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 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 1-12 and 17-20 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. Specifically, claims 1 and 17 require “wherein the polymerization inhibitor is present at a concentration that prevents polymerization of the unexposed region of the resist blend while the exposed region of the resist blend is exposed to light”. It is unclear where support is found for this limitation. The instant specification discloses an inhibitor may prevent bulk polymerization of the resist blend, but makes no mention of the concentration of the inhibitor in relation to the unexposed and exposed regions. As such, dependent claims 2-12 and 18-20 are also rejected.
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.
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.
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.
Claims 1-3, 5-9, 11 and 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Davy et al. (US Patent No. 5679710), in view of Willner et al. (US Serial No. 2016/0113846), as evidenced by Davy (EP 0684222).
Regarding claims 1, 3, and 7; Davy et al. teaches a dental composition (resist blend) prepared from silane treated quartz powder, a monomer mixture K [Table 1], comprising TEGDMA (triethylene glycol dimethacrylate; reads on base pre-polymer), 2,2(Bis-[2-(2,3,5-triiodobenzyoloxy)3-methacryloxyloxypropoxy)phenyl propane, and 2-hydroxy-3-(2,3,5-triiodobenzoyloxy)propylmethacrylate) (reads on iodinated radiopaque pre-polymer compound), camphorquinone (photoinitiator), and 2-(N, N-dimethylamino)ethyl methacrylate [col9, line17-25; Table 1; Table 2; Ex1; Ex4]. Davy et al. teaches the composition may further comprise additives such as inhibitors [col5, line26-27].
Davy et al. fails to explicitly teach 2-hydroxy-3-(2,3,5-triiodobenzoyloxy)propylmethacrylate and other iodinated (meth)acrylate compounds of Davy et al. are radiopaque. However, the Examiner makes note that iodine is well known in the art as functioning as a radiocontrast agent (i.e. radiopaque), thus it is the Examiner’s position that a compound containing iodine (e.g. 2-hydroxy-3-(2,3,5-triiodobenzoyloxy)propylmethacrylate) would necessarily possess the property of radiopacity.
Davy (EP 06814222) provides evidence that 2-hydroxy-3-(2,3,5-triiodobenzoyloxy)propylmethacrylate exhibits X-ray opacity (radiopaque) [p3, line21-p4, line55; Ex2; Ex7-8]
Davy et al. teaches all of the above required components, however fails to explicitly disclose each in a preferred embodiment. A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art, including the non-preferred embodiments. Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.); see MPEP §2123. Davy et al. does not specifically disclose an embodiment containing the radiopaque pre-polymer, base pre-polymer, photoinitiator, in combination with an inhibitor. However, at the time of invention a person of ordinary skill in the art would have found it obvious to prepare the composition containing radiopaque pre-polymer, base pre-polymer, photoinitiator, and an inhibitor based on the invention of Davy et al., and would have been motivated to do so since Davy et al. suggests that the composition can contain radiopaque pre-polymer (Ex1), base pre-polymer (TEGDMA), photoinitiator (camphorquinone), in combination with an inhibitor [col5, line25-27; col9, line17-25].
Davy et al. teaches the composition may further comprise inhibitors, however fails to teach the inhibitor is employed at a concentration that prevents polymerization of the unexposed region of the resist blend while exposed region of the resist blend is exposed to light, specifically in an amount of about 0.02 to about 0.08 wt. %. Willner et al. teaches a radiopaque dental composition comprising polymerizable monomers (i.e. acrylate monomers) [0112] and further comprising 0.05% to 2% by weight [0157] of inhibitors [0164]. Davy et al. and Willner et al. are analogous art because they are both concerned with the same field of endeavor, namely composition suitable for use as translucent and radiopaque dental materials. At the time of the invention, a person of ordinary skill in the art, would have been motivated to employ 0.05% by weight (as taught by Willner et al.) of an inhibitor (as taught by Davy et al.), and would have been motivated to do so in order to avoid spontaneous polymerization, thus increasing the storage stability of the composition, as suggested by Willner et al. [0181]. It is the Examiner’s position when employing an amount of 0.05% by weight of inhibitor, it necessarily possesses the ability to prevent polymerization of the unexposed region of the resist blend while the exposed region of the resist blend is exposed to light.
The Examiner notes that “configured to” is a future intended use limitation and product-by-process limitation. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim; see MPEP §2111.02, 7.37.09. Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” See In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985)); see MPEP §2113. The claims of the instant invention are directed to a resist blend (i.e. a composition), not to a polymerized product (e.g. having a polymerized portion and an unpolymerized portion). Thus, it is the Examiner’s position that, since Davy et al. teaches each of the required components of the claimed invention, the composition of Davy et al. would be capable, upon development of the resist blend, to have an exposed region of the resist blend that is polymerized and an unexposed region of the resist blend that is unpolymerized.
Regarding claim 2; Davy et al. fails to explicitly teach a refractive index of the resist blend is about 1.52. The Office realizes that all the claimed effects or physical properties are not positively stated by the reference. However, the reference teaches all of the claimed reagents, claimed amounts, and substantially similar processes. According to the original specification, a resist blend comprising a radiopaque prepolymer compound, photoinitiator, inhibitor, and base prepolymer yield a resist blend having a refractive index of about 1.52 [0095-0097; Table 1 & 2]. Therefore, the claimed effects and physical properties, i.e. refractive index, would necessarily be present in a composition with all the claimed ingredients. If it is the applicants' position that this wouldn’t be the case: (1) evidence would need to be presented to support applicants' position; and (2) it would be the Offices' position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties and effects with only the claimed ingredients, claimed amounts, and substantially similar processes. See In re Spada, MPEP §2112.01, I and II.
Regarding claim 5; Davy et al. teaches, in the preferred embodiment, camphorquinone is employed in an amount of 0.5 wt. % (falls within “about 0.1 wt%”) [col9, line21-22]. In the alternative, a person of ordinary skill in the art at the time of filing, would have found it obvious to optimize the amount of initiator used in the present invention (e.g. to an amount of 0.1 wt%), and would have been motivated to do so in order to achieve a desired reaction rate (shortening production time). 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. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955), MPEP 2144.05.
The Examiner makes note that “wherein the resist blend is characterized as having, upon curing of said resist blend…” is a future intended use limitation and product-by-process limitation. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim; see MPEP §2111.02, 7.37.09. Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” See In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985)); see MPEP §2113. The instant claims are directed to a resist blend, not to the polymerized product, thus the phrase “upon curing” is directed to a future intended use.
Regarding claim 6; Davy et al. teaches, in the preferred embodiment, 49% of a monomer mixture K, comprising 37.5% (i.e. 37.5 parts) of 2-hydroxy-3-(2,3,5-triiodobenzoyloxy)propylmethacrylate [Ex1; Table 1]; thus is employed in an amount of 18.375 wt. %, based on the total weight of the composition (as calculated by Examiner; 0.49 * 37.5= 18.375).
Regarding claim 8; Davy et al. teaches, in the preferred embodiment, 49% of a monomer mixture K, comprising 37.5% (i.e. 37.5 parts) of 2,2(Bis-[2-(2,3,5-triiodobenzoloxy)3-methacryloxyloxypropoxy)phenyl)propane and 25% (i.e. 25 parts) of TEGDMA (the combination reads on “pre-base polymer”) [Ex1; Table 1]; thus employed in an amount of 30.625 wt. %, based on the total weight of the composition (as calculated by Examiner; (0.49 * 37.5) + (0.49 * 25) = 30.625).
Regarding claim 9; Davy et al. teaches, in the preferred embodiment, 49% of a monomer mixture K, a photoinitiator, and 0.5% by weight of 2-(N,N-dimethylamino)ethyl methacrylate (additive pre-polymer) [col9, line19-24]. The Examiner makes note that without specific guidance as to what the term “substantially” means, thus the term “substantially” is interpreted as the word “about.”
Regarding claim 11; Davy et al. teaches a high refractive index and radiopaque resins [col3, line14-22].
Regarding claim 12; Davy et al. does not necessarily teach the resist blend has a linear attenuation coefficient in a range of about 9mm-1 to 21 mm-1. The Office realizes that all the claimed effects or physical properties are not positively stated by the reference. However, the reference teaches all of the claimed reagents, claimed amounts, and substantially similar processes. According to the original specification, the resist blend may have a linear attenuation coefficient in the range of about 9mm-1 to 21 mm-1 that may correspond to about 18 wt. % to 45 wt% of iodinated pre-polymer [00112]. Therefore, the claimed effects and physical properties, i.e. linear attenuation coefficient, would necessarily be present by a composition with all the claimed ingredients. Since Davy et al. teaches, in the preferred embodiment, employing about 18 wt. % of the iodinated pre-polymer, it is the Examiner’s position that composition would also have a linear attenuation coefficient falling within the claimed range. If it is the applicants' position that this wouldn’t be the case: (1) evidence would need to be presented to support applicants' position; and (2) it would be the Offices' position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties and effects with only the claimed ingredients, claimed amounts, and substantially similar processes. See In re Spada, MPEP §2112.01, I & II.
Claims 1, 4, 6, 7, and 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Neffgen et al. (US Serial No. 2010/0041789), in view ), in view of Willner et al. (US Serial No. 2016/0113846).
Regarding claims 1, 4, 6, 7, and 10; Neffgen et al. teaches a dental composition comprising at least 50% by weight of monomers (pre-base polymer; instant claim 4), 1-30% by weight of a radiopaque organic compound (instant claim 6), such as a (meth)acrylated triphenyl bismuth derivative [0067] (radiopaque pre-polymer), optionally up to 20% by weight of a solvent, preferably less than about 10% by weight (instant claim 10) [0104], and an initiator [0011-0016], such as a photoinitiator [0093].
Neffgen et al. fails to teach the composition further comprises an inhibitor and is employed at a concentration that prevents polymerization of the unexposed region of the resist blend while exposed region of the resist blend is exposed to light, specifically in an amount of about 0.02 to about 0.08 wt. %. Willner et al. teaches a radiopaque dental composition comprising polymerizable monomers (i.e. acrylate monomers) [0112] and further comprising 0.05% to 2% by weight [0157] of inhibitors [0164]. Neffgen et al. and Willner et al. are analogous art because they are both concerned with the same field of endeavor, namely composition suitable for use dental materials. At the time of the invention, a person of ordinary skill in the art, would have been motivated to employ 0.05% by weight (as taught by Willner et al.) of an inhibitor (as taught by Neffgen et al.), and would have been motivated to do so in order to avoid spontaneous polymerization, thus increasing the storage stability of the composition, as suggested by Willner et al. [0181]. It is the Examiner’s position when employing an amount of 0.05% by weight of inhibitor, it necessarily possesses the ability to prevent polymerization of the unexposed region of the resist blend while the exposed region of the resist blend is exposed to light.
The Examiner notes that “configured to” is a future intended use limitation and product-by-process limitation. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim; see MPEP §2111.02, 7.37.09. Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” See In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985)); see MPEP §2113. The claims of the instant invention are directed to a resist blend (i.e. a composition), not to a polymerized product (e.g. having a polymerized portion and an unpolymerized portion). Thus, it is the Examiner’s position that, since Neffgen et al. and WO’686 teach the required components of the claimed invention, the composition of Neffgen et al. and WO’686 would be capable, upon development of the resist blend, to have an exposed region of the resist blend that is polymerized and an unexposed region of the resist blend that is unpolymerized.
Claims 17-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Rheinberger et al. (US Patent No. 5780668), in view of Willner et al. (US Serial No. 2016/0113846).
Regarding claims 17-20; Rheinberger et al. teaches, in a preferred embodiment, a x-ray opaque (radiopaque) dental mixture of 23% by weight of methacryloyloxyethyl-2,3,5-triiodobenzoate (monomer 1; radiopaque iodinated pre-polymer), 65.7% by weight of triethylene glycol dimethacrylate (base pre-polymer), 10.5% by weight of dimethylformamide (solvent), and 0.8% by weight of an initiator mixture (camphor quinone and cyanoethylmethylaniline; photoinitiator) [Ex5, b)].
Rheinberger et al. fails to teach the composition further comprises an inhibitor and is employed at a concentration that prevents polymerization of the unexposed region of the resist blend while exposed region of the resist blend is exposed to light,. Willner et al. teaches a radiopaque dental composition comprising polymerizable monomers (i.e. acrylate monomers) [0112] and further comprising 0.05% to 2% by weight [0157] of inhibitors [0164]. Rheinberger et al. and Willner et al. are analogous art because they are both concerned with the same field of endeavor, namely composition suitable for use as translucent and radiopaque dental materials. At the time of the invention, a person of ordinary skill in the art, would have been motivated to add 0.5% by weight of an inhibitor, as taught by Willner et al., to the dental mixture of Rheinberger et al., and would have been motivated to do so in order to avoid spontaneous polymerization, thus increasing the storage stability of the composition, as suggested by Willner et al. [0181]. It is the Examiner’s position when employing an amount of 0.05% by weight of inhibitor, it necessarily possesses the ability to prevent polymerization of the unexposed region of the resist blend while the exposed region of the resist blend is exposed to light.
The Examiner notes that “configured to” is a future intended use limitation and product-by-process limitation. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim; see MPEP §2111.02, 7.37.09. Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” See In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985)); see MPEP §2113. The claims of the instant invention are directed to a resist blend (i.e. a composition), not to a polymerized product (e.g. having a polymerized portion and an unpolymerized portion). Thus, it is the Examiner’s position that, since Rheinberger et al. and Willner et al. teach the required components of the claimed invention, the composition of Rheinberger et al. and Willner et al. would be capable, upon development of the resist blend, to have an exposed region of the resist blend that is polymerized and an unexposed region of the resist blend that is unpolymerized.
Claims 17-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Davy et al. (US Patent No. 5679710), in view of Willner et al. (US Serial No. 2016/0113846), as evidenced by Davy (EP 0684222).
Regarding claims 17-19; Davy et al. teaches a dental composition (resist blend) prepared from silane treated quartz powder, a monomer mixture K [Table 1], comprising TEGDMA (triethylene glycol dimethacrylate; reads on base pre-polymer), 2,2(Bis-[2-(2,3,5-triiodobenzyoloxy)3-methacryloxyloxypropoxy)phenyl propane, and 2-hydroxy-3-(2,3,5-triiodobenzoyloxy)propylmethacrylate) (reads on iodinated radiopaque pre-polymer compound), camphorquinone (photoinitiator), and 2-(N, N-dimethylamino)ethyl methacrylate [col9, line17-25; Table 1; Table 2; Ex1; Ex4]. Davy et al. teaches the composition may further comprise additives such as inhibitors [col5, line26-27].
Davy et al. fails to explicitly teach 2-hydroxy-3-(2,3,5-triiodobenzoyloxy)propylmethacrylate and other iodinated (meth)acrylate compounds of Davy et al. are radiopaque. However, the Examiner makes note that iodine is well known in the art as functioning as a radiocontrast agent (i.e. radiopaque), thus it is the Examiner’s position that a compound containing iodine (e.g. 2-hydroxy-3-(2,3,5-triiodobenzoyloxy)propylmethacrylate) would necessarily possess the property of radiopacity.
Davy (EP 06814222) provides evidence that 2-hydroxy-3-(2,3,5-triiodobenzoyloxy)propylmethacrylate exhibits X-ray opacity (radiopaque) [p3, line21-p4, line55; Ex2; Ex7-8]
Davy et al. teaches all of the above required components, however fails to explicitly disclose each in a preferred embodiment. A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art, including the non-preferred embodiments. Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.); see MPEP §2123. Davy et al. does not specifically disclose an embodiment containing the radiopaque pre-polymer, base pre-polymer, photoinitiator, in combination with an inhibitor. However, at the time of invention a person of ordinary skill in the art would have found it obvious to prepare the composition containing radiopaque pre-polymer, base pre-polymer, photoinitiator, and an inhibitor based on the invention of Davy et al., and would have been motivated to do so since Davy et al. suggests that the composition can contain radiopaque pre-polymer (Ex1), base pre-polymer (TEGDMA), photoinitiator (camphorquinone), in combination with an inhibitor [col5, line25-27; col9, line17-25].
Davy et al. teaches the composition may further comprise inhibitors, however fails to teach the inhibitor is employed at a concentration that prevents polymerization of the unexposed region of the resist blend while exposed region of the resist blend is exposed to light. Willner et al. teaches a radiopaque dental composition comprising polymerizable monomers (i.e. acrylate monomers) [0112] and further comprising 0.05% to 2% by weight [0157] of inhibitors [0164]. Davy et al. and Willner et al. are analogous art because they are both concerned with the same field of endeavor, namely composition suitable for use as translucent and radiopaque dental materials. At the time of the invention, a person of ordinary skill in the art, would have been motivated to employ 0.05% by weight (as taught by Willner et al.) of an inhibitor (as taught by Davy et al.), and would have been motivated to do so in order to avoid spontaneous polymerization, thus increasing the storage stability of the composition, as suggested by Willner et al. [0181]. It is the Examiner’s position when employing an amount of 0.05% by weight of inhibitor, it necessarily possesses the ability to prevent polymerization of the unexposed region of the resist blend while the exposed region of the resist blend is exposed to light.
The Examiner notes that “configured to” is a future intended use limitation and product-by-process limitation. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim; see MPEP §2111.02, 7.37.09. Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” See In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985)); see MPEP §2113. The claims of the instant invention are directed to a resist blend (i.e. a composition), not to a polymerized product (e.g. having a polymerized portion and an unpolymerized portion). Thus, it is the Examiner’s position that, since Davy et al. teaches each of the required components of the claimed invention, the composition of Davy et al. would be capable, upon development of the resist blend, to have an exposed region of the resist blend that is polymerized and an unexposed region of the resist blend that is unpolymerized.
Regarding claim 20; Davy et al. teaches, in the preferred embodiment, 49% of a monomer mixture K, comprising 37.5% (i.e. 37.5 parts) of 2-hydroxy-3-(2,3,5-triiodobenzoyloxy)propylmethacrylate [Ex1; Table 1]; thus is employed in an amount of 18.375 wt. %, based on the total weight of the composition (as calculated by Examiner; 0.49 * 37.5= 18.375).
Allowable Subject Matter
Claims 13-16 are allowed.
The following is a statement of reasons for the indication of allowable subject matter: Rheinberger or Willner does not teach or suggest the claimed refractive index of 1.52 ± 0.015, as set forth in the Board Decision on 29 July 2025.
Response to Arguments
Applicant's arguments filed 04 February 2026 have been fully considered but they are not persuasive.
Claim 1
Applicants argue Davy does not teach or suggest a dental composition configured to have a first portion and second portion being polymerized to a different extent. The claim language at issue requires “wherein the resist blend is configured to have a first portion of the resist blend to be polymerized and to have a second portion of the resist blend to be unpolymerized, wherein the second portion is removable.” The phrase “configured to” is a future intended use limitation and product-by-process limitation. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim; see MPEP §2111.02, 7.37.09. Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” See In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985)); see MPEP §2113. The claims of the instant invention are directed to a resist blend (i.e. a composition), not to a polymerized product (e.g. having a polymerized portion and an unpolymerized portion). Thus, it is the Examiner’s position that, since Davy teaches each of the required components of the claimed invention, the composition of Davy would be capable of having portions polymerized and unpolymerized, wherein the unpolymerized material is removable (upon curing of the composition). The Examiner also makes note that the claimed limitations “to be polymerized” indicates a future state, a step to be taken in the future, thus considered a future intended use limitation.
Applicants point to a USPTO presentation of Functional Claim Limitations that “a functional limitation can provide a patentable distinction by imposition limits on the function of a structure, material, or action.” In USPTO Legal Training Module (PowerPoint presentation). The Examiner points out that USPTO PowerPoint presentation is directed to means plus function language in computer/software applications. Means plus function does not apply in the instant application.
Applicants argue the claimed limitations are illustrated in an example of one embodiment that includes forming a structure using the resist blend in FIGS. 14A-14D. The figures in which Applicants cite to are formed products. The claims of the instant specification are directed to a resist blend (i.e. composition prior to curing), not to a formed product.
Applicants argue Davy does not teach or suggest a polymerization inhibitor. The Examiner respectfully disagrees. Davy teaches in a preferred embodiment, employing a polymerization inhibitor [hydroquinone; Ex3].
Applicants argue Davy does not teach “a radiopaque pre-polymer compound,” rather Davy distinguishes that the filler is radiopaque, not the 2,2,(bis-[2-(2,3,5-triiodobenzyoloxy)3-methacryloxyloxypropoxy)phenyl propane (cited in the rejection as allegedly being an iodinated pre-polymer compound). While Davy positively discloses that the present invention employs a radiopaque filler, that does not necessarily mean that the iodinated monomer has some level of radio-opacity. It is the Examiner’s position that iodine is well known in the art as functioning as a radiocontrast agent1 (i.e. radiopaque), thus it is the Examiner’s position that a compound containing iodine (e.g. 2,2(Bis-[2-(2,3,5-triiodobenzyoloxy)3-methacryloxyloxypropoxy)phenyl propane) would necessarily possess the property of radiopacity. To expand on such argument, Davy disclose a related application US 08/447237 which has described certain (meth)acrylate monomers which exhibit X-ray opacity and which can be incorporated into denture base compositions based on polymethacrylate [col2, line22-67]; said monomers comprise (meth)acrylate functionality and are substituted with a plurality of iodo groups on the phenyl ring which also exhibit high refractive indices [col3, line1-13]. Davy suggests that the monomers of the present invention possess both the property radiopacity and a high refractive index.
Applicants argue no skilled artisan would be reasonably motivated to modify Davy as proposed because Davy teaches away from the claimed invention. Applicants argue Davy intentionally states that “the deleterious nature of unpolymerized resin is a major concern,” thus a skilled artisan reading Davy would understand that no one would create a resin that results in a dental composition that is not uniformly polymerized throughout. While Davy may be teaching away from a cured product having varying degrees of polymerization, the claims are not directed to a cured product. The instant claims are directed to a resin blend (i.e. composition) prior to polymerization and/or curing.
Applicants argue no skilled artisan would be motivated to modify Davy as proposed because doing so would render Davy unsatisfactory for its intended purpose of forming a fully polymerizable dental resin. As stated above, the claims are not directed to a product, but to the composition prior to polymerization. The phrase “configured to” is interpreted as is a future intended use limitation and product-by-process limitation, thus the composition of Davy must only need to be capable of forming the intended use (i.e. comprising a first polymerized portion and a second unpolymerized portion) to meet the claimed limitations.
Applicants argue a skilled artisan would not have a reasonable expectation of a successful dental composition of the composition had portions of variable polymerization in the formed dental restorative material. The Examiner respectfully disagrees. Davy teaches each of the components required by the instant claims, thus a person of ordinary skill in the art would have a reasonable expectation of success.
Claim 2
Applicants argue that no art of record, singly or in combination, teaches or suggests “wherein a refractive index of the resist blend is about 1.52”. Applicants argue that Davy’s monomer mixture K has a refractive index of 1.550, which is far outside the much lower refractive index of the recited resin in claim 2, 1.52 within a range of ±0.015 (see specification [0012]) and that Davy teaches away from said refractive index. The Examiner respectfully disagrees. Claim 2 of the instant invention requires a refractive index of the resist blend is “about” 1.52. The term “about” is not explicitly defined in the instant specification and does not equate to ±0.015 as Applicants alleged. While the instant specification sets forth an example that is different by greater than at least 0.015 [0098], it is merely an example, not a definition. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). The claimed limitation wherein the “refractive index of the resist blend is about 1.52” is interpreted broadly, thus the mixture K taught by Davy, having a refractive index of 1.550, still falls within the claimed limitation of “about 1.52.” It is the Examiner’s position that Davy does not “teach away” from a refractive index of about 1.52, rather Davy teaches a refractive index of 1.55, which encompasses the claimed limitation of “about 1.52.”
Claim 5
Applicants argue no art of record, singly or in combination, teaches or suggests the unique feature “wherein the photoinitiator is present in a range of about 0.01 to about 0.10 wt% of the resist blend.” Applicants argue that Davy’s preferred embodiment having camphorquinone in an amount of 0.5 wt% [col9, line21-22], which is far outside the claimed range of photoinitiator. The Examiner respectfully disagrees. The upper limit of the claimed range is “about 0.10 wt%.” Applicants disclose, in the instant specification, the photoinitiator may be present in an amount in a range of about 0.01 to about 0.10 wt% of resist blend, preferably in the range of about 0.1 to 0.5 wt% of resist blend [0108]. Thus, one of ordinary skill in the art, when looking to the teachings of the instant specification that “about 0.10 wt%” would encompass an amount of 0.5 wt%. It is noted that the Examiner is not pulling teachings from the specification into the claimed limitations, but rather looking to the specification for how to interpret the upper limit of the claimed range of “about 0.10 wt.%”.
Claim 12
Applicants argue that no art of record, singly or in combination, teaches or suggests “wherein the resist blend has a linear attenuation coefficient in a range of about 9 mm-1 to 21 mm-1.” Davy’s composition includes 50% by weight silane treated quartz powder; since Davy’s composition does not include the same components as disclosed in claim 1, the linear attenuation coefficient of Davy’s composition as well as other properties of Davy’s composition would not be present as claimed. The Examiner makes note that the claims of the instant application are directed to a “resist blend comprising...”. The transitional term “comprising”, which is synonymous with “including,” “containing,” or “characterized by,” is inclusive or open-ended and does not exclude additional, unrecited elements or method steps. See, e.g., > Mars Inc. v. H.J. Heinz Co., 377 F.3d 1369, 1376, 71 USPQ2d 1837, 1843 (Fed. Cir. 2004) (“like the term comprising,’ the terms containing’ and mixture’ are open-ended.”). Invitrogen Corp. v. Biocrest Mfg., L.P., 327 F.3d 1364, 1368, 66 USPQ2d 1631, 1634 (Fed. Cir. 2003). According to the original specification, the resist blend may have a linear attenuation coefficient in the range of about 9mm-1 to 21 mm-1 that may correspond to about 18 wt. % to 45 wt% of iodinated pre-polymer [00112]. Therefore, the claimed effects and physical properties, i.e. linear attenuation coefficient, would necessarily be present by a composition with all the claimed ingredients. Since Davy et al. teaches, in the preferred embodiment, employing about 18 wt. % of the iodinated pre-polymer, it is the Examiner’s position that composition would also have a linear attenuation coefficient falling within the claimed range.
Claim 7
Applicants argue Willner does not remedy the deficiencies of the rejection of claim 1. The Examiner respectfully disagrees. Davy teaches it obvious to employ inhibitors [col5, line26-28], which is a customary additive to a composition in the field of endeavor. Davy teaches a preferred embodiment comprising hydroquinone [Ex3]. Willner teaches suitable inhibitors are hydroquinone based compounds [0181].
Applicants argue Willner’s inhibitors function during storage of the resin and not during the light-mediated polymerization reaction. The Examiner takes the position that Willner teaches the claimed inhibitors in the claimed amounts, thus it would necessarily possess the capability to prevent polymerization of the unexposed region of the resist blend while the exposed region of the resist blend is exposed to light. The courts have held that “a compound and all its properties are mutually inseparable”, In re Papesch, 315F.2d 381, 137 USPQ 42, 51 (CCPA 1963). Further, attention is drawn to MPEP 2112.01, which states that “products of identical chemical composition can not have mutually exclusive properties. A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present.”, In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
Claims 1, 4, 6, and 10
Applicants argue the rejection improperly alleges the recited limitation “wherein the resist blend is configured to have a first portion of the resist blend to be polymerized and to have a second portion of the resist blend to be unpolymerized, wherein the second portion is removable” is a future intended use limitation These remarks are substantially similar to those presented above and thus are similarly responded to.
Applicants arguments regarding Neffgen in view of Neffgen ‘686 are moot as that rejection of record no longer applies to the pending claims.
Claims 17-20
Applicants argue the rejection fails to allege that Rheinberger’s comonomer is present in a concentration that causes the resist blend with Willner’s inhibitor to have the claimed refractive index of 1.52 ±0.015. The Examiner respectfully disagrees. In a preferred embodiments, Rheinberger teaches the iodinated monomers can be employed in amount of from 23 % by weight up to about 50 % by weight [Ex5]. The instant specification states the iodinated prepolymer is preferably used in a range of 18 to 45 weight % [Table 7]. Thus, since Rheinberger teaches employing the each of the required compounds, specifically the iodinated monomer, in substantially similar amounts, the claimed effects and physical properties, i.e. refractive index, would necessarily be present in a composition with all the claimed ingredients. Applicants have not provided persuasive evidence proving otherwise.
Applicants argue the rejection improperly alleges the recited limitation “wherein the resist blend is configured to have a first portion of the resist blend to be polymerized and to have a second portion of the resist blend to be unpolymerized, wherein the second portion is removable”, as well as arguments directed to a dental material having portion polymerized to a varying degree. These remarks are substantially similar to those presented above and thus are similarly responded to.
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.
Correspondence
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/JESSICA M ROSWELL/Examiner, Art Unit 1767
1 “Radiopaque”, Polymer Composites with Functionalized Nanoparticles, p1 (2019)
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