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 Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-13 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 1 requires: the 3D shaping inkiet ink further contains a dispersant for uniformly dispersing the ceramic component in an amount of 2.0% or more with respect to the ceramic component. However, this limitation is not found in the text of the originally filed specification. In the remarks filed 13 May 2026, Applicant asserts this limitation has supporting grounds in at least paragraphs [0154] and [0222](Table 1).
Paragraph [0154] describes the dispersant, but not in any specific percents as compared to the ceramic component. Paragraph [0155] teaches specific dispersants, and paragraph [0156] describes mass percents (mass%) of the dispersant. The specific values of mass% are from 1 to 30 and preferably 5 to 20. However, mass% is not the same as a percent with respect to the ceramic component. Mass percent is the percent of dispersant compared to the entire slurry in terms of mass whereas percent with respect to the ceramic component is apparently a calculation comparing the mass of the dispersant to the mass of the ceramic alone (without the remaining components of the slurry).
Examiner can find no teaching in the originally filed disclosure of the comparison of the mass of the dispersant to the mass of the ceramic alone.
That is, even though Applicant’s math is sound (Watanabe’s dispersant is only 1% of the mass of the ceramic, whereas Applicant’s dispersant is larger than 2% of the mass of the ceramic in their respective slurries), there is no indication that Applicant cared about or acknowledged such a calculation at the time the invention was filed.
See MPEP § 2163.05 III which discusses changes to the scope of the claims from changing range limitations. Here, even if the claimed 2% of dispersant with respect to ceramic were the same as mass%, Applicant doesn’t have support for 2% or more of dispersant following the fact pattern of In re Wertheim. Even though Applicant’s composition meets the claimed calculation (at the lower range), Applicant’s single example can not meet the claimed “or more” language. Moreover, it is unclear whether a person having ordinary skill in the art would recognize that a mere listing of component masses inherently teaches the ratio of each and every combination of components from that list.
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 (i.e., changing from AIA to pre-AIA ) 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 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.
Claims 1-13 are rejected under 35 U.S.C. 103 as being unpatentable over Watanabe (JP-2020029033-A) published 27 February 2020.
As to claim 1, Watanabe teaches a 3D shaping inkjet ink (Abstract: “A three-dimensional molding material set of this invention includes: slurry containing ceramic particles, an ultraviolet curing agent, and a solvent; and an ink1 containing a photo-initiator and a coloring agent.” Watanabe’s ink is applied by inkjet as described at Page 19 Paragraphs 2-3: “An ink jet head 5 for discharging ink 4 toward the slurry in the modeling-side slurry storage tank 1 is provided on the modeling-side slurry storage tank 1.”) comprising: a ceramic component (Watanabe’s material includes, a slurry containing ceramic particles); and a curable binder component (See Page 7 line 19: “The ink contains a photopolymerization initiator and a coloring agent, and further has other components as necessary.”), wherein the curable binder component is a component that can be degreased at a degreasing percentage (this limitation is a material property of the claimed material. The standard by which material properties interpreted and examined is found in MPEP § 2112.01: “Composition claims — if the composition is physically the same, it must have the same properties” Because the claimed composition is taught by Watanabe, Watanabe’s composition is interpreted as having the same properties. Watanabe addresses degreasing at page 17 under the heading “Heating step and heating means.”) at which, when a degreased body is obtained by degreasing a 3D object formed by curing the 3D shaping inkjet ink, a shape of the degreased body is maintained (this limitation is the intended consequence of the use of the claimed composition. Intended use limitations are interpreted in view of MPEP § 2114: “If an examiner concludes that a functional limitation is an inherent characteristic of the prior art, then to establish a prima case of anticipation or obviousness, the examiner should explain that the prior art structure inherently possesses the functionally defined limitations of the claimed apparatus.” As noted above, as described in MPEP § 2112.01, if the composition is physically the same, it must have the same properties. Thus, the composition of Watanabe is considered to have the same functional properties as the claimed composition since the physical composition as claimed is taught by Watanabe. Note that Watanabe teaches the shape of the device is maintained after heating. See Page 23 lines 16-17 which teaches Example 1: “and no shape collapse occurred. The three-dimensional structure 1 was excellent in strength and dimensional accuracy. “), and the curable binder component contains a plurality of types of polymerizable compounds (on Page 5 under the heading, “Radical photopolymerizable compound”, Watanabe teaches: “Examples of the photoradical polymerizable compound include a polymerizable compound having an acryl group (acryloyl group). Examples of the polymerizable compound having an acrylic group include a monofunctional polymerizable compound and a polyfunctional polymerizable compound as an acrylic monomer. These may be used alone or in combination of two or more.”).
Watanabe does not expressly disclose the 3D shaping inkiet ink further contains a dispersant for uniformly dispersing the ceramic component in an amount of 2.0% or more with respect to the ceramic component.
Rather, as indicated in applicant’s arguments, Watanabe’s examples at Table 1 include a ceramic component at 50 parts by mass and a dispersant component at .5 parts by mass. The resulting percentage is .5/50*100=1% which is less than 2, not 2% or more as claimed.
However, it would have been obvious to a person having ordinary skill in the art at the time the invention was effectively filed to have provided the claimed value of 2% or more of dispersant with respect to ceramic component at the time the invention was effectively filed.
First, the amount of dispersant is a result effective variable, and choosing an optimum value of dispersant as compared to ceramic would have been acknowledged by such an artisan as routine optimization. See MPEP § 2144.05 II A: “Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical.” Watanabe teaches at page 7: “When the slurry contains a dispersant, the dispersibility of the ceramic particles can be improved, sedimentation at rest can be suppressed, and the viscosity of the slurry can be reduced. Therefore, when the slurry contains the dispersant, the slurry can be favorably conveyed by a doctor blade or the like, and the ceramic particles are likely to be continuously present when the green body is formed.” As dispersant directly modifies the sedimentation and viscosity of the slurry, one would expect more dispersant to further reduce sedimentation and improve viscosity for the purpose of conveying via doctor blade. Thus there is motivation to optimize the amount of dispersant, including in values more than and less than .5 parts by mass.
Moreover, Applicant has no disclosure that the particular value of the particular ratio claimed is critical. First, as noted in the rejection under section 112 above, there is no specific disclosure of any value of percent dispersant compared to ceramic in the originally filed disclosure. Instead, Applicant’s disclosure with regards to dispersant is the opposite of a critical range: See [0154] “The dispersant is not particularly limited as long as it can uniformly disperse the ceramic material in the 3D shaping inkjet ink.”
Last, even if the amount of dispersant were not a result effective variable (or in addition to being so), the amount of dispersant as a percentage compared to ceramic in the prior art is a similar value to that as claimed, which itself creates a prima facie case of obviousness. See MPEP § 2144.05 I: “Similarly, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985)” In this case, the claim requires 2% or more while the Watanabe reference discloses 1%. 1% is similar to 2%. Applicant has not argued that 2% has properties above and beyond 1%. See MPEP § 2144.05 I: “The proportions are so close that prima facie one skilled in the art would have expected them to have the same properties.”
As to claims 2-13, the text of the claims remains unamended and the text of the rejection remains unchanged. The text is reprinted here for convenience.
As to claim 2, Watanabe teaches the 3D shaping inkjet ink as set forth in claim 1, wherein a content of the ceramic component in the 3D shaping inkjet ink is 10 vol% or more and 50 vol% or less (Page 4 lines 28-29: “The content of the ceramic particles is preferably from 40% by mass to 70% by mass with respect to 100% by mass of the slurry.”).
As to claim 3, Watanabe teaches the 3D shaping inkjet ink as set forth in claim 1, wherein the plurality of types of polymerizable compounds are components with which the 3D object shrinks without cracking when the 3D object is degreased (this is an intended result of the use of the composition as claimed. It is considered as a material property. See Examiner’s above interpretation of intended use and material properties. Refer to MPEP §§ 2112.01 and 2114. As the composition of Watanabe meets the claimed composition, Watanabe is considered to meet all material properties and accordingly all intended results of the use of the composition.).
As to claim 4, Watanabe teaches the 3D shaping inkjet ink as set forth in claim 1, wherein the plurality of types of polymerizable compounds have a degreasing percentage of 80 wt% or more and 90 wt% or less when a degreasing temperature is 320°C or higher and 350°C or lower (this is an intended result of the use of the composition as claimed. It is considered as a material property. See Examiner’s above interpretation of intended use and material properties. Refer to MPEP §§ 2112.01 and 2114. As the composition of Watanabe meets the claimed composition, Watanabe is considered to meet all material properties and accordingly all intended results of the use of the composition. ).
As to claim 5, Watanabe teaches the 3D shaping inkjet ink as set forth in claim 1, wherein the plurality of types of polymerizable compounds include a monomer and an oligomer (on Pages 5-6 under the heading, “Radical photopolymerizable compound”, Watanabe teaches: “Examples of the photoradical polymerizable compound include a polymerizable compound having an acryl group (acryloyl group). Examples of the polymerizable compound having an acrylic group include a monofunctional polymerizable compound and a polyfunctional polymerizable compound as an acrylic monomer. These may be used alone or in combination of two or more. Further, the monofunctional polymerizable compound and the polyfunctional polymerizable compound may be in a mixed state or in an oligomer state chemically bonded to each other. The radical polymerizable compound is preferably a compound (oligomer or polymer) in a state of being chemically bonded to some extent from the viewpoint that polymerization shrinkage can be suppressed.” [emphasis added]).
As to claim 6, Watanabe teaches the 3D shaping inkjet ink as set forth in claim 1, wherein the plurality of types of polymerizable compounds include a monofunctional polymerizable compound and a polyfunctional polymerizable compound (See Page 6 under the headings, “Monofunctional polymerizable compound” and “Polyfunctional polymerizable compound”).
As to claim 7, Watanabe teaches the 3D shaping inkjet ink as set forth in claim 1, wherein the plurality of types of polymerizable compounds include: at least one monofunctional monomer selected from the group consisting of benzyl acrylate, phenoxyethyl acrylate, and 2-(2-ethoxyethoxy)ethyl acrylate; and a polyfunctional urethane acrylate-based oligomer (On page 6 under the heading “Monofunctional polymerizable compound”: “Examples of the monofunctional acrylic compound include alkyl acrylates such as methyl acrylate, ethyl acrylate, isopropyl acrylate, t-butyl acrylate, n-butyl acrylate, isobutyl acrylate, butoxyethyl acrylate, and 2-ethylhexyl acrylate; Hydroxyalkyl acrylates such as 3-hydroxypropyl acrylate, 2-hydroxy-1,3-diacryloxypropane and hydroxypropyl acrylate; tetrahydrofurfuryl acrylate, glycidyl acrylate, ethylene glycol acrylate, 2-methoxyethyl acrylate, benzyl acrylate, epoxy Acrylate, urethane acrylate and the like can be mentioned. These may be used alone or in combination of two or more.” Under the heading “Polyfunctional polymerizable compound”: “Examples of the polyfunctional acrylic compound include diethylene glycol diacrylate, 1,3-butylene glycol diacrylate, 1,4-butylene glycol diacrylate, tetraethylene glycol diacrylate, urethane diacrylate, and bisphenol A diglycidyl acrylate. These may be used alone or in combination of two or more.” [emphasis added]).
As to claim 8, Watanabe teaches the 3D shaping inkjet ink as set forth in claim 2, wherein the plurality of types of polymerizable compounds are components with which the 3D object shrinks without cracking when the 3D object is degreased (this is an intended result of the use of the composition as claimed. It is considered as a material property. See Examiner’s above interpretation of intended use and material properties. Refer to MPEP §§ 2112.01 and 2114. As the composition of Watanabe meets the claimed composition, Watanabe is considered to meet all material properties and accordingly all intended results of the use of the composition.).
As to claim 9, Watanabe teaches the 3D shaping inkjet ink as set forth in claim 2, wherein the plurality of types of polymerizable compounds have a degreasing percentage of 80 wt% or more and 90 wt% or less when a degreasing temperature is 320°C or higher and 350°C or lower (this is an intended result of the use of the composition as claimed. It is considered as a material property. See Examiner’s above interpretation of intended use and material properties. Refer to MPEP §§ 2112.01 and 2114. As the composition of Watanabe meets the claimed composition, Watanabe is considered to meet all material properties and accordingly all intended results of the use of the composition. ).
As to claim 10, Watanabe teaches the 3D shaping inkjet ink as set forth in claim 3, wherein the plurality of types of polymerizable compounds have a degreasing percentage of 80 wt% or more and 90 wt% or less when a degreasing temperature is 320°C or higher and 350°C or lower (this is an intended result of the use of the composition as claimed. It is considered as a material property. See Examiner’s above interpretation of intended use and material properties. Refer to MPEP §§ 2112.01 and 2114. As the composition of Watanabe meets the claimed composition, Watanabe is considered to meet all material properties and accordingly all intended results of the use of the composition. ).
As to claim 11, Watanabe teaches the 3D shaping inkjet ink as set forth in claim 2, wherein the plurality of types of polymerizable compounds include a monomer and an oligomer (on Pages 5-6 under the heading, “Radical photopolymerizable compound”, Watanabe teaches: “Examples of the photoradical polymerizable compound include a polymerizable compound having an acryl group (acryloyl group). Examples of the polymerizable compound having an acrylic group include a monofunctional polymerizable compound and a polyfunctional polymerizable compound as an acrylic monomer. These may be used alone or in combination of two or more. Further, the monofunctional polymerizable compound and the polyfunctional polymerizable compound may be in a mixed state or in an oligomer state chemically bonded to each other. The radical polymerizable compound is preferably a compound (oligomer or polymer) in a state of being chemically bonded to some extent from the viewpoint that polymerization shrinkage can be suppressed.” [emphasis added]).
As to claim 12, Watanabe teaches the 3D shaping inkjet ink as set forth in claim 2, wherein the plurality of types of polymerizable compounds include a monofunctional polymerizable compound and a polyfunctional polymerizable compound (See Page 6 under the headings, “Monofunctional polymerizable compound” and “Polyfunctional polymerizable compound”).
As to claim 13, Watanabe teaches the 3D shaping inkjet ink as set forth in claim 2, wherein the plurality of types of polymerizable compounds include: at least one monofunctional monomer selected from the group consisting of benzyl acrylate, phenoxyethyl acrylate, and 2-(2-ethoxyethoxy)ethyl acrylate; and a polyfunctional urethane acrylate-based oligomer (On page 6 under the heading “Monofunctional polymerizable compound”: “Examples of the monofunctional acrylic compound include alkyl acrylates such as methyl acrylate, ethyl acrylate, isopropyl acrylate, t-butyl acrylate, n-butyl acrylate, isobutyl acrylate, butoxyethyl acrylate, and 2-ethylhexyl acrylate; Hydroxyalkyl acrylates such as 3-hydroxypropyl acrylate, 2-hydroxy-1,3-diacryloxypropane and hydroxypropyl acrylate; tetrahydrofurfuryl acrylate, glycidyl acrylate, ethylene glycol acrylate, 2-methoxyethyl acrylate, benzyl acrylate, epoxy Acrylate, urethane acrylate and the like can be mentioned. These may be used alone or in combination of two or more.” Under the heading “Polyfunctional polymerizable compound”: “Examples of the polyfunctional acrylic compound include diethylene glycol diacrylate, 1,3-butylene glycol diacrylate, 1,4-butylene glycol diacrylate, tetraethylene glycol diacrylate, urethane diacrylate, and bisphenol A diglycidyl acrylate. These may be used alone or in combination of two or more.” [emphasis added]).
Response to Arguments
Applicant's arguments filed 13 May 2026 have been fully considered but they are not persuasive.
Applicant asserts on page 5 that the amendment to claim 1 is based on supported grounds at least provided in paragraph [0154] and paragraph [0222] (table 1). Examiner disagrees. See Examiner’s discussion of whether the amendment is supported by the originally filed disclosure in paragraphs 8-14 above.
On Page 7, Applicant argues Watanabe’s disclosure of dispersant in an amount of 1% with respect to the ceramic particles is not a disclosure of the claimed 2.0% or more.
Examiner agrees, and the claim is not rejected under 35 USC 102. Rather, the claim is rejected under 35 USC 103 as being obvious. The obviousness statement is provided in the rejection above at paragraphs 19-25.
Dependent claims 2-13 are not argued to include any limitations not taught by Watanabe.
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 JACOB JAMES CIGNA whose telephone number is (571)270-5262. The examiner can normally be reached 9am-5pm Monday-Friday.
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/JACOB J CIGNA/Primary Examiner, Art Unit 3726 13 August 2026
1 Note that Watanabe describes the “ink” as a component of the “molding material.” Examiner considers the entire “molding material” to be the claimed “ink.”
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