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, 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) and 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.
Each of the components above which read the claimed “first” and “second” multi-functional curable materials and the claimed “mono-functional” curable materials are acrylate-based, and therefore meet the newly added limitation requiring that they are all acrylic materials.
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.
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.”
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.
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 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 Johnson (US 2008/0057217 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's arguments filed May 12, 2026 have been fully considered but they are not persuasive.
Applicant traverses the rejection with respect to the combination of references, applied previously and above. Applicant specifically states that three legal propositions, In re McLaughlin, 443 F.2d 1392 (CCPA 1971), Ex Parte Obiaya, USPQ 58, 60 (Bd. Pat. App. & Inter. 1985), and MPEP 2123, have all been misapplied to the facts of the case. Applicant refers to the number of alternatives available in the cited art, the “disproportionate” breadth of the cited art ranges relative to the claimed ranges, and the direction of the preferred teachings of the cited art in support of said traversal.
Applicant points to the “minimum combinatorial space” from which selections within the prior art would have had to have been made to reach the claimed composition; however, while the span of said “minimum combinatorial space” may be broad, the decisions represented therein would nevertheless have been obvious to one having ordinary skill in the art. For Example, in the table on p. 11 of the Applicant’s arguments, the Applicant refers to the fact that silica may be an optional component within the prior art.
Applicant emphasizes that the component may be omitted, but this does not rebut the fact that optionality clearly and specifically indicates that said option is included within the prior art. One having ordinary skill in the art would therefore be reasonably motivated to include silica in the prior art composition – the prior art specifically states that it may be included.
In the same table, the Applicant emphasizes that the amount of silica as claimed falls outside of the preferred range of the prior art; however, as stated previously, 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). The prior art therefore teaches the claimed range despite said range not being the most preferred therein. In cases where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists (see MPEP 2144.05).
Applicant asserts that McLaughlin has “been misapplied to the specific facts of the case,” stating that “in every instance where the Examiner states a specific compound from among the numerous alternatives available in the prior art, the stated basis for that selection is Applicant’s own specification” (emphasis Applicant’s). Applicant applies this assertion to SR454, SR540, and ACMO; however, this analysis is incorrect.
In contrast to the Applicant’s assertion, the Examiner has shown that each of these components are taught by the prior art (c.f. Belkacem at [0083], [0090], and [0074]). In the rejection, the Examiner states that each of these components reads on the respectively claimed compounds because the specification states that these compounds are examples of, respectively, claimed components “(D),” “(E),” and “mono-functional curable material.” The mention of the Applicant’s own specification in this way merely serves to show how each of these components, taught by the prior art, meets the limitations of their claimed counterparts given the Applicant’s own admission that these chemical components fall within the purviews of said claimed counterparts. The Examiner has not applied improper hindsight to find said components as suitable or useful in the prior art composition – the prior art teaches the use of these components. As described above and previously, the prior art documents’ mention of these components alongside the remaining claim limitations renders the claimed composition obvious despite there being a relatively broad array of options available in the composition space.
Applicant next contends that Obiaya is inappropriately applied, stating that the application thereof “presupposes that the claimed subject matter would otherwise be obvious.” As described above, the claimed subject matter would be obvious, despite the Applicant’s contention that the breadth of possible combinations would suggest otherwise. As previously stated, the question of sufficient specificity refers to anticipation rejections, whereas the current matter concerns obviousness rejections (see MPEP 2131.03.II).
Applicant next invokes MPEP 2144.07 in an attempt to argue that the compositions of Belkacem do not achieve the performance of the claimed combination; however, the mere fact that Belkacem contains compositions which fall outside of the scope of the claimed composition does not rebut the fact that Belkacem additionally contains compositions which fall within the scope of the claimed composition.
Applicant next contends that MPEP 2123 has been misapplied, stating that said reference cannot be utilized in support of stating that a person of ordinary skill in the art would have been motivated to select and combine non-preferred disclosures.
However, this was not the basis on which the Examiner invoked MPEP 2123. Instead, MPEP 2123 was referenced in rebutting the Applicant’s assertion that non-preferred examples would somehow teach away from ranges within the prior art. As stated above and previously, MPEP 2123.II. explicitly states that “disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments.” Therefore, the ranges within Belkacem would have been obvious to one having ordinary skill in the art, and the teaching of preferred embodiments which do not fall within/overlap/encompass the claimed ranges does not rebut the additional incorporation of broader ranges which do fall within/overlap/encompass the claimed ranges.
Applicant asserts that there was no “prior art guidance” to form the claimed composition from the broad array of compositions present within the prior art.
However, specific guidance towards said composition is not required to establish a prima facie case of obviousness. Instead, as implied by the namesake, patentability is precluded merely if the claimed combination would have been obvious. As described above and previously, prima facie the claimed combination would have been obvious to a person of ordinary skill in the art because every decision required to form the claimed composition would have been obvious. For example, it would have been obvious to utilize silica because silica is included as an optional component. It would have been obvious to include silica in the range of 10-30 wt% because said range is taught within the prior art as suitable (even if not preferred), etc.
Applicant finally argues that the Examiner has failed to provide an articulated reasoning with a rational underpinning for the claimed combination; however, as described above, the prior art teaches the claimed components in the claimed ranges, and teaches the combination of said components within a formulation. The Examiner has not merely found each and every component as claimed from disparate fields and combined them together ad-hoc; rather, the prior art contains the claimed combination.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSHUA CALEB BLEDSOE whose telephone number is (703)756-5376. The examiner can normally be reached Monday-Friday 8:00 a.m. - 5:00 p.m. EST.
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, Robert Jones can be reached at 571-270-7733. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JOSHUA CALEB BLEDSOE/Examiner, Art Unit 1762
/ROBERT S JONES JR/Supervisory Patent Examiner, Art Unit 1762
Prosecution Insights