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.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 1 October 2025 has been entered.
Examiner’s Note
Applicant's amendments and arguments filed 1 October 2025 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 Rejections and/or objections not reiterated from previous office actions are hereby withdrawn.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 1 October 2025, it is noted that claims 1-6 have been amended. Claims 7-12 have been newly added. Support can be found in the claims as originally filed and the specification at [0004, 0037]. No new matter has been added.
Election/Restrictions
Newly submitted claims 7-12 are directed to an invention that is independent or distinct from the invention originally claimed for the following reasons: The invention of claims 1-6 and the inventions of claims 7-12 are related as product and process of use. The inventions can be shown to be distinct if either or both of the following can be shown: (1) the process for using the product as claimed can be practiced with another materially different product or (2) the product as claimed can be used in a materially different process of using that product. See MPEP § 806.05(h). In the instant case the product of Invention I can be used in a method of adhering a substrate to a surface that does not interact with oral fluids.
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claims 7-12 are withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
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 1-5 stand rejected under 35 U.S.C. 103 as being unpatentable over Wong et al. (US 6,423,762) in view of Sabatini et al. (J. Dent. 43 (2015) 546-555).
The Applicant claims, in claim 1, a denture adhesive composition comprising a cellulose polymer, a PVM/MA copolymer, copper nanoparticles, and a hydrophobic vehicle. In claim 2, the concentrations are defined and the vehicle is defined as mineral oil and petrolatum. In claim 3, the nanoparticles have a dimension of 5-200 nm and in claim 4, the shape of the nanoparticles is required wherein at least one dimension is in nanometric scale. Claim 5 requires the copper to have an oxidation of 0, 1, 2, or an intermediate state.
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.
Sabatini teaches that incorporation of polyacrylic acid coated copper iodide nanoparticles into dental adhesives significantly increase antibacterial properties (abstract). The nanoparticles are made from copper (II) sulfate and yield copper iodide wherein the copper has an oxidation state of (II) (pg 547, ¶6). The nanoparticle sizes range from 20 nm to 1.5 mm (pg 550, ¶4).
It would have been prima facie obvious to prepare a dental adhesive as taught by Wong wherein the composition comprises copolymer 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%). The dental adhesive would be removable based on Wong. 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 Sabatini and incorporate PAA-coated copper iodide nanoparticles (20 nm to 1.5 mm in size) into the composition of Wong as the antibacterial agents based on the teachings in Sabatini 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 Sabatini renders obvious instant claims 1-5.
Response to Arguments
Applicant's arguments filed 1 October 2025 have been fully considered but they are not persuasive. The Applicant argues, on pages 5-6 of their remarks, that Wong and Sabatini are from non-analogous fields and the skilled artisan would not have a reasonable expectation of success when attempting to incorporate the latter into the former.
In response, the invention of Wong is clearly towards a dental adhesive composition that must exhibit sufficient resistance to degradation (col 1, lns 38-41). Sabatini is described as a study investigating the incorporation of PAA-coated CuI nanoparticles into dental adhesives (abstract) wherein the purpose is to render the adhesive resistant to failure, bond degradation, and destruction from bacteria (pg 547, ¶5). Therefore, not only does Sabatini explicitly teach using their nanoparticles in a dental adhesive, but the art also teaches reasons for including the nanoparticles that further address concerns brought up by Wong. The strongest rationale for combining references is a recognition, expressly or impliedly in the prior art or drawn from a convincing line of reasoning based on established scientific principles or legal precedent, that some advantage or expected beneficial result would have been produced by their combination. In re Sernaker, 702 F.2d 989, 994-95, 217 USPQ 1, 5-6 (Fed. Cir. 1983) (see MPEP 2144 (II)).
The Applicant argues, on page 8 of their remarks, that the prior art does not recognize the problems addressed by the claims and that the person of ordinary skill would only consider combining by way of hindsight reasoning.
In response, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
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).
The Applicant claims, in claim 1, a denture adhesive composition comprising a cellulose polymer, a PVM/MA copolymer, copper nanoparticles, and a hydrophobic vehicle. In claim 2, the concentrations are defined and the vehicle is defined as mineral oil and petrolatum. In claim 3, the nanoparticles have a dimension of 5-200 nm and in claim 4, the shape of the nanoparticles is required wherein at least one dimension is in nanometric scale. Claim 5 requires the copper to have an oxidation of 0, 1, 2, or an intermediate state. Claim 6 requires the copper to be supported on a ceramic nanoparticle.
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 copolymer 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 1 October 2025 have been fully considered but they are not persuasive. The Applicant argues, on page 8 of their remarks, that the rejection relies on an abstract, generic understanding of the term “adhesives” in Jaynes which fails to appreciate the functional and chemical differences between a removable and a permanent fixation composition.
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.
Conclusion
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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, 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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/ANDREW S ROSENTHAL/Primary Examiner, Art Unit 1613