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 .
In view of applicant’s amendment, previous 112(b) rejection on claims 1, 3-13, 26 and 32, previous 112(b) rejection on claims 4-6, and previous 112(b) rejection on claims 10-11 are hereby withdrawn. Upon reconsideration, previous 112(b) rejection on claim 32 is hereby withdrawn (however, 112(d) rejection on claim 32 still remains).
In view of applicant’s argument, previous 103 rejections over TAKAHASHI et al (US 2018/0214352 A1) in view of Fichman et al (US 2016/0115196 A1), Brazdo (“The Harm of Biofilms in Dentistry”, an internet article published on July 6, 2017), Gahane et al (“Fmoc-phenylalanine displays antibacterial activity against Gram-positive bacteria in gel and solution phases”, Soft Matter, vol.14 (2018), pg.2234-2244) and McCloskey et al (“Ultrashort self-assembling Fmoc-peptide gelators for anti-infective biomaterial applications”, Journal of PeptideScience, published online on January 9, 2017) (applicant argue that Fichman’s peptide-based nanostructures that are used in dental fillings specifically relate to hydrogels. Applicant point out that Gahane teaches the effectiveness of Fmoc-Phe in hydrogel and solution phase (not in cured polymer matrices) and teaches that the antibacterial activity of Fmoc-F hydrogel is primarily due to its release from the hydrogel. Applicant argue that since Takahashi’s dental composition is not a hydrogel but a curable dental formulation, one skilled in the art would not be motivated to combine Takahashi with the cited secondary references with a reasonable expectation of success. Based on applicant’s such argument, previous 103 rejections are withdrawn).
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.
Claim Objections
Claim 1 is objected to because of the following informalities: In claim 1, lines 16-20, applicant recite “and wherein the composition is such that a composite material which comprises said polymeric matrix and said at least one self-assembled nanostructure dispersed within said polymeric matrix and is obtained upon subjecting the composition to conditions under which said polymeric matrix is formed of said dental formulation, is such that:”. The presence of the phrase “the composition is such that” earlier in the recitation is redundant, and it only makes the meaning of the recitation confusing. Thus, Applicant need to change the quoted recitation above to --- and wherein a composite material, which comprises . . . and is obtained upon . . . is formed of said dental formulation, is such that: ---. Appropriate correction is required.
Claim 1 is objected to because of the following informalities: In claim 1, lines 21-22, applicant need to change “the same polymeric matrix” to --- the same composite material --- (the Examiner believes that applicant intended to state that a toughness of the composite material differs from a toughness of the same composite material except for missing the at least one self-assembled nanostructure by no more than 15%). By the same logic, on line 25, applicant need to change “the same polymeric matrix” to --- the same composite material ---; on line 27-28, applicant need to change “the same polymeric matrix” to --- the same composite material ---; on lines 30-31, applicant need to change “the same polymeric matrix” to --- the same composite material ---. Appropriate correction is required.
Claim 4 is objected to because of the following informalities: on line 2, applicant need to change “each of said aromatic molecules” to --- each aromatic molecules --- (so as to be consistent with what applicant recite on lines 10-11 of claim 1). Appropriate correction is required.
Claim 11 is objected to because of the following informalities: on line 3, applicant need to insert --- and --- between “chain” and “having”. Appropriate correction is required.
Claim 26 is objected to because of the following informalities: on line 4, applicant need to change “a mixture” to --- the mixture ---. Appropriate correction is required.
Claim 32 is objected to because of the following informalities: on line 4, applicant need to change “and halogenated aromatic amino acids” to --- and/or halogenated amino acids ---. Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 7-9 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
The way claims 7 and 8 are currently written is confusing: in claim 1 (from which claims 7 and 8 depend), applicant is requiring that each of the plurality of aromatic molecules to comprise an amino acid that has an aromatic moiety or group in its side chain. However, in claim 7 and claim 8, applicant recite that “said plurality of aromatic molecules that comprise an amino acid that has an aromatic moiety or group in its side chain, and/or . . .”. It is unclear from the claim language whether applicant are requiring (in claims 7 and 8) each of the plurality of aromatic molecules to comprise an amino acid that has an aromatic moiety or group in its side chain (as it is required in claim 1). The Examiner would like to suggest applicant to change claim 7 (in order to overcome instant 112(b) rejection and also to simplify the claim language) to recite --- wherein in said amino acid that has an aromatic moiety or group in its side chain and/or said amino acid having an aromatic moiety or group in its side chain and having an end-capping moiety attached thereto, said amino acid that has an aromatic moiety or group in its side chain or said amino acid having an aromatic moiety or group in its side chain is phenylalanine. ---. The Examiner would also like to suggest applicant to change claim 8 to recite --- wherein in said amino acid that has an aromatic moiety or group in its side chain and/or said amino acid having an aromatic moiety or group in its side chain and having an end-capping moiety attached thereto, said amino acid that has an aromatic moiety or group in its side chain or said amino acid having an aromatic moiety or group in its side chain is halogenated ---. (it is to also be noted that there is insufficient antecedent basis for the term “said aromatic amino acid” as currently recited on line 8 of claim 8). When applicant make such changes in claims 7 and 8, applicant also need to change claim 9 to recite --- wherein said halogenated amino acid is pentafluoro-phenylalanine. ---.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 32 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 1, from which instant claim 32 depends, recites that in at least a portion of the plurality of aromatic molecules, each aromatic molecules is an amino acid having an aromatic moiety or group in its side chain and also having an end-capping moiety. In instant claim 32, when said plurality of aromatic molecules “comprises” a plurality of amino acids wherein each of said amino acids has an aromatic moiety or group in its side chain and has an end-capping moiety, such limitation is already contained in instant claim 1 because claim 1 recites that in at least a portion of the plurality of aromatic molecules, each aromatic molecules is an amino acid having an aromatic moiety or group in its side chain and (also) having an end-capping moiety, which is equal to saying that the plurality of aromatic molecules comprises plurality of amino acids wherein each of said amino acids has an aromatic moiety or group in its side chain and has an end-capping moiety. Thus, claim 32 fails to further limit the subject matter of instant claim 1.
The Examiner would like to suggest applicant to make analogous changes (as suggested in the paragraphs above) in the withdrawn claims where appropriate to save time.
Allowable Subject Matter
Claims 3-13, 26, 32 and 33 are objected to as being dependent upon an objected base claim.
Claims 1, 3-6, 10-13, 26 and 33 would be allowable (for the reasons explained above in Paragraph 3) if objected claims were amended to overcome the objections (see Paragraph 5-10 above).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SIN J. LEE whose telephone number is (571)272-1333. The examiner can normally be reached on M-F 9 am-5:30pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Brian Kwon can be reached on 571-272-0581. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SIN J LEE/
Primary Examiner, Art Unit 1613
May 29, 2026
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