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 .
Priority
The instant claims are a divisional of application 16/067,053 filed 28 June 2018 which is the national stage entry of PCT/CL2016/050079 filed 29 December 2016. Acknowledgment is made of the Applicant’s claim of foreign priority to application CL3781-2015 filed 30 December 2015. Should applicant desire to obtain the benefit of foreign priority under 35 U.S.C. 119(a)-(d) prior to declaration of an interference, a certified English translation of the foreign application must be submitted in reply to this action. 37 CFR 41.154(b) and 41.202(e). Failure to provide a certified translation may result in no benefit being accorded for the non-English application. The effective filing date of the instant application is 29 December 2016.
Examiner’s Note
Applicant's amendments and arguments filed 10 April 2026 are acknowledged and have been fully considered. The Examiner has re-weighed all the evidence of record. Rejections and/or objections not reiterated from previous office actions are hereby withdrawn. The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set presently being applied to the instant application. In the Applicant’s response, filed 10 April 2026, it is noted that claims 1 and 6 have been amended. Support can be found in the claims as originally filed. No new matter or claims have been added.
Status of the Claims
Claims 1-12 are pending.
Claims 7-12 are withdrawn.
Claims 1-6 are 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 (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
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 1-6 stand rejected under 35 U.S.C. 103 as being unpatentable over Wong et al. (US 6,423,762) in view of Jaynes et al. (US 2012/0294919).
Wong teaches a denture adhesive composition comprising a polymeric activator (col 3, lns 15-21). The adhesive must be releasable so that the wearer may remove the dentures for cleaning and maintenance (col 1, lns 41-44). The preferred denture adhesive is a salt (anhydride) of a copolymer of maleic acid and methyl vinyl ether wherein the adhesive material can be used in about 15-60% (col 3, ln 42- col 4, ln 19). Other components of the dental adhesive can include carboxymethyl cellulose in about 15-35% (col 4, ln 64- col 5, ln 14). A preferred excipient includes a blend of mineral oil in about 5-30% with petrolatum in 10-40% (col 5, lns 15-43). Moreover, the composition may comprise an antibacterial or antimicrobial agent in 0-70% by weight (col 5, ln 66- col 6, ln 29). Regarding the polymeric activator, a preferred species is polyacrylic acid (col 4, lns 20-63).
Wong does not teach including a copper nanoparticle supported on a ceramic.
Jaynes teaches antimicrobial metal composites with high activity that can be incorporated into adhesives (abstract). The metal nanoparticle (1-20 nm) can be copper dispersed on a filler such as silica or metal oxides such as titanium oxide [0038, 0069, 0071]. Regarding the copper, various copper (II) substrates can be used [0057]. The composites may be used in dental implants, thus implying suitability to be used orally [0129].
It would have been prima facie obvious to prepare a dental adhesive as taught by Wong wherein the composition comprises copolymers of maleic anhydride and methyl vinyl ether (15-60%), carboxymethyl cellulose (15-35%), mineral oil (5-30%), petrolatum (10-40%), polyacrylic acid, and an antibacterial agent (0-70%). It must be remembered that “[w]hen a patent simply arranges old elements with each performing the same function it had been known to perform and yields no more than one would expect from such an arrangement, the combination is obvious.” KSR v. Teleflex, 127 S.Ct. 1727, 1740 (2007) (quoting Sakraida v. A.G. Pro, 425 U.S. 273, 282 (1976)). “[W]hen the question is whether a patent claiming the combination of elements of prior art is obvious,” the relevant question is “whether the improvement is more than the predictable use of prior art elements according to their established functions.” (Id.). Addressing the issue of obviousness, the Supreme Court noted that the analysis under 35 USC 103 “need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR at 1741. The Court emphasized that “[a] person of ordinary skill is… a person of ordinary creativity, not an automaton.” Id. at 1742. Consistent with this reasoning, it would have been obvious to have selected various combinations of active agents and excipients from Wong, to arrive at compositions “yielding no more than one would expect from such an arrangement.”
Moreover, it would have been obvious to look to Jaynes and incorporate copper nanoparticles (1-20 nm) embedded in silica or titanium oxide into the composition of Wong as the antibacterial agents based on the teachings in Jaynes of said nanoparticles enhancing antibacterial properties. Generally, it is prima facie obvious to select a known material for incorporation into a composition, based on its recognized suitability for its intended use (see MPEP § 2144.07). Regarding the concentrations and particle sizes, in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). MPEP 2144.05 (I). The resulting composition of Wong comprising the nanoparticles of Jaynes renders obvious instant claims 1-6.
Response to Arguments
Applicant's arguments filed 10 April 2026 have been fully considered but they are not persuasive. The Applicant argues, on page 6 of their remarks, that Wong’s broad statement that an antimicrobial agent may be present does not supply a technical roadmap for selecting and incorporating nanoparticle antimicrobials.
In response, the broad teaching in Wong that the composition may comprise an antibacterial or antimicrobial agent is, in fact, guidance to use any agent that reads on an antibacterial or antimicrobial agent including the particles of Jaynes. It is well settled that it is a matter of obviousness for one of ordinary skill in the art to select a particular component from among many disclosed by the prior art as long as it is taught that the selection will result in the disclosed effect, even when the possible selections number 1200 or in the thousands. Merck & Co., Inc. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989); In re Corkill, 771 F.2d 1496, 1500 (Fed. Cir. 1985).
The Applicant argues, on pages 7-8, that it is not reasonable to interpret Wong’s “dental adhesive” disclosure as encompassing permanent fixation systems.
In response, the instant claims are towards a composition, and not a use. That being said, Wong teaches broadly that their composition may be used as a dental adhesive, which based on the broadest reasonable interpretation includes any type of dental adhesive including both temporary and permanent. To be sure, Wong teaches that the adhesive must be removable for cleaning, thus implying a temporary adhesion. Jaynes suggests using their composition for adhesives and dental implants, thus indicating its use in the oral cavity. As such, combination of the references is proper. Jaynes is applied for its teachings of suitable antibacterial copper nanoparticles for oral administration, thus it would have been obvious to combine Jaynes with Wong which teaches adhesives for oral dental implants.
The Applicant argues, on page 9 of their remarks, that while Jaynes teaches copper dispersed on filers, that general teaching is insufficient to render the claims obvious in the context of Wong’s denture adhesive system absent a teaching or suggestion that the copper nanoparticle would be compatible.
In response, it is obvious to include the copper nanoparticle of Jaynes in the composition of Wong since the copper nanoparticle is an antibacterial agent useful for oral administration. Generally, it is prima facie obvious to select a known material for incorporation into a composition, based on its recognized suitability for its intended use (see MPEP § 2144.07). Moreover, arguments presented by applicant cannot take the place of evidence in the record (see MPEP 2145 (I)). The Applicant has not provided any evidence that the nanoparticle of Jaynes would not work in the invention of Wong.
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 ANDREW S ROSENTHAL whose telephone number is (571)272-6276. The examiner can normally be reached M-F 8-5pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Brian Kwon can be reached at 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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/ANDREW S ROSENTHAL/Primary Examiner, Art Unit 1613
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