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 .
Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claims 1, 16 are provisionally rejected under 35 U.S.C. 101 as claiming the same invention as that of claim 1 of copending Application No. 19/386,988 (reference application). This is a provisional statutory double patenting rejection since the claims directed to the same invention have not in fact been patented. It being considered, the claim 16 limitation of a “mold defining an interior volume” is not patentably different and substantially the same as the reference application 19/386,988 limitation of “a first mold, wherein the first mold comprises an interior volume”; as one of ordinary skill in the art would readily understand a mold is a so-called first mold. Additionally, where the pending application 19/194,273 and copending application 19/386,988 both require the mold to be formed of the composition comprising the Formulas (I), (II) and (III); then one of ordinary skill in the art would readily understand the composition is suitable for use a hydrogel as the compositions are substantially the same.
Claim Objections
Claims 1 and 16 are objected to because of the following informalities: Each page of the claims appear to have the Attorney Docket Number (USA.794) placed thereon. Due to the length of the claims its placement is easily misconstrued as a term that should be read into the claims. The examiner suggest removing or placing it in the document header. Appropriate correction is required.
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 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.
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.
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.
Claims 1-15 are rejected under 35 U.S.C. 103 as being unpatentable over Xu et al. (WO 2023/049137 A1), in view of Messe et al. (US 2010/0104832 A1), in view of Amin et al. (EP 4177282 A1).
Regarding claims 1, 4, 15, Xu discloses a method and composition for forming an object by additive manufacturing, see at least [0002], [0061] – (construed as a composition for additive manufacturing; and a method of forming a three-dimensional article by additive manufacturing). The method to include selectively applying energy (e.g., the curing radiation) to an ink comprising the composition, see at least [0019], [0077] – (corresponds to selectively curing a portion of the composition). The composition as a polymerizable liquid to include a compound having the structure of Formula (I) and Formula (II): wherein n is an integer between 4 and 40, and wherein the compound having the structure of Formula (I) and/or Formula (II) is present in an amount of 4-40 wt.%, based on the total weight of the polymerizable liquid composition, see at least claims 1, 3 – (construed as and overlaps n is an integer between 4 and 40; and an amount of 10-35 wt.%, based on the total weight of the composition).
Xu does not explicitly disclose the claimed monomeric curable material having the structure of Formula (III). However, as Xu contemplates the use of acrylate components to include ethoxylated compounds, see at least claim 1, [0050]; one of ordinary skill would have good reason to pursue contemporary uses thereof. Moreover, the selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination, see MPEP 2144.07.
Messe discloses a curable composition suitable for use 3D inkjet printing. The composition to include an acrylate containing compound (d) as a di(meth)acrylate – (construed as a monomeric curable material) having the structure of:
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In which R1F is a hydrogen atom or methyl, see [0114] – (corresponds to R1, R2 are each independently H or CH3). In which YF is a direct bond, C1 - C6 alkylene, see [0115] – (corresponds to X is a linear or branched C1-C4 alkyl as the applicant defines in the written description [0026] and [0035]; alkyl moiety and alkylene moiety are used interchangeably both being a bivalent saturated aliphatic radical). In which YF is a direct bond, -S-, see [0115]; and ethoxylated Bisphenol S, see [0111] – (corresponds to X is a group with the structure
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).
Messe discloses such a compound contributes to a photocurable composition having high impact resistance, high green flexural modulus, high bend modulus and high tensile modulus, see [0011].
As to the sum of p and q is an integer between 2 and 30:
Amin discloses a composition suitable for use as an additive manufacturing resin. The composition to include (meth)acrylate-functionalized monomers of ethoxylated10 bisphenol A dimethacrylate (where the numeral following "ethoxylated" is the average number of oxyalkylene moieties per molecule); ethoxylated10 bisphenol A diacrylate; ethoxylated30 bisphenol A dimethacrylate; and ethoxylated30 bisphenol A diacrylate, see at least [0126]. One of ordinary skill in the art would readily understand the structural formula for ethoxylated (10, 30) bisphenol A dimethacrylate) is representative of:
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With n + m having an average number of oxyalkylene moiety of 10 per molecule is equivalent to adding 5 repeating ethoxy units (-CH2CH2O-) to each of n and m. Likewise, a moiety of 30 is the total number of repeating ethoxy units (-CH2CH2O-) in n and m – (corresponds to the sum of p and q is an integer between 2 and 30).
And the structural formula for ethoxylated bisphenol A diacrylate is representative of:
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With n + m having an average number of oxyalkylene moiety of 10 per molecule is equivalent to adding 5 repeating ethoxy units (-CH2CH2O-) to each of n and m. Likewise, a moiety of 30 is the total number of repeating ethoxy units (-CH2CH2O-) in n and m – (corresponds to the sum of p and q is an integer between 2 and 30).
Amin discloses the use of (meth)acrylate-functionalized monomers contributes to the flexibility, strength and/or modulus attributes, of the composition, see [0119].
Accordingly, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Xu’s composition to include a monomeric curable material having the features as taught by Messe and Amin to provide Xu’s composition with the attributes of a photocurable composition having high impact resistance, high green flexural modulus, high bend modulus and high tensile modulus, as well as flexibility and strength as suggested by Messe and Amin.
Regarding claim 2, as previously discussed, modified Xu discloses YF is a direct bond, C1 - C6 alkylene, see Messe [0115]. Wherein for YF = C3 – (corresponds to X is C(CH3)2).
Regarding claim 3, as previously discussed, modified Xu discloses YF is a direct bond, C1 - C6 alkylene, see Messe [0115]. Wherein for YF = C1 – (corresponds to X is CH2).
Regarding claim 5, modified Xu discloses the acrylate containing compound (d) is provided in an amount of 1 to 70% by weight, based on the total weight of the composition, see Messe [0126] – (corresponds to and overlaps the monomeric curable material is present in an amount of 30-50 wt.%, based on the total weight of the composition). Concerning the claimed ranges: Messe teaches the monomeric curable composition being 1 to 70% which fully encompasses the claimed range of 30-50 wt.%. Absent any additional and more specific information in the prior art, a prima facie case of obviousness exists. In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379 (Fed. Circ. 2003). MPEP 2144.05.
Regarding claim 6, modified Xu discloses the composition further comprises an acrylate or acrylamide component as an ethylenically unsaturated compound, see at least Amin [0114].
Regarding claim 7, modified Xu discloses the acrylate or acrylamide component as an ethylenically unsaturated compound is provided in an amount of 10 to 50% by weight relative to the total weight of the composition, see at least Amin [0132]. Concerning the claimed ranges: Amin teaches the acrylate or acrylamide component being 10 to 50% which fully encompasses the claimed range of 25-50 wt.%. Absent any additional and more specific information in the prior art, a prima facie case of obviousness exists. In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379 (Fed. Circ. 2003). MPEP 2144.05.
Regarding claim 8, modified Xu discloses the acrylate or acrylamide component comprises one or more (meth)acrylates, see Amin [0129].
Regarding claim 9, modified Xu discloses the one or more (meth)acrylates comprises 2-hydroxypropyl acrylate – (commonly known as hydroxypropyl acrylate), see Amin [0061].
Regarding claim 10, modified Xu discloses the acrylate or acrylamide component comprises one or more acrylamides, see at least Amin [0114].
Regarding claim 11, modified Xu discloses the one or more acrylamides comprises acryloyl morpholine as an ethylenically unsaturated compound, see Amin [0130].
Regarding claim 12, modified Xu discloses the one or more acrylamides comprises acryloyl morpholine as an ethylenically unsaturated compound and provided in an amount of 10 to 50% by weight relative to the total weight of the curable composition, see Amin [0131]. Concerning the claimed ranges: Amin teaches the acryloyl morpholine component being 10 to 50% which fully encompasses the claimed range of 10-40 wt.%. Absent any additional and more specific information in the prior art, a prima facie case of obviousness exists. In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379 (Fed. Circ. 2003). MPEP 2144.05.
Regarding claim 13, modified Xu discloses the composition further comprises a photoinitiator component, see Amin [0137].
Regarding claim 14, modified Xu discloses the composition further comprises a photoinitiator component provided in an amount of 0.05% to 5% by weight based on the total weight of the curable composition, see Amin [0139]. Concerning the claimed ranges: Amin teaches the photoinitiator component amount being 0.05% to 5% which fully encompasses the claimed 0.1-3 wt.%. The examiner takes note of the fact that as the prior art photoinitiator component amount range completely encompasses the claimed range with sufficient specificity. Absent any additional and more specific information in the prior art, the claimed range is anticipated. In re UCB, Inc. v. Actavis Labs. UT, Inc., 65 F.4th 679, 687, 2023 USPQ2d 448 (Fed. Cir. 2023). MPEP 2131.03.
Claims 16-18 are rejected under 35 U.S.C. 103 as being unpatentable over Xu et al. (WO 2023/049137 A1), in view of Messe et al. (US 2010/0104832 A1), in view of Amin et al. (EP 4177282 A1) as applied to claim 1 above, and further in view of Hara et al. (2022/0325023 A1), in view of Knopf et al. (US 2022/0119569 A1).
Regarding claim 16, while modified Xu discloses a method of forming a 3D article (Xu) and the composition contains additives such as dispersants and others which are conventionally used molding and 3D printing arts; it does not explicitly disclose the claimed steps or forming a mold from its composition.
Hara discloses a method for producing a mold. The method to include a composition to include an ethylene oxide-modified ((10 mol addition), (30 mol addition)) dimethacrylate – (commonly known as ethoxylated (10, 30) bisphenol A dimethacrylate)), see [0009], [0090] and Table 1. The examiner notes Hara’s composition is substantially the same as the combination of Messe and Amin. Thus, one of ordinary skill would have a reasonable expectation of success in using Hara’s composition in combination with Xu to thereby form a mold using the composition of claim 1.
As to the steps:
Knopf discloses a curable formulation to include ethoxylated bisphenol A diacrylate having “n” repeat units wherein “n” is greater than 2 repeat units and less than 500,000 repeat units, and methacrylated equivalents thereof, see [0108]. The examiner notes this is consistent with the compositions of Messe, Amin and Hara which presents a reasonable expectation of success in using the composition for the benefits it offers.
The curable composition is suitable for creating patterned structures such a negative mold which is used to form articles, of manufacture (or products), see [0067], [0208]. Wherein the method of forming the articles, of manufacture (or products) includes the steps of: (1) backfilling and/or injecting the 3D printed patterned structure with a curable or hardenable material. It is readily understood that backfilling or injecting the patterned structure as a negative mold inherently defines an interior volume to house the infill – (construed as providing a mold defining an interior volume; and injecting a fluid material into the interior volume of the mold); and (2) curing or hardening the material – (construed as solidifying the fluid material within the interior volume of the mold to form the article); and (3) dissolving and/or degrading the 3D printed patterned structure – (construed as removing the mold from the formed article), see [0223]. Knopf discloses the use of such sacrificial molds is beneficial for exhibiting solvent dissolution with limited, minimal or extremely low swelling and consequently exhibit limited, minimal or extremely low stresses on surrounding environments during dissolution. And mechanical integrity and toughness during portions of dissolution processes in which surface erosion behavior is observed, see [0015].
Accordingly, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to adjust modified Xu’s method of forming a 3D article to include the composition of claim 1 and as taught by Hara and include the steps as taught by Knopf to provide the method with aforementioned benefits.
Regarding claim 17, modified Xu discloses as providing the mold comprises forming the mold using additive manufacturing, see Knopf [0016].
Regarding claim 18, modified Xu discloses removing the mold from the article comprises dissolving or dispersing the mold in water or an aqueous solution, see Knopf [0214].
Conclusion
The 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 CEDRICK S WILLIAMS whose telephone number is (571)272-9776. The examiner can normally be reached on Monday - Thursday 8:00am-5:00pm.
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, Katelyn Smith can be reached on 5712705545. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CEDRICK S WILLIAMS/Primary Examiner, Art Unit 1749
