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
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-3 and 8, and 10-15 are rejected under 35 U.S.C. 103 as being unpatentable over Belkacem (EP 2,436,510 A1) in view of Hilgers (US 2016/0145449 A1). Johnson (US 2008/0057217 A1), Evonik (TEGO Nanoresins Brochure), Sartomer 494 (Sartomer SR494 Technical Datasheet) Sartomer SR540 (Sartomer SR540 Technical Datasheet), and Hall (US 2025/0129391 A1) are cited as evidentiary references.
Regarding claim 1, Belkacem teaches a resin composition (Abstract, [0049]), comprising:
1-20% by weight of at least one tetrafunctional acrylate or methacrylate component (component (D), [0054]), which may be, inter alia, Sartomer 494 ([0083]), which reads on the claimed “first multi-functional curable material” because the instant Specification states that Sartomer 494 is a suitable example thereof (c.f. instant Specification at p. 32, lines 9-11). The range of 1-20 wt% taught by Belkacem overlaps the claimed range of “10 to 30%” and encompasses the claimed range of “15 to 20%,” establishing prima facie cases of obviousness.
0.1-50 % by weight of a difunctional acrylate or methacrylate component (component (E), [0054]), which may be, inter alia, Sartomer 540 ([0090]), which reads on the claimed “second multi-functional curable material” because the instant Specification states that Sartomer 540 is a suitable example thereof (c.f. instant Specification at p. 35, lines 1-3). The range of 0.1-50 wt% encompasses the claimed range of “10 to 30%,” establishing a prima facie case of obviousness.
10-70% by weight of a monofunctional material (optionally an acrylate or methacrylate, component (B), [0054]), which may be, inter alia, acryloyl morpholine ([0074], whose structure is shown to be 4-acryloyl morpholine at p. 17, Table 1a), which reads on the claimed “mono-functional curable material” because the instant Specification states that 4-acryloyl morpholine (Abbreviated as ACMO) is a suitable example thereof (c.f. instant Specification at p. 37, lines 5-6). The range of 10-70 wt% encompasses the claimed range of “10 to 50%,” establishing a prima facie case of obviousness.
An additional incorporation of 0.1-20% by weight of a core shell nanoparticle filler ([0064]), which are exemplified as comprising silica ([0064]). Belkacem further exemplifies said nanoparticle fillers as commercially available products including inter alia Albidur EP 2240, Albidur VE 3320, and Albidur EP 5340 ([0095]), all of which contain reactive functional groups on their surfaces (c.f. Johnson [0055]-[0062]). Belkacem is silent with regard to the specific incorporation of silica particles containing surface-functionalization with curable functional groups, however as just described, Belkacem explicitly teaches the incorporation of silica-based nanoparticle fillers, and explicitly teaches the use of nanoparticle fillers containing curable functional groups. Therefore, it would have been obvious to one having ordinary skill in the art at the time of filing to incorporate silica particles functionalized by curable functional groups as the core shell nanoparticle filler within Belkacem. Furthermore, the exemplary commercial products described above are all products wherein the core shell nanoparticles are pre-dispersed in a curable material (c.f. Johnson [0062]). Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to incorporate silica particles which are pre-dispersed in a curable material. The range of 0.1-20% by weight overlaps the claimed range of “10 to 30% by weight,” establishing a prima facie case of obviousness.
Belkacem teaches the incorporation of a methacrylate component (A) which may also read on the claimed “first multi-functional curable material” as claimed in claim 1 because it is included in overlapping amounts (20-50% by weight, [0054], which overlaps the claimed ranges of “10 to 30%” and “15 to 20% in claim 1, establishing prima facie cases of obviousness), because it is explicitly taught as preferably being difunctional or of higher functionality ([0067]), and because it has an overlapping molecular weight range (400-10,000 g/mol [0051], which encompasses the claimed range of “from 300 g/mol to 1,000 gram/mol,” establishing a prima facie case of obviousness).
Belkacem exemplifies the usage of, inter alia, Sartomer CN 981, Sartomer CN9001, Sartomer CN991, Sartomer CN983, and Ebecryl 1290 as the methacrylate component (A) ([0070]).
Belkacem ultimately differs from claim 1 because, while the methacrylate component (A) of Belkacem is taught as optionally having difunctional or higher functionality, Belkacem is silent with regard to the specific incorporation of an ethoxylated tri-functional curable material comprising at least 3 alkylene glycol groups and a linear aliphatic branching unit.
In the same field of endeavor, Hilgers teaches a photocurable composition (Abstract), comprising a polyfunctional acrylate compound ([0028]), and teaches a series of suitable example compounds which may serve as the polyfunctional acrylate in the inventive photocurable composition, including inter alia, Sartomer CN 981, Sartomer CN9001, Sartomer CN991, Sartomer CN983, and Ebecryl 1290 (p. 2, [0035]). Hilgers additionally teaches Sartomer SR454, which is ethoxylated trimethylolpropane triacrylate, as an alternative compound suitable for serving as the polyfunctional acrylate (p. 3, [0035]). It is prima facie obvious to substitute equivalents known in the art as suitable for the same purpose (See MPEP 2144.06). Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to substitute ethoxylated trimethylolpropane triacrylate as the methacrylate component (A) within the formulation of Belkacem, as taught by Hilgers, as Hilgers recognizes this compound as a suitable alternative to the same compounds taught within Belkacem as incorporated into photocurable compositions. Ethoxylated trimethylolpropane triacrylate (Sartomer SR454) reads on the claimed “ ethoxylated tri-functional curable material comprising at least 3 alkylene glycol groups and a linear aliphatic branching unit” because it is a trifunctional compound containing three alkylene glycol groups and a linear aliphatic branching group (trimethylolpropane).
As described above, Belkacem teaches the incorporation of Sartomer SR540 as component (E), which reads on the claimed “second multi-functional curable material.” Sartomer SR540 is a multifunctional curable material containing 4 alkylene glycol subunits and an aromatic branching unit (bisphenol A-based, c.f. Sartomer SR540, p. 1), which therefore meets the claimed limitation requiring that the second “multi-functional curable material” comprises from 2 – 6 alkylene glycol units.
Regarding claim 2, Belkacem teaches an additional exemplary core shell nanoparticle filler which is dispersed in alkoxylated pentaerythritol tetraacrylate (Albidur XP 1/0767, [0184]). The alkoxylated pentaerythritol tetraacrylate is also explicitly stated as being the same material as Sartomer 494 ([0182]), which falls within the scope of the claimed “first multi-functional curable material” as described above. Belkacem therefore teaches the incorporation of fillers dispersed in the inventive at least one tetrafunctional acrylate or methacrylate. It therefore would have been obvious to one of ordinary skill in the art at the time of filing to pre-disperse the surface-functionalized core-shell silica-based nanoparticulate filler (which would have been obvious to use as described above) within the at least one tetrafunctional acrylate or methacrylate component. Doing so would read on the claimed limitation “wherein said silica particles are pre-dispersed in said first multi-functional curable material.”
Regarding claim 3, Belkacem teaches that the core shell nanoparticulate fillers have particle sizes preferably ranging from 0.01 to 10 µm ([0056]), which equates to a range of 10 to 10,000 nm. Additionally, as described above, Belkacem exemplifies the usage of the commercially-available Albidur line of nanoparticles, which have particles sizes ranging from 0.1 to 3 µm (100 to 3,000 nm, c.f. Evonik p. 9), which overlaps the claimed range of “20 to 100 nm,” establishing a prima facie case of obviousness.
Regarding claim 8, Belkacem teaches the incorporation of a difunctional acrylate or methacrylate component (component (E)), as described above. As described above, this component may read on the claimed “second multi-functional curable material,” however, in an alternative analysis, component (E) may additionally (i.e., simultaneously) read on the claimed “first multi-functional curable material,” because it is included in amounts ranging from 0.1-50 % by weight ([0054], which encompasses the claimed ranges of “10 to 30%” and “15 to 20% by weight,” establishing prima facie cases of obviousness), and because it may optionally comprise Sartomer 833 ([0086]), which the instant Specification states is a suitable “first multi-functional material” (p. 32, lines 24-25).
Belkacem explicitly states that component (E) may comprise a mixture of different compounds ([0085]). Furthermore, the aforementioned amount of component (E) taught by Belkacem (0.1-50 wt%, [0054]) overlaps the cumulative ranges required by claim 1 (20-60% or 25-55%), establishing a prima facie case of obviousness. Furthermore, while Belkacem does not directly contemplate the relative amounts of 2 or more components within component (E), the obviousness analysis may “take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007). For example, the analysis may “include recourse to logic, judgment, and common sense available to the person of ordinary skill that do not necessarily require explication in any reference or expert opinion.” Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1329 (Fed. Cir. 2009). The Patent Trial and Appeal Board has held that mixing equivalent components in a 1:1 ratio represented no more than application of the “logic, judgment, and common sense available to the person of ordinary skill” in the art. Ex parte Swanzy, Appeal 2017-004875 at 8-9.
In this case, Belkacem discloses Sartomer 833 and Sartomer 540 (which read on the claimed “first” and “second” multi-functional curable materials, respectively) as equally suitable alternatives to one another and therefore recognizes the equivalence of the two solvents. It would have would have been prima facie obvious, using no more than ordinary creativity, logic, judgment, and common sense, to combine the two in equal amounts (i.e. in a 1:1 ratio) based on the fact that both are disclosed in parallel as being equally suitable for use in this capacity. In doing so, the resulting formulation would comprise from 0.05 – 25 wt% of each component, which overlaps their respectively claimed ranges, establishing prima facie cases of obviousness. Sartomer 833, which reads on the claimed “first multi-functional material” as described above, is a di-functional curable material that comprises an alicyclic branching unit (c.f. Belkacem p. 16, Table 1a, which shows the chemical structure of Sartomer 833).
Regarding claims 10-11, Belkacem teaches the incorporation of Sartomer SR540 as component (E), which reads on the claimed “second multi-functional curable material” as described in the rejection of claim 1, above. Sartomer SR540 is a multifunctional curable material containing 4 alkylene glycol subunits and an aromatic branching unit (bisphenol A-based, c.f. Sartomer SR540, p. 1), and the instant Specification further states that Sartomer SR540 is a suitable ethoxylated bisphenol A dimethacrylate (c.f. instant Specification p. 35, lines 1-3). Therefore, the component (E) comprising Sartomer SR540, taught by Belkacem, reads on the claimed “second multi-functional curable materials” required by claims 10-11.
Regarding claim 12, Belkacem teaches that the monofunctional material (component (B)) ]) may be, inter alia, acryloyl morpholine ([0074], whose structure is shown to be 4-acryloyl morpholine at p. 17, Table 1a), which reads on the claimed “mono-functional curable material” because the instant Specification states that ACMO is an exemplary hydrophilic monofunctional acrylate (p. 37, lines 5-6).
Regarding claim 13, Belkacem specifically states that the monofunctional component (B) may comprise a mixture of different compounds ([0073]). Furthermore, as described above, Belkacem teaches the incorporation of between 10 and 70 wt% of component (B) ([0054]). Belkacem is silent with regard to the particular ratios of the components within component (B), however, the obviousness analysis may “take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007). For example, the analysis may “include recourse to logic, judgment, and common sense available to the person of ordinary skill that do not necessarily require explication in any reference or expert opinion.” Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1329 (Fed. Cir. 2009). The Patent Trial and Appeal Board has held that mixing equivalent components in a 1:1 ratio represented no more than application of the “logic, judgment, and common sense available to the person of ordinary skill” in the art. Ex parte Swanzy, Appeal 2017-004875 at 8-9.
In this case, Belkacem discloses all of the possible components within component (B) as equally suitable alternatives to one another and therefore recognizes the equivalence of the two solvents. It would have would have been prima facie obvious, using no more than ordinary creativity, logic, judgment, and common sense, to combine the two in equal amounts (i.e. in a 1:1 ratio) based on the fact that both are disclosed in parallel as being equally suitable for use in this capacity. In doing so, the resulting formulation would comprise from 5 to 35 wt% of each of two components, which overlaps the claimed range of “10 to 20% by weight,” establishing a prima facie case of obviousness. Furthermore, Belkacem teaches the use of isobornyl acrylate (IBOA) as a suitable monofunctional component ([0076]), which has a molecular weight of 208.30 g/mol, which falls within the claimed range of “no more than 500 gram/mol,” establishing a prima facie case of obviousness.
Regarding claim 14, as described above, Belkacem teaches the incorporation of IBOA as an additional monofunctional material, which is a hydrophobic monomer (c.f. Hall [0038]).
Regarding claim 15, as described above, Belkacem teaches a formulation comprising:
0.1-20% by weight of a core shell nanoparticle filler ([0064]), which would be obvious to include as a dispersion within component (D) of the formulation, which in-turn comprises 1-20 wt% of the formulation ([0054]). The dispersion of the silica within component (D) therefore comprises between 1.1 and 40 wt% of the formulation, which overlaps the claimed range of “20 to about 60% by weight,” establishing a prima facie case of obviousness.
0.1-50 % by weight of a difunctional acrylate or methacrylate component (component (E), [0054]), which may be, inter alia, Sartomer 540 ([0090]), which reads on the claimed “second multi-functional curable material” because the instant Specification states that Sartomer 540 is a suitable example thereof (c.f. instant Specification at p. 35, lines 1-3). The range of 0.1-50 wt% encompasses the claimed range of “10 to 30%,” establishing a prima facie case of obviousness.
10-70% by weight of a mixture of monofunctional materials (optionally an acrylate or methacrylate, component (B), [0054]), which may be, inter alia, acryloyl morpholine and IBOA, as described above, which reads on the claimed “mono-functional curable material” and “additional curable material.” Also as described above, it would have been obvious to incorporate each of these materials in a 1:1 ratio because Belkacem addresses them as equivalents. Therefore, each of these materials would have been obvious to incorporate in amounts ranging from 5 to 35 wt%, which overlaps the claimed range of “about 20 to about 50% by weight” and encompasses the claimed range of “about 10 to about 30% by weight,” establishing prima facie cases of obviousness.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Belkacem (EP 2,436,510 A1) in view of Hilgers (US 2016/0145449 A1) and further in view of Johnson (US 2008/0057217 A1).
Regarding claim 4, Belkacem teaches all of the limitations of claim 1 as described above. Belkacem teaches that the core shell nanoparticles are functionalized with a reactive shell ([0056]), but is silent with regard to the reactive shell particularly comprising acrylic functional groups as claimed.
In the same field of endeavor, Johnson teaches photocurable compositions containing radically curable monomers and reactive nanoparticles (abstract), and specifically teaches the incorporation of Albidur EP 2240, Albidur VE 3320, and Albidur EP 5340 as preferred reactive particles ([0062]), which are the same as some of the exemplary materials preferred by Belkacem ([0095]). Johnson further teaches that the reactive particles may include a number of different functional groups including acrylate groups ([0058]). It is prima facie obvious to substitute equivalents known in the art as suitable for the same purpose (see MPEP 2144.06). Therefore, it would have been obvious to one having ordinary skill in the art at the time of filing to incorporate acrylate functionality as the functional groups within the reactive shell of the core shell nanoparticles of Belkacem, as Johnson recognizes them as suitable reactive groups for reactive particles within photocurable compositions containing radically curable monomers.
Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over Belkacem (EP 2,436,510 A1) in view of Hilgers (US 2016/0145449 A1) and further in view of Lin (US 2017/0182708 A1).
Regarding claim 16, Belkacem teaches the formulation of claim 1, as described above. Belkacem further teaches additional compositions falling outside of the scope of claim 1, which Belkacem identifies as alternatives of the invention (e.g., Belkacem additionally contemplates formulations containing alumina-based fillers instead of silica-based fillers, [0095]). These formulations contain different optional components, may contain potentially different compositional breakdowns, and may even contain different primary, matrix-forming materials such as the acrylate-based materials, which are taught with a range of options (e.g., component (A) could be formed with a urethane acrylate or a methacrylate component ([0067])). It is expected that, since a material’s properties directly arise from the composition of said material, the differences in the chemical and compositional makeup between these formulations will inherently lead to differences in mechanical characteristics including, but not limited to, heat-deflection temperature (HDT), Izod impact strength, and elastic moduli. Therefore, the teachings of Belkacem include multiple formulations which differ in the claimed physical characteristics.
Belkacem differs from claim 16 because it is silent with regard to a system which incorporates two different formulations, having the aforementioned different characteristics, together.
In the same field of endeavor, Lin teaches a multi-material stereolithographic three-dimensional printing system (Abstract), wherein the printing process involves two different materials (Abstract). Lin further teaches that the materials may be different ([0050]). Lin further teaches that suitable materials useful therein are photosensitive materials (p. 9, claim 2). Lin finally teaches that the application of multiple materials in the DLP SLA 3D printing space broadens the application space and improves user experience ([0004]). Therefore, it would have been obvious to one having ordinary skill in the art at the time of filing to incorporate two of the varying possible 3D printing formulations taught by Belkacem into the multi-material 3D printing apparatus of Lim for the purpose of improving user experience and broadening the application space of the technology. Doing so would form a multi-formulation system reading on the same as claimed.
Response to Arguments
Applicant filed a terminal disclaimer on November 19, 2025. Accordingly, the double patenting rejection of claims 1-3, 5-13, and 15-16 has been withdrawn.
Applicant's arguments filed November 19, 2025 have been fully considered but they are not persuasive.
Applicant argues that the prior art does not contemplate the inventive composition(s) as specifically being suitable for inkjet 3D printing, the arguments being tantamount to allegations that the prior art is non-analogous to the claimed invention. However, the prior art documents are related to 3D printing. While inkjet 3D printing may not be specifically mentioned, the instant Disclosure specifically states that the claimed invention relates to additive manufacturing, including “3D inkjet printing, electron beam melting, stereolithography, selective laser sintering, laminated object manufacturing, fused deposition modeling, and others” (see instant Specification p. 1, FIELD AND BACKGROUND OF THE INVENTION section). For a reference to be analogous art, it must either (1) be from the same field of endeavor (even if it addresses a different problem than the instant disclosure) or (2) be reasonably pertinent to the problem faced by the inventor (even it is not in the same field of endeavor). In this case, the Applicant has broadly described that the pertinent field of endeavor includes essentially the entire landscape of 3D printing – including technologies such as fused deposition modeling, which does not routinely involve photocurable compositions. Therefore, the disclosures of the prior art relied upon for the previous and current 35 USC 103 rejections fall within the same field of endeavor as the instant Application, and are analogous to the claimed invention regardless of whether or not they explicitly mention 3D inkjet printing.
Applicant next states that the claimed invention must be carefully curated, and that the claimed advantages are not achievable by merely combining the claimed ingredients in any amounts. These compositional amounts, recognized as important by the Applicant, appear to be reflected within the claimed compositional amount ranges (e.g., silica particles are claimed in amounts ranging from 10 to 30 wt%). Applicant essentially argues that the breadth of teachings within the prior art fail to adequately disclose the claimed composition because a person having ordinary skill in the art would have to choose a narrow range of materials from a very large genus of formulations in order to achieve the claimed composition. Applicant asserts that this constitutes hindsight reconstruction.
It must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant’s disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
In response to applicant's argument that the prior art fails to recognize the particular advantages of the claimed compositional ranges. 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).
Finally, the question of whether or nor the prior art discloses a claimed range with “sufficient specificity” is a question of anticipation, not of obviousness (See MPEP 2131.03). Regardless of the numerosity of options within the prior art, the claimed compositional ranges overlap/encompass the respectively claimed ranges, establishing prima facie cases of obviousness. In other words, the series of decisions that a person of ordinary skill in the art would have to make to arrive at the claimed composition, which the Applicant describes on p. 13 of the Applicant’s response, would all have been obvious given the relevant disclosures in the prior art. Importantly, regarding the applicant’s contentions against less preferred teachings within Belkacem, patents are relevant as prior art for all of the information that they contain, and non-preferred and alternative embodiments nonetheless constitute prior art (see MPEP 2123.I and II).
Applicant states that “a person skilled in the art would not have had any reason to perform the multiple selections required to arrive at the claimed invention” (p. 15 of Applicant’s response, second full paragraph); however, a person of ordinary skill in the art would be motivated to utilize components/compositional amounts disclosed by a prior art document merely because said document disclosed said component/amount as suitable. For example, Belkacem teaches the incorporation of between 0.1 and 20 wt% of a core shell nanoparticle filler ([0064]) which is exemplified as comprising silica ([0064]). Therefore, it would have been obvious to one having ordinary skill in the art to incorporate 0.1 to 20 wt% of a core shell filler comprising silica within the formulation of Belkacem.
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.
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/JOSHUA CALEB BLEDSOE/Examiner, Art Unit 1762
/ROBERT S JONES JR/Supervisory Patent Examiner, Art Unit 1762