner takes notice that (a) it would be obvious to reduce the amount of Irgacure to reduce cost, and (b) that other Irgacure types (or other brand) curatives are known for the same purpose including those usable at lower concentrations.
In reference to claim 5, Conceicao shows that “hydroxypropyl-β-cyclodextrin” (abstract) is useful for 3d printing. In reference to claim 6 the cited prior art discloses the invention as in claim 5.
Lin shows the UV absorber being photo-initiator Irgacure D-2959 (33.3 mg/mL, 148 mM), which corresponds to 3.3 weight/volume % and is about 1-2 weight/weight %.
Conclusion
Any prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NICHOLAS KRASNOW whose telephone number is (571)270-1154. The examiner can normally be reached M-R: 8am-5pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Xiao Zhao can be reached on 571-270-5343. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NICHOLAS KRASNOW/Examiner, Art Unit 1744
1 https://www.sciencedirect.com/science/article/pii/S2451929421003089#sec4
2 https://www.sciencedirect.com/science/article/pii/S2451929421003089#sec4
3 https://www.sciencedirect.com/science/article/pii/S0144861719305570?via%3Dihub
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