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 .
The amendments filed 1/20/26 overcome the rejections set forth in the office action mailed 10/17/25. New grounds of rejection necessitated by the amendments are set forth below.
Claim Rejections - 35 USC § 103
Claims 1-4 and 6-7 are rejected under 35 U.S.C. 103 as being unpatentable over Yamamoto (U.S. PG Pub. No. 2021/0130632).
In paragraph 2 Yamamoto discloses an ink for producing a shaped article. In paragraphs 10 and 21 Yamamoto discloses that the ink comprises a photopolymerizable compound and air bubbles. In paragraph 65 Yamamoto discloses that the photopolymerizable compound comprises a mixture of monofunctional monomers (A and B) and a difunctional oligomer (C). It is noted that the “comprises” language of the claims allows for the composition to comprise more than one (meth)acrylic monomer compound. In paragraph 89 Yamamoto discloses that (2-methyl-2-ethyl-1,3-dioxolan-4-yl)methyl acrylate, as recited for the (meth)acrylic monomer of amended claim 1, is a preferred monofunctional monomer B. In paragraph 105 Yamamoto discloses that the difunctional oligomer is particularly preferably a urethane (meth)acrylate oligomer (the “(meth)acrylate” language indicating that the compound can be a methacrylate or the claimed urethane acrylate), and in paragraph 132 Yamamoto discloses that the weight-average molecular weight of the urethane (meth)acrylate monomer is preferably 500 to 50,000, encompassing the range recited in claim 1. In paragraphs 138 and 145-152 Yamamoto discloses that the composition can comprise a photopolymerization inhibitor, as recited in claim 1.
In paragraph 170 Yamamoto discloses that the viscosity of the ink at 25° C is in ranges overlapping or encompassing the range recited in claim 2, such as a range of 1 to 10,000 mPa∙s, or 10 to 500 mPa∙s. In paragraphs 106-131 Yamamoto indicates that the urethane acrylate will have an acryloyl group having a urethane bond, as recited in claim 3. In paragraph 101 Yamamoto indicates that the urethane acrylate (difunctional oligomer) can be present in an amount of up to 10% by weight of the total of the monofunctional monomers and difunctional oligomer, overlapping the range recited in claim 4.
The difference between Yamamoto and the currently presented claims is that some of the ranges of Yamamoto overlap or encompass the claimed ranges rather than falling within them. See MPEP 2144.05(I): “In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976);” "[A] prior art reference that discloses a range encompassing a somewhat narrower claimed range is sufficient to establish a prima facie case of obviousness." In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379, 1382-83 (Fed. Cir. 2003). Claims 1-4 are therefore rendered obvious by Yamamoto. Additionally, since the photopolymerizable compound of Yamamoto meets the compositional limitations of the claimed resin composition, it will have the properties recited in claims 6-7 after UV curing.
Allowable Subject Matter
Claim 5 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims. The prior art does not disclose or render obvious the further inclusion of the additional compounds of claim 5 in the (meth)acrylic monomer of the claimed resin composition. While Yamamoto discloses in paragraph 83 that the monofunctional (meth)acrylate can include an alkyl (meth)acrylate, Yamamoto does not disclose 2-ethylhexyl (meth)acrylate, and in paragraph 85 Yamamoto discloses that a homopolymer monofunctional monomer A (used in combination with monofunctional monomer B, which is preferably 2-methyl-2-ethyl-1,3-dioxolan-4-yl)methyl acrylate), preferably has a glass transition temperature of 90° C or more, while homopolymers of 2-ethylhexyl acrylate have a far lower glass transition temperature of about -70° C. One of ordinary skill in the art would therefore not be motivated to include 2-ethylhexyl acrylate in combination with 2-methyl-2-ethyl-1,3-dioxolan-4-yl)methyl acrylate in the composition of Yamamoto.
Response to Arguments
Applicant’s arguments with respect to claims 1-7 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument. The newly applied Yamamoto reference addresses the limitations of amended claim 1 and dependent claims 2-4 and 6-7.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAMES C GOLOBOY whose telephone number is (571)272-2476. The examiner can normally be reached M-F, usually about 10:00-6:30.
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/JAMES C GOLOBOY/Primary Examiner, Art Unit 1771