DETAILED ACTION
Applicants' arguments, filed 12/11/2025, have been fully considered. Rejections and/or objections not reiterated from previous office actions are hereby withdrawn.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.
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 application claims domestic priority to PRO 63/151,091 filed 02/19/2021, PRO 63/151,096 filed 02/19/2021, PRO 63/151,099 filed 02/19/2021, and PRO 63/219,929 filed 07/09/2021.
Claim Interpretation
Regarding instant claim 9, the limitation “wherein the alumina comprises calcined alumina, uncalcined alumina or combinations thereof” to the best of the Examiners understanding alumina can be either calcined or not calcined, therefore any alumina would fall within the limitations set forth in the claim.
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.
A) Claims 1-9,11-15, 17-18, 20-24, and 26 are rejected under 35 U.S.C. 103 as being unpatentable over Midha S. et al. (US Patent Application Publication 20170027849A1) in view of Poth et al. (US Patent Application Publication 20150297477A1).
Midha S. recites greater than about 0.5% peroxide selected from the group consisting of hydrogen peroxide, urea peroxide, calcium peroxide, sodium peroxide, zinc peroxide, or combinations thereof (Midha S. at claim 1). Midha S. recites the use of a 2-acrylamido-2-methylpropane sulfonic acid polymer, copolymer, and/or cross polymer (Midha S. at claim1). Midha S. recites wherein the 2-acrylamido-2-methylpropane sulfonic acid polymers, copolymers, and/or cross polymers is polyacrylate crosspolymer-6 (Midha S. at claim 2). Midha S. recites wherein the composition comprises from about 0.1% to 10% polyacrylate crosspolymer-6 (Midha S. at claim 3). Midha S. recites greater than about 10% water (Midha S. at claim 16). Midha S. teaches the composition contains greater than about 5% water (Midha S. at [0072]). Midha S. recites wherein the oral care composition is a dentifrice (Midha S. at claim 13). Midha does not require the use of tin. Midha S. teaches the use of metal salt includes zinc salts, stannous salts, potassium salts, copper salts, alkali metal bicarbonate slats, and combinations thereof. Metal salts have a wide range of functions from antimicrobial agents to sensitivity agents or buffers. The oral care compositions of the present invention may contain metal salt in an amount from about 0.05% to about 11%, from about 0.5% to about 7%, or from about 1% to about 5%, by total weight of the oral care composition (Midha S. at [0064]). Midha teaches the use of potassium salts include potassium nitrate, potassium citrate, potassium oxalate, potassium bicarbonate, potassium acetate, potassium chloride, and combinations thereof (Midha S. at [0068]). Midha teaches the use of zinc salts include zinc fluoride, zinc chloride, zinc iodide, zinc chlorofluoride, zinc actetate, zinc hexafluorozirconate, zinc sulfate, zinc lactate, zinc tartrate, zinc gluconate, zinc citrate, zinc malate, zinc glycinate, zinc pyrophosphate, zinc metaphosphate, zinc oxalate, zinc phosphate, zinc carbonate, and combinations thereof (Midha S. at [0067]). Midha S. recites wherein the oral care composition is a dentifrice and the composition further comprises an abrasive selected from the group consisting of silica, polyorganosilsequioxane, calcium pyrophosphate, poly(methyl methacrylate), calcium carbonate, dicalcium phosphate, barium sulfate, and combinations thereof (Midha at claim 13). Midha S. teaches that typical abrasive polishing materials can include silicas including gels and precipitates; aluminas; phosphates including orthophosphates, polymetaphosphates, and pyrophosphates; and mixtures thereof (Midha at [0095]). Midha S. recites a fluoride ion source selected from the group consisting of stannous fluoride, sodium fluoride, potassium fluoride, amine fluoride, sodium monofluorophosphate, indium fluoride, amine fluorides, and combinations thereof (Midha S. at claim 1). Midha S. teaches the use of sodium lauryl sulfate (Midha S. at [0062]). Midha S. teaches that sodium lauryl sulfate used at an amount 2.6 % (Midha S. at [0113]).
Midha S. differs from the instant claims in this rejection insofar as it does not teach the use of adipic acid. The teachings of Poth cure this deficit.
Poth recites an oral care composition comprising an orally acceptable vehicle, a fluoride ion and a buffer having a pKa of less than 7.0 wherein the buffer comprises an aqueous solution of an acid and a salt of the acid, and wherein the ratio of acid:salt is between 2:1 and 1:2, wherein the pH of the oral composition is greater than 3.5 and less than 5.0, and wherein the oral composition has an acid number greater than 4.5 (Poth at claim 1). Poth further recites wherein the acid is selected from succinic acid, tartaric acid, malic acid, fumaric acid, glutamic acid, lactic acid, suberic acid, adipic acid, sebacic acid, glutaric acid, azelaic acid and combinations thereof (Poth at claim 3). Poth further teaches that the buffer is selected from α-hydroxy acids, dicarboxylic acids, phosphoric acid, amino acids, diphosphoric acid, salts of α-hydroxy acids, salts of dicarboxylic acids, salts of phosphoric acid, salts of amino acids, salts of diphosphoric acid and combinations thereof. Optionally, the buffer may be selected from succinic acid, tartaric acid, malic acid, fumaric acid, glutamic acid, lactic acid, suberic acid, adipic acid, sebacic acid, glutaric acid, azelaic acid, salts of succinic acid, salts of tartaric acid, salts of malic acid, salts of fumaric acid, salts of glutamic acid, salts of lactic acid, salts of suberic acid, salts of adipic acid, salts of sebacic acid, salts of glutaric acid, salts of azelaic acid and combinations thereof. Preferably the buffer is selected from fumaric acid, salts of fumaric acid, malic acid, salts of malic acid, succinic acid, salts of succinic acid and combinations thereof. The buffer may be a mixture of any one or any combination of these acid and salts (Poth at [0007]). Poth further teaches the use of a peroxide (Poth at [0058]). Poth further teaches the use of AMPS (Poth at [0061]). Poth further teaches the use of water (Poth at [0031]). Poth further teaches the use of abrasives including alumina, silica and calcium pyrophosphate (Poth at [0054]). Poth teaches the use of sodium monofluorophosphate (Poth at [0035]). Poth teaches the use of zinc citrate trihydrate (Poth at [0061]). Poth recites wherein the acid is selected from α-hydroxy acids, amino acids, dicarboxylic acids, phosphoric acid, diphosphoric acid and combinations thereof (Poth at claim 2). Poth teaches the use of sodium lauryl sulfate (Poth at [0032]).
Poth differs from the instant claims insofar as it does not teach and amount of peroxide or peroxide releasing compound. The teachings of Mida S. cure this deficit.
It would have been prima facie obvious to one of ordinary skill in the art to have combined the acid of Midha with the acid of Poth for the predictable outcome of an acid buffer in an oral care composition comprising peroxide, buffer, water, AMPS, alumina, silica, calcium pyrophosphate, and zinc. See MPEP 2144.06(I).
It would have been prima facie obvious to one of ordinary skill in the art to have used the adipic acid for its intended use as a buffer in an oral care composition within the composition of Midha S. See MPEP 2144.07.
Regarding instant claim 1, Midha S. recites greater than about 0.5% peroxide selected from the group consisting of hydrogen peroxide, urea peroxide, calcium peroxide, sodium peroxide, zinc peroxide, or combinations thereof (Midha S. at claim 1) which overlaps the instantly claimed range of about 1% to about 5%. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP§2144.05(I). The composition of Midha S. would be expected to have the same peroxide release rate as the instantly claimed invention because the compositions are physically the same, water and peroxide. Identical compositions have identical properties. See MPEP 2112.01. Furthermore, the discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer. See MPEP 2112(I). Midha S. recites wherein the oral care composition is a dentifrice (Midha S. at claim 13). Midha does not require the use of tin.
Regarding instant claim 1a, Midha S. recites greater than about 0.5% peroxide selected from the group consisting of hydrogen peroxide, urea peroxide, calcium peroxide, sodium peroxide, zinc peroxide, or combinations thereof (Midha S. at claim 1) which overlaps the instantly claimed range of about 1% to about 5%. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP§2144.05(I).
Regarding instant claim 1b, Midha S. recites the use of a 2-acrylamido-2-methylpropane sulfonic acid polymer, copolymer, and/or cross polymer (Midha S. at claim1). Poth further teaches the use of AMPS (Poth at [0061]). Midha S. recites wherein the 2-acrylamido-2-methylpropane sulfonic acid polymers, copolymers, and/or cross polymers is polyacrylate crosspolymer-6 (Midha S. at claim 2). Midha S. recites wherein the composition comprises from about 0.1% to 10% polyacrylate crosspolymer-6 (Midha S. at claim 3), which overlaps the instantly claimed range of about 0.01% to about 5%. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP§2144.05(I).
Regarding instant claim 1c, Midha S. recites greater than about 10% water (Midha S. at claim 16). Midha S. teaches the composition contains greater than about 5% water (Midha S. at [0072]).
Regarding instant claim 1d, Midha S. teaches the use of metal salt includes zinc salts, stannous salts, potassium salts, copper salts, alkali metal bicarbonate slats, and combinations thereof. Metal salts have a wide range of functions from antimicrobial agents to sensitivity agents or buffers. The oral care compositions of the present invention may contain metal salt in an amount from about 0.05% to about 11%, from about 0.5% to about 7%, or from about 1% to about 5%, by total weight of the oral care composition (Midha S. at [0064]) which overlaps the instantly claimed range of about 0.01% to about 10%. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP§2144.05(I). Midha teaches the use of potassium salts include potassium oxalate, zinc lactate, zinc tartrate, zinc gluconate, zinc citrate, zinc malate, (Midha S. at [0068]). Poth further recites wherein the acid is selected from succinic acid, tartaric acid, malic acid, fumaric acid, glutamic acid, lactic acid, suberic acid, adipic acid, sebacic acid, glutaric acid, azelaic acid and combinations thereof (Poth at claim 3).
Regarding instant claim 2, Midha S. recites greater than about 0.5% peroxide selected from the group consisting of hydrogen peroxide, urea peroxide, calcium peroxide, sodium peroxide, zinc peroxide, or combinations thereof (Midha S. at claim 1).
Regarding instant claim 3, Midha S. recites greater than about 0.5% peroxide selected from the group consisting of hydrogen peroxide, urea peroxide, calcium peroxide, sodium peroxide, zinc peroxide, or combinations thereof (Midha S. at claim 1) which overlaps the instantly claimed range of about 5%. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP§2144.05(I).
Regarding instant claim 4, Midha S. recites greater than about 0.5% peroxide selected from the group consisting of hydrogen peroxide, urea peroxide, calcium peroxide, sodium peroxide, zinc peroxide, or combinations thereof (Midha S. at claim 1) which overlaps the instantly claimed range of at least about 3%. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP§2144.05(I).
Regarding instant claim 5, Midha S. recites greater than about 0.5% peroxide selected from the group consisting of hydrogen peroxide, urea peroxide, calcium peroxide, sodium peroxide, zinc peroxide, or combinations thereof (Midha S. at claim 1) which overlaps the instantly claimed range of at least about 3.5%. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP§2144.05(I).
Regarding instant claim 6, Midha S. recites greater than about 10% water (Midha S. at claim 16). Midha S. teaches the composition contains greater than about 5% water (Midha S. at [0072]) which overlaps the instantly claimed range of at about 5% to about 75%. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP§2144.05(I).
Regarding instant claim 7, Midha S. recites wherein the oral care composition is a dentifrice and the composition further comprises an abrasive selected from the group consisting of silica, polyorganosilsequioxane, calcium pyrophosphate, poly(methyl methacrylate), calcium carbonate, dicalcium phosphate, barium sulfate, and combinations thereof (Midha at claim 13).
Regarding instant claim 8, Midha S. recites wherein the oral care composition is a dentifrice and the composition further comprises an abrasive selected from the group consisting of silica, polyorganosilsequioxane, calcium pyrophosphate, poly(methyl methacrylate), calcium carbonate, dicalcium phosphate, barium sulfate, and combinations thereof (Midha at claim 13).
Regarding instant claim 9, Midha S. teaches that typical abrasive polishing materials can include silicas including gels and precipitates; aluminas; phosphates including orthophosphates, polymetaphosphates, and pyrophosphates; and mixtures thereof (Midha at [0095]).
Regarding instant claim 10, Midha S. recites wherein the oral care composition is a dentifrice (Midha S. at claim 13).
Regarding instant claim 11, Midha S. recites a fluoride ion source selected from the group consisting of stannous fluoride, sodium fluoride, potassium fluoride, amine fluoride, sodium monofluorophosphate, indium fluoride, amine fluorides, and combinations thereof (Midha S. at claim 1).
Regarding instant claim 12, Midha S. recites a fluoride ion source selected from the group consisting of sodium fluoride, potassium fluoride, amine fluoride, sodium monofluorophosphate, indium fluoride, amine fluorides, and combinations thereof (Midha S. at claim 1).
Regarding instant claim 13, Midha S. recites a fluoride ion source selected from the group consisting of stannous fluoride, sodium fluoride, potassium fluoride, amine fluoride, sodium monofluorophosphate, indium fluoride, amine fluorides, and combinations thereof (Midha S. at claim 1).
Regarding instant claim 14, Midha S. teaches the use of metal salt includes zinc salts, stannous salts, potassium salts, copper salts, alkali metal bicarbonate slats, and combinations thereof (Midha S. at [0064]).
Regarding instant claim 15, Midha S. teaches the use of metal salt includes zinc salts, stannous salts, potassium salts, copper salts, alkali metal bicarbonate slats, and combinations thereof (Midha S. at [0064]).
Regarding instant claim 17, Midha teaches the use of zinc salts include zinc fluoride, zinc chloride, zinc iodide, zinc chlorofluoride, zinc actetate, zinc hexafluorozirconate, zinc sulfate, zinc lactate, zinc tartrate, zinc gluconate, zinc citrate, zinc malate, zinc glycinate, zinc pyrophosphate, zinc metaphosphate, zinc oxalate, zinc phosphate, zinc carbonate, and combinations thereof (Midha S. at [0067]).
Regarding instant claim 18, Poth recites wherein the acid is selected from α-hydroxy acids, amino acids, dicarboxylic acids, phosphoric acid, diphosphoric acid and combinations thereof (Poth at claim 2).
Regarding instant claim 20, Midha S. teaches the use of sodium lauryl sulfate (Midha S. at [0062]). Poth teaches the use of sodium lauryl sulfate (Poth at [0032]).
Regarding instant claim 21, Midha S. teaches the use of sodium lauryl sulfate (Midha S. at [0062]). Midha S. teaches that sodium lauryl sulfate used at an amount 2.6% (Midha S. at [0113]), which overlaps the instantly claimed range of at least 1.5%. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP§2144.05(I).
Regarding instant claim 22, Midha S. teaches the use of sodium lauryl sulfate (Midha S. at [0062]). Midha S. teaches that sodium lauryl sulfate used at an amount 2.6% (Midha S. at [0113]), which overlaps the instantly claimed range of greater than 1.5%. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP§2144.05(I).
Regarding instant claim 23, Midha S. teaches the use of sodium lauryl sulfate (Midha S. at [0062]). Poth teaches the use of sodium lauryl sulfate (Poth at [0032]).
Regarding instant claim 24, Midha S. teaches the use of sodium lauryl sulfate (Midha S. at [0062]). Poth teaches the use of sodium lauryl sulfate (Poth at [0032]).
Regarding instant claim 26, Midha S. teaches the use of AMPS, aka 2-acrylamido-2-methylpropane sulfonic acid polymer (Midha S. at claim 1), which would not form an isolatable complex with peroxide.
B) Claim 19 is rejected under 35 U.S.C. 103 as being unpatentable over Midha S. et al. (US Patent Application Publication 20170027849A1) and Poth et al. (US Patent Application Publication 20150297477A1) as applied to claims 1-9, 11-15,17-18, 20-24, and 26 above, and further in view of Midha et al. (US Patent Application Publication 20140308322 A1).
The teachings of Midha S. and Poth are discussed above.
The teachings of Midha S. and Poth differ from the instant claims insofar as they do not teach the use of specific amino acids. The teachings of Midha cure this deficit.
Midha et al recites an oral composition comprising water (Midha at claim 16). Midha further teaches that the carrier, water, may be used in an amount ranging from 0.001% to about 90% (Midha at claim 8). Midha teaches that the oral care composition comprises form about 0.5% to about 10% peroxide (Midha at [0060]). Midha teaches that the peroxide may be hydrogen peroxide (Midha at [0060]). Midha teaches the use of silica abrasives (Midha at [0096]). Midha teaches the use of calcium carbonate (Midha at [0097]). Midha teaches the use of aluminas including hydrated aluminas (Midha at [0097]). Midha teaches that the composition is a dentifrice (Midha at claim 18). Midha teaches the use of sodium monofluorophosphate (Midha at [0054]). Midha teaches the use of zinc oxide (Midha at [0112]) and stannous chloride (Midha at [0059]). Midha teaches the use of amino acids including lysine (Midha at [0086]). Midha teaches the use of sodium alkyl sulfate and sodium lauryl sulfate (Misha at [0089]). Midha teaches the use of AMPS and AMPS salts in an amount from about 0.1% to about 15% (Midha at [0063]). Midha teaches an oxalic acid metal salt, stannous oxalate that is used in a range of 0.1% to 5% (Midha at [0059]).
Midha differs from the instant claims in this rejection insofar as it does not teach the use of potassium oxalate. The teachings of Midha S. cure this deficit.
Regarding instant claim 19, Midha teaches the use of amino acids including lysine (Midha at [0086]). Midha teaches that anti-sensitivity agents useful herein include tubule blocking agents and/or desensitivity agents. Tubule blocking agents may be selected from the group consisting of stannous ion source, strontium ion source, calcium ion source, phosphorus ion source, aluminum ion source, magnesium ion source, amino acids, bioglasses, nanoparticulates, polycarboxylates, GANTREZ, and mixtures thereof. The amino acids may be basic amino acids, and a basic amino acid may be arginine. The desensitivity agent may be a potassium salt selected from the group consisting of potassium fluoride, potassium citrate, potassium nitrate, potassium chloride, and mixtures thereof.
It would be prima facie obvious to one of ordinary skill in the art to combine the desensitizing amino acids of Midha with the desensitizing potassium salts of Midha S. One would have a reasonable expectation of success because both compositions teach the use of desensitizing agents. See MPEP 2144.06(I). See MPEP 2144.07.
It would have been prima facie obvious to one of ordinary skill in the art to have used the specific amino acids of Midha as the amino acids taught by Poth to be useful in an oral care composition. See MPEP 2144.06(I). See MPEP 2144.07.
Response to Arguments
Applicant’s arguments, see remarks page 5, filed 12/11/2025, with respect to the rejection of claims 1 under Midha S. have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Midha S. in view of Poth and Midha S and Poth in view of Midha.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
B) Claims 1-9, 11-15,17-24, and 26 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over;
claims 1, 4-5, 7-10, 12-22, and 25-41 of copending Application No. 17/308078;
in view of Midha S. et al. (US Patent Application Publication 20170027849A1), Poth et al. (US Patent Application Publication 20150297477A1), and Midha et al. (US Patent Application Publication 20140308322A1). The instant invention teaches an oral care composition comprising water, AMPS in a range of about 1 to 5%, and hydrogen peroxide in a range between 1 and 5 percent by weight of the composition. The claims are not identical therefore there is not a statutory case of double patenting. The reference patent applications teach the use of peroxide and water in an oral care composition but do not specify the amount of peroxide. The teachings of Midha S., Poth, and Midha cure this deficit. Midha S. recites wherein the composition comprises from about 0.1% to 10% polyacrylate crosspolymer-6 (Midha S. at claim 3) and Midha further teaches the use of AMPS and AMPS salts in an amount from about 0.1% to about 15% (Midha at [0063]). The teachings of Midha S., Poth, and Midha are discussed in the obviousness rejection supra.
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. the above patent applications disclose wherein the oral care composition comprises peroxide, but do not disclose a percent by weight of the composition that is peroxide. Accordingly, it would have been obvious to one of ordinary skill in the art to have formulated the amount of peroxide of the above patent applications to have an amount of about 0.5% to about 10% since that amount is a known and effective amount for peroxide used in oral care compositions as taught by Midha S. Poth, and Midha.
This is a provisional nonstatutory double patenting rejection.
Response to Arguments
Applicant’s arguments, see remarks page 6-7 filed 12/11/2025, with respect to the rejection of claims 1 under Midha S. have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Midha S. and Poth, and Midha S and Poth in view of Midha.
Conclusion
No claims are presently allowable.
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
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AMANDA MICHELLE PETRITSCH whose telephone number is (571)272-6812. The examiner can normally be reached M-F 08:30-17:00 EST ALT Fridays.
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/AMANDA MICHELLE PETRITSCH/Examiner, Art Unit 1612
/SAHANA S KAUP/Supervisory Primary Examiner, Art Unit 1612
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