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 .
Response to Arguments
Applicant's arguments filed 4/08/2026 have been fully considered but they are not persuasive.
Regarding provisional nonstatutory double patenting rejections, Applicant argues that copending applications are “not prior art to the present application.” This is not found persuasive because the “prior art” is not relevant to a discussion of double patenting rejections. In fact, MPEP guidance states that Examiners should make a double patenting rejection between an earlier-filed and later-filed application, the MPEP 804(II)(B)(4) explicitly states:
Similarly, even if the application under examination has the earlier patent term filing date, only a one-way determination of distinctness is needed to support a double patenting rejection…
However, MPEP 804(I)(B)(1)(b)(i) states:
(i) Application under examination has the earlier patent term filing date
If a provisional nonstatutory double patenting rejection is the only rejection remaining in an application having the earlier patent term filing date, the examiner should withdraw the rejection in the application having the earlier patent term filing date and permit that application to issue as a patent, thereby converting the provisional nonstatutory double patenting rejection in the other application into a nonstatutory double patenting rejection upon issuance of the patent.
Thus, double patenting rejections are withdrawn for earlier-filed applications due claims otherwise in condition for allowance. The remaining double patenting application relates to a parent application with the same effective filing date as the present application.
Regarding Applicant’s arguments regarding 35 USC 103, these arguments are found persuasive and the rejection withdrawn.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claim 87 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 45 of copending Application No. 18/414277 (reference application) in view of Garmshausen (US 2022/0305723 A1). Although the claims at issue are not identical, they are not patentably distinct from each other, shown below:
Instant Application 19/273579
Copending Application No. 18/414277
Claim 87
A method of printing an object in a volume of a photohardenable composition, the method comprising:(a) providing a volume of the photohardenable composition
comprising: a photohardenable component including one or more reactive components, a photoswitchable photoinitiator, one or more nonreactivenon-reactive additives comprising one or more non-reactive thixotropes and/or non-reactive rheology modifiers, and one or more coinitiators,wherein the photoswitchable photoinitiator is activatable by exposure to light having a first wavelength and light having a second wavelength to induce a crosslinking or polymerization reaction in the photohardenable component, wherein the first and second wavelengths are different,
wherein the photohardenable composition displays non-Newtonian rheological behavior with a yield stress for forming the object in the photohardenable composition at a fixed position or with minimal displacement in the photohardenable composition during formation,;(b) simultaneously or sequentially irradiating one or more selected locations within the volume of the photohardenable composition with light having a first wavelength and light having a second wavelength, wherein light having the first wavelength and light having the second wavelength activate the photoswitchable photoinitiator at the one or more selected locations and at least partially harden the photohardenable composition at the one or more selected locations within the volume to at least partially form the object, wherein the object at least partially formed in the photohardenable composition remains at a fixed position or is minimally displaced in the unhardened photohardenable composition during formation, wherein the first and second wavelengths are different; and(c) optionally repeating step b, irradiating the photohardenable composition at one or more of the same or different locations in the volume until the object is partially or fully formed.
Claim 45
A method of printing an object comprising:(a) providing a volume including a photohardenable composition comprising a photohardenable component and a photoswitchable photoinitiator, wherein the photoswitchable photoinitiator is activatable by exposure to light having a first wavelength and light having a second wavelength to induce a crosslinking or polymerization reaction in the photohardenable component, wherein the first and second wavelengths are different, wherein the photopolymerizable composition displays non-Newtonian rheological behavior,(b) simultaneously or sequentially irradiating one or more selected locations within the volume of the photohardenable composition with light having a first wavelength and light having a second wavelength, wherein light having the first wavelength and light having the second wavelength activate the photoswitchable photoinitiator at the one or more selected locations and at least partially harden the photohardenable composition at the one or more selected locations within the volume to at least partially form the object, wherein the object at least partially formed in the photohardenable composition remains at a fixed position or is minimally displaced in the unhardened photohardenable composition during formation, wherein the first and second wavelengths are different; and (c) optionally repeating step b, irradiating the photohardenable composition at one or more of the same or different locations in the volume until the object is partially or fully formed.
Copending Application No. 18/414277 does not claim wherein the photohardenable composition comprises the photohardenable component in an amount up to 99.998 parts per hundred, the photoswitchable photoinitiator in an amount from about 0.001 to about 0.5 parts per hundred, the coinitiator in an amount from about 0.001 to about 10 parts per hundred, and an amount ofthe one or more non-reactive thixotropes and/or non-reactive rheology modifiers in an amount effective to impart non-Newtonian rheological behavior to the photohardenable composition
Garmshausen claims wherein the photohardenable composition comprises the photohardenable component in an amount up to 99.998 parts per hundred, (preferably 20-99.9 wt % of photopolymerizable compound(s), e.g. monomer(s) [0093]) the photoswitchable photoinitiator in an amount from about 0.001 to about 0.5 parts per hundred, (preferably 0.1-1 wt % of dual color photoinitiator [0096]) the coinitiator in an amount from about 0.001 to about 10 parts per hundred, (3-10 wt % of co-initiator [0096]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the present application to vary to amounts of the components of Copending Application No. 18/414277 to achieve the claimed values in order to achieve a specific viscosity or mixtures of common co-initiators with low viscosity and highly viscous co-initiators, see [0122].
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Allowable Subject Matter
Claims 87 would be allowable if rewritten or amended to overcome the rejection(s) under Double Patenting set forth in this Office action.
Claims 88, 91-93, and 95-98 are 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.
Claim 99 is allowed.
The closest prior art of record includes
Garmshausen (US 2022/0305723 A1) teaches starting material is photopolymerized in a local volume by irradiating light of a first wavelength simultaneously with or followed by light of a second wavelength different from the first wavelength into the local volume [0023] local photopolymerization in the local area can lead to hardening or curing of the starting material [0031].
Abbott (US 2018/0147777 A1) teaches 3D printing materials where [0014] the non-Newtonian fluid properties of the penetrating liquid functional material create a reduced viscosity under sheer or thermal forces when ejected from a printhead. This enables the penetrating liquid functional material to be printed via an inkjet printer.
Regarding claim 87, the prior art does not teach or suggest one or more non-reactive additives comprising one or more non-reactive thixotropes and/or non-reactive rheology modifiers, and one or more coinitiators, wherein the photoswitchable photoinitiator is activatable by exposure to light having a first wavelength and light having a second wavelength to induce a crosslinking or polymerization reaction in the photohardenable component, wherein the first and second wavelengths are different, wherein the photohardenable composition displays non-Newtonian rheological behavior with a yield stress for forming the object in the photohardenable composition at a fixed position or with minimal displacement in the photohardenable composition during formation… wherein light having the first wavelength and light having the second wavelength activate the photoswitchable photoinitiator at the one or more selected locations and at least partially harden the photohardenable composition at the one or more selected locations within the volume to at least partially form the object, wherein the object at least partially formed in the photohardenable composition remains at a fixed position or is minimally displaced in the unhardened photohardenable composition during formation, wherein the first and second wavelengths are different.
Claims 88, 91-93, and 95-98 are allowable because each depends from allowable claim 87.
Regarding claims 99, the prior art does not teach or suggest photoswitchable photoinitiator, one or more non-reactive additives comprising one or more non-reactive thixotropes and/or non-reactive rheology modifiers, and one or more coinitiators, wherein the one or more non-reactive thixotropes include an ester terminated polyamide, a tertiary amide terminated polyamide, a polyalkyleneoxy terminated polyamide, a polyether amide, or a combination including any of the foregoing.
Relevant Prior Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Lippert (US 2020/0108557 A1) teaches [0013] In one embodiment, the present invention includes an apparatus for generating a three-dimensional image, the system comprising: a medium comprising an optical molecular switch molecule, wherein the optical molecular switch molecule has a non-fluorescent state and a fluorescent state, wherein at one wavelength of optical excitation, the molecule has a first state and at a second state the optical molecular switch molecule fluoresces at a second wavelength of excitation; and at least a first light source and a second light source into the medium.
Conclusion
THIS ACTION IS MADE FINAL. 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 MICHAEL M. ROBINSON whose telephone number is (571)270-0467. The examiner can normally be reached Monday-Friday 9:30AM-6PM.
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, Sam Zhao can be reached at (571)270-5343. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL M. ROBINSON/Primary Examiner, Art Unit 1744
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