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 .
Status of Action/Claims
Receipt of Remarks filed on 4/28/2026 is acknowledged. Claims 1, 9, 11, 17, 22-23, 28, 40, 42, 52, 60 and 62-68 are currently pending in this application. Claims 40, 42 and 52 have been withdrawn. Accordingly, claims 1, 9, 11, 17, 22-23, 28, 60 and 62-68 are presented for examination on the merits for patentability.
Rejection(s) not reiterated from the previous Office Action are hereby withdrawn. The following rejections are either reiterated or newly applied. They constitute the complete set of rejections presently being applied to the instant application.
Note: This is a second non-final office action that is prompted by further consideration of the instant claims, applicant’s disclosure and the prior art.
Withdrawn Rejections/Objections
The double patenting rejections over copending applications 18938820, 18820899 and US patent 12161523 and 12102499 have been withdrawn due to filing of a terminal disclaimer.
Terminal Disclaimer
The terminal disclaimer filed on 4/28/2026 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of US patent 12161523 and 12102499 and any patent granted on application number 18938820 and 18820899 has been reviewed and is accepted. The terminal disclaimer has been recorded.
New/Maintained Claim Objection(s) / Rejection(s)
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 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, 9, 11, 28, 60 and 62-64 are rejected under 35 U.S.C. 103 as being unpatentable over Morino (JPH03284606A; 12/16/1991) in view of Torabinejad et al. (US 5,415,547; May 16, 1995).
Morino throughout the reference teaches surface coated cement powder for dental preparations (abstract). Morino teaches dental cement powder whose surface is coated with metal oxide, wherein the metal oxide is an oxide of aluminum or titanium (e.g. claims). Morino describes the cement powder in the core and the metal oxide as the coated layer on the cement powder (see e.g. pages 2-3; Examples). The particle size of the cement powder is 0.1 to 50 micrometer and the coating thickness of the metal oxide is 1 Angstrom to 1,000 Angstrom (i.e. 0.1 nm to 100 nm) (see e.g. page 2). This overlaps the claimed shell thickness and the claimed size of the core and shell together. Morino teaches the coating on the powder surface being uniform and a film (pages 2 and 3). As discussed supra, Morino teaches the coating (metal oxide shell) as a layer and the coating being uniform, which reads on the claimed shell is a continuous film. Moreover, Morino on page 3 discloses method of vaporizing the metal oxide layer on the powder surface, which is similar to the vapor deposition method disclosed in the instant specification to form continuous film (e.g., pages 7-8 of specification). Regarding claim 11, Morino teaches the metal oxide can be aluminum oxide or titanium oxide which are the same metal oxides recited in instant claims and therefore would necessarily have the same pKa recited in claim 11. Morino also teaches the composition comprising water and acidic components such as hydrochloric acid or citric acid (see e.g. page 3 and examples). (see entire document of Morino reference).
The teachings of Morino have been set forth above.
While Morino teaches the core comprises a cement, Morino does not teach the core comprises specifically Portland cement. However, Torabinejad cures this deficiency.
Torabinejad teaches tooth filling composition comprising Portland cement filler. Portland cement sets in the presence of moisture and blood, and is therefore easily applied and suitable for use in moist environments such as the mouth. (abstract; summary of invention; col. 7, line 15-35; entire document).
It would have been prima facie obvious to one of ordinary skill in the art at the time the invention was made to have modified Morino to incorporate the teachings of Torabinejad and include Portland cement taught by Torabinejad into the composition of Morino. One would have been motivated to do so because Morino teaches the cement powder used in the invention is a cement powder conventionally used in the fields of dentistry (e.g. page 2), and Torabinejad also teaches tooth filling composition which are used, for example, as filling material in dentistry and Torabinejad provides the motivation that Portland cement sets in the presence of moisture and blood, and is therefore easily applied and suitable for use in moist environments such as the mouth. Therefore, it would have been obvious to one of ordinary skill in the art to substitute the known cements used in dental compositions as a person with ordinary skill has good reason to pursue known options within his or her technical grasp. see MPEP 2141 KSR International CO. v. Teleflex Inc. 82 USPQ 2d 1385 (Supreme Court 2007).
With respect to the instantly claimed recitation wherein the shell degrades, dissolves, or decomposes upon contact with water or an acidic component to release the core thereby increasing pH, this limitation does not add any structural limitation to the composition itself. The combination of above cited references teach all the components recited in claim 1 and the composition is structurally the same as the instant invention and therefore the shell would necessarily degrade, dissolve, or decompose upon contact with water or an acidic component to release the core thereby increasing pH.
With respect to instant claim 60, the recitation “the composition is a pulp capping composition” is an intended use of the claimed composition and does not add any structural limitation to the dental composition itself. The prior art teaching structurally the same composition, as instantly claimed, would necessarily be capable of this intended use limitation.
From the combined teaching of the cited reference, one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention, as a whole, would have been prima facie obvious to one of ordinary skill in the art at the time the invention was made.
Claim 17 is rejected under 35 U.S.C. 103 as being unpatentable over Morino (JPH03284606A; 12/16/1991) in view of Torabinejad et al. (US 5,415,547; May 16, 1995) as applied to claims 1, 9, 11, 28, 60 and 62-64 above, and further in view of Jin et al. (WO 02/078646 A1; Oct. 10, 2002).
The teachings of Morino and Torabinejad have been set forth above.
Morino and Torabinejad do not teach the composition further comprising a source of phosphorous ions or fluorine ions. However, these deficiencies are cured by Jin.
Jin throughout the reference teaches dental filler compositions which comprise bioactive particles of bioactive glass (Title, Abstract). It teaches bioactive particles of bioactive glass in the filler composition are characterized by their ability to firmly attach to living tissues, to promote tissue growth and to bond chemically with bone (Page 3, line 26 to Page 4, line 2). Table 10 of the reference discloses bioactive glass comprises CaO (calcium oxide) and P2O5 (phosphorous pentoxide) which reads on the source of phosphorous recited in instant claims.
It would have been prima facie obvious to one of ordinary skill in the art at the time the invention was made to have modified the combination of Morino and Torabinejad to incorporate the teachings of Jin and include the bioactive glass taught by Jin into the composition of Morino. Morino teaches the cement powder dental composition should provide stability during filling and fracture resistance (e.g. page 5 of Morino) and Jin teaches bioactive particles of bioactive glass in the filler composition are characterized by their ability to firmly attach to living tissues, to promote tissue growth and to bond chemically with bone. Thus, it would have been obvious to one skilled in the art to incorporate the bioactive glass taught by Jin into the composition of Morino because the benefits of bioactive glass disclosed by Jin would be desired in dental composition such as the one taught by Morino.
From the combined teaching of the cited reference, one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention, as a whole, would have been prima facie obvious to one of ordinary skill in the art at the time the invention was made.
Claim 22-23 and 65-68 are rejected under 35 U.S.C. 103 as being unpatentable over Morino (JPH03284606A; 12/16/1991) in view of Torabinejad et al. (US 5,415,547; May 16, 1995) as applied to claims 1, 9, 11, 28, 60 and 62-64 above, and further in view of Budd et al. (US 7090722B2; Aug. 15, 2006).
The teachings of Morino and Torabinejad have been set forth above.
Morino and Torabinejad do not teach the composition comprising an acid-reactive filler wherein the acid reactive filler is fluoroaluminosilicate glass and the composition comprising a polymerizable material such as the one recited in claim 23. However, Budd cures these deficiencies.
Budd throughout the reference teaches acid reactive dental filler compositions. Budd teaches that by incorporating acid reactive fillers in resins, the dental composition can be prepared that exhibits improvements in one or more properties including, for example, strength, polish, polish retention, fluoride release, abrasion resistance, aesthetics, and radiopacity (summary of invention). Bud particularly teaches including fluoroaluminosilicate glass (FAS glass) (i.e., acid-reactive filler) which is suitable for use in oral environment, provide fluoride release and impart fluorescence and/or opalescence. (see: col. 16, line 62 to col. 17, line 4). Budd teaches the resin can be 2,2-bis[4-(2-hydroxy-3-methacryloxypropoxy)phenyl]propane (bisGMA), which reads on a hydroxy functional methacrylate monomer (see e.g. col. 11 to 12; col. 12, line 26-40).
It would have been prima facie obvious to one of ordinary skill in the art at the time the invention was made to have modified the combination of Morino and Torabinejad to incorporate the teachings of Budd and include the acid-reactive filler (FAS glass) in resin (bisGMA) taught by Budd into the composition of Weimer. One would have been motivated to do so because, as discussed supra, Morino teaches the cement powder dental composition should provide stability during filling and fracture resistance (e.g. page 5 of Morino) and Budd teaches that by incorporating acid reactive fillers, the dental composition can be prepared that exhibits improvements in one or more properties including, for example, strength, polish, polish retention, fluoride release, abrasion resistance, aesthetics, and radiopacity. Further, as discussed supra, Bud particularly teaches FAS glass is suitable for use in oral environment, provide fluoride release and impart fluorescence and/or opalescence. Thus, one skilled in the art would have been strongly motivated to include the acid reactive filler in resin of Budd into Morinos dental preparation.
From the combined teaching of the cited reference, one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention, as a whole, would have been prima facie obvious to one of ordinary skill in the art at the time the invention was made.
Claims 1, 9, 11, 22-23, 28, 60 and 62 are rejected under 35 U.S.C. 103 as being unpatentable over Weimer et al. (US 2004/0224087 A1; Nov. 11, 2004) in view of Torabinejad et al. (US 5,415,547; May 16, 1995) and Bringley et al. (US 2016/0222193 A1; Aug. 4, 2016).
Weimer throughout the reference teaches dental composite filler materials comprising particles coated via an atomic layer deposition (ALD) process. The coating material has a different composition than the core particle. (Abstract). Weimer discloses encapsulated materials comprising a base particle surrounded by an inorganic shell material comprising metal oxide (see: Para 0007, 0009, 0011, 0012 and 0052). It teaches the base particle being silica and the coating layer being a metal oxide (Para 0007). The reference in Example 2 expressly discloses depositing TiO2 and ZrO2 layers on silica particles. Weimer in Example 2 discloses a 1, 2, 4 and 8 nm thick TiO2 coating layers, i.e., film, on the silica particles which reads on the shell thickness recited in the claims. The reference also discloses that the particle coating layers are conformal and that the thickness of the coating layer is relatively uniform across the surface of the particle (i.e. continuous) (Para 0024 and 0026). Weimer teaches TiO2 coating layer (i.e. shell material) and the instant specification in example 4 also disclose a titanium dioxide shell. Therefore, it reads on instant claim 11, wherein shell material comprises a metal oxide having a pKa of 6-8. The reference also discloses there being water as dosing reagent (Para 0056-0057).
Further, Weimer teaches that the composition comprises a light-curable polymeric resin and a particulate filler material, wherein the particulate filler material includes particles that have a refractive index in the range of about 1.48 to about 1.6 and silica particles of 60 nm diameter having refractive index of 1.5-1.60 (Para 0008 and 0014). This reads on the nanoscopic particulate filler recited in claim 22. Further, the reference teaches the resin used are polymerizable and include diglycidyl-methacrylate of bisphenol A (BIS-GMA), triethyleneglycol dimethacrylate and ethoxylated bisphenol A dimethacrylate (Para 0046), which read on hydroxy functional methacrylate monomer. The instant specification also discloses the polymerizable monomers include BIS-GMA, triethyleneglycol di(meth)arylate and ethoxylated bisphenol A dimethacrylate (see page 20, line 27 to page 21, line 17) and thus reads on instant claims 22-23. (see entire document of Weimer).
The teachings of Weimer have been set forth above.
Weimer does not teach the core comprising Portland cement. However, Torabinejad cures this deficiency.
Torabinejad teaches tooth filling composition comprising Portland cement filler. Portland cement sets in the presence of moisture and blood, and is therefore easily applied and suitable for use in moist environments such as the mouth (abstract; summary of invention). One of the main component for Portland cement include silica (col. 7, line 15-35; entire document).
Weimer also does not teach the metal oxide comprises aluminum oxide. However, Bringley cures these deficiencies.
Bringley also teaches composite fillers for dental application. Bringley teaches the composite filler comprise inorganic particles wherein the inorganic particles comprise silica and metal oxides such as aluminum and titanium (claims 1 and 2; Entire document).
It would have been prima facie obvious to one of ordinary skill in the art at the time the invention was made to have modified Weimer to incorporate the teachings of Torabinejad and include Portland cement taught by Torabinejad into the composition of Weimer. One would have been motivated to do so because similar to Weimer, Torabinejad also teaches tooth filling composition which are used, for example, as filling material in dentistry and Torabinejad provides the motivation that Portland cement filler sets in the presence of moisture and blood, and is therefore easily applied and suitable for use in moist environments such as the mouth. As discussed supra, Torabinejad teaches one of the main component for Portland cement include silica and since Weimer teaches use of silica as the base material, one would have been strongly motivated to include Portland cement in the dental composition.
It would have been prima facie obvious to one of ordinary skill in the art at the time the invention was made to have modified Weimer to incorporate the teachings of Bringley and include aluminum oxide as the metal oxide of Weimer’s dental composition. As discussed supra, Bringley teaches the inorganic particles comprise silica and metal oxides such as aluminum and titanium. Weimer also teaches metal oxides such as Titanium oxide and it would have been obvious to one of ordinary skill in the art to try to substitute the known metal oxides used in composite filler compositions as a person with ordinary skill has good reason to pursue known options within his or her technical grasp. see MPEP 2141 KSR International CO. v. Teleflex Inc. 82 USPQ 2d 1385 (Supreme Court 2007).
With respect to the instantly claimed recitation wherein the shell degrades, dissolves, or decomposes upon contact with water or an acidic component to release the core thereby increasing pH, this limitation does not add any structural limitation to the composition itself. The combination of above cited references teach all the components recited in claim 1 and the composition is structurally the same as the instant invention and therefore the shell would necessarily degrade, dissolve, or decompose upon contact with water or an acidic component to release the core thereby increasing pH.
With respect to instant claim 60, the recitation “the composition is a pulp capping composition” is an intended use of the claimed composition and does not add any structural limitation to the dental composition itself. The prior art teaching structurally the same composition, as instantly claimed, would necessarily be capable of this intended use limitation.
Regarding claim 11, the cited prior art teaches the metal oxide can be aluminum oxide which is the same metal oxides recited in instant claims and therefore would necessarily have the same pKa recited in claim 11.
From the combined teaching of the cited reference, one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention, as a whole, would have been prima facie obvious to one of ordinary skill in the art at the time the invention was made.
Claims 1, 9, 11, 17, 22-23, 28, 60 and 62 are rejected under 35 U.S.C. 103 as being unpatentable over Weimer et al. (US 2004/0224087 A1; Nov. 11, 2004) in view of Torabinejad et al. (US 5,415,547; May 16, 1995) and Bringley et al. (US 2016/0222193 A1; Aug. 4, 2016) as applied to claims 1, 9, 11, 22-23, 28, 60 and 62 above, and further in view of Jin et al. (WO 02/078646 A1; Oct. 10, 2002).
The teachings of Weimer, Torabinejad and Bringley have been set forth above.
Weimer, Torabinejad and Bringley do not teach the composition further comprising a source of phosphorous ions or fluorine ions. However, these deficiencies are cured by Jin.
Jin throughout the reference teaches dental filler compositions which comprise bioactive particles of bioactive glass (Title, Abstract). It teaches bioactive particles of bioactive glass in the filler composition are characterized by their ability to firmly attach to living tissues, to promote tissue growth and to bond chemically with bone (Page 3, line 26 to Page 4, line 2). Table 10 of the reference discloses bioactive glass comprises CaO (calcium oxide) and P2O5 (phosphorous pentoxide) which reads on the source of phosphorous recited in instant claims.
It would have been prima facie obvious to one of ordinary skill in the art at the time the invention was made to have modified the combination of Weimer, Torabinejad and Bringley to incorporate the teachings of Jin and include the bioactive glass taught by Jin into the composition of Weimer. One would have been motivated to do so because similar to Weimer, Jin also teaches dental filler composition which are used, for example, as filling material in dentistry and Jin provides the motivation that bioactive particles of bioactive glass in the filler composition are characterized by their ability to firmly attach to living tissues, to promote tissue growth and to bond chemically with bone (Page 3, line 26 to Page 4, line 2). Thus, it would have been obvious to one skilled in the art to incorporate the bioactive glass taught by Jin into the composition of Weimer because the benefits of bioactive glass disclosed by Jin would be strongly desired in dental works such as fillings.
From the combined teaching of the cited reference, one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention, as a whole, would have been prima facie obvious to one of ordinary skill in the art at the time the invention was made.
Claims 1, 9, 11, 22-23, 28, 60, 62 and 65-68 are rejected under 35 U.S.C. 103 as being unpatentable over Weimer et al. (US 2004/0224087 A1; Nov. 11, 2004) in view of Torabinejad et al. (US 5,415,547; May 16, 1995) and Bringley et al. (US 2016/0222193 A1; Aug. 4, 2016) as applied to claims 1, 9, 11, 22-23, 28, 60 and 62 above, and further in view of Budd et al. (US 7090722B2; Aug. 15, 2006).
The teachings of Weimer, Torabinejad and Bringley have been set forth above.
Weimer, Torabinejad and Bringley do not teach the composition comprising an acid-reactive filler wherein the acid reactive filler is fluoroaluminosilicate glass. However, Budd cures this deficiency.
Budd throughout the reference teaches acid reactive dental filler compositions. Budd teaches that by incorporating acid reactive fillers, the dental composition can be prepared that exhibits improvements in one or more properties including, for example, strength, polish, polish retention, fluoride release, abrasion resistance, aesthetics, and radiopacity (summary of invention). Bud particularly teaches including fluoroaluminosilicate glass (FAS glass) (i.e., acid-reactive filler) which is suitable for use in oral environment, provide fluoride release and impart fluorescence and/or opalescence. (see: col. 16, line 62 to col. 17, line 4).
It would have been prima facie obvious to one of ordinary skill in the art at the time the invention was made to have modified the combination of Weimer, Torabinejad and Bringley to incorporate the teachings of Budd and include the acid-reactive filler and particularly FAS glass taught by Budd into the composition of Weimer. One would have been motivated to do so because Weimer teaches the dental composite filler particles should provide a natural and an aesthetic appearance (para 0003-0004) and increased radiopacity (para 0017-0021). As discussed supra, Budd teaches that by incorporating acid reactive fillers, the dental composition can be prepared that exhibits improvements in one or more properties including, for example, strength, polish, polish retention, fluoride release, abrasion resistance, aesthetics, and radiopacity. Further, as discussed supra, Bud particularly teaches FAS glass is suitable for use in oral environment, provide fluoride release and impart fluorescence and/or opalescence. Thus, one skilled in the art would have been strongly motivated to include acid reactive fillers of Budd and particularly FAS glass into Weimer’s dental filler composition.
From the combined teaching of the cited reference, one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention, as a whole, would have been prima facie obvious to one of ordinary skill in the art at the time the invention was made.
Examiner Remarks:
The 103 rejections over Weimer et al. (which was utilized in the 103 rejections of previous office actions) are made in view of reconsideration of the reference’s teachings. Specifically, Weimer teaches the refractive index of the coated particle can be between 1.47 and 1.75, and a Portland cement having refractive index of 1.70 falls within this range taught in Weimer. Moreover, not all Portland cement are made up of same exact materials and applicant have not provided any evidence that the claimed Portland cement has a refractive index of 1.70.
Conclusion
This is a non-final office action.
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/ALI S SAEED/ Examiner, Art Unit 1616
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