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 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 13-15 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.
Claim 13 recites “the dental curable composition comprises” in line 6. Claims 14-15 recite “the dental curable composition containing” in line 2; “the dental curable composition comprises” in line 6. 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) [see MPEP 2111.03]. Claims 13-15 also recite “dental curable composition consists of” in line 4. The transitional phrase “consisting of” excludes any element, step, or ingredient not specified in the claim. In re Gray, 53 F.2d 520, 11 USPQ 255 (CCPA 1931); Ex parte Davis, 80 USPQ 448, 450 (Bd. App. 1948) (“consisting of” defined as “closing the claim to the inclusion of materials other than those recited except for impurities ordinarily associated therewith.”) [see MPEP 2111.03]. It is unclear if the dental curable composition is open-ended or closed to the inclusion of other materials, therefore claims 13-15 are indefinite.
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.
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.
Claim(s) 1-6, 9-10, 12-13 and 16-17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kajikawa et al. (US 2011/0288195) in view of Nakatuka et al. (US 6,620,861), when taken with Fuchigama et al. (JP 2018-172534) {machine translation for citation}.
Regarding claims 1-4, 6, 9-10, 12 and 17: Kajikawa et al. (US ‘195) discloses dental compositions [abstract], wherein composite resin 1 (CR1) [0156-0157; Table 2, CR1] contains 70 parts by mass {pbm} D-2.6E (2,2’-bis[4-(methacryloxyethoxy)phenyl]propane [0135]), 20 pbm 3G (triethylene glycol dimethacrylate [0135]), 10 pbm UDMA (urethane dimethacrylate [0135]), 15 pbm MF1 (fluoroaluminosilicate glass powder [0145]), 0.3 pbm CQ (camphorquinone [0143]), 0.5 pbm MDEOA (N-methyldiethanolamine [0138)], 0.5 pbm DMBE (ethyl p-N,N-dimethylaminobenzoate [0140]), 0.75 pbm DPIB (4-methylphenyl-4’-isopropylphenyliodonium tetrakis(pentafluoro)borate [0141]), and 202 pbm F1 (silica-zirconia [0146]) {corresponding to 0.3 parts CQ; 0.75 parts DPIB, 1 part MDEOA+DMBE; 15 parts MF1 per 100 parts monomers (D-2.6E/3G/UDMA)} [0156-0157; Table 2, CR1].
Kajikawa et al. (US ‘195) does not disclose the fluoroaluminosilicate glass powder surface treated with a surface treatment agent of instant formula (1). However, Nakatuka et al. (US ‘861) discloses dental compositions [abstract] comprising fluoroaluminosilicate glass powder [31:60-32:39; 89:6-22] treated with a low condensed product of silane compound MS51SG1 (tetramethoxysilane partial hydrolysis condensate; 2-6) with subsequent heat treating at 150 oC for 6 h [89:23-91:4]. The resulting filler is further treated with γ-methacryloyloxypropyltrimethoxysilane [91:32-92:5]. Kajikawa et al. (US ‘195) and Nakatuka et al. (US ‘861) are analogous art because they are concerned with a similar technical difficulty, namely the preparation of dental compositions containing fluoroaluminosilicate glass powders. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have combined surface treatment with a low condensed product of silane compound and subsequent treatment with a silane coupling agent, as taught by Nakatuka et al. (US ‘861) in the invention of Kajikawa et al. (US ‘195), and would have been motivated to do so since Nakatuka et al. (US ‘861) discloses fluoroaluminosilicate glass powders surface treated with a low condensed product of silane compound and subsequent treatment with a silane coupling agent affords dental compositions having excellent wear resistance, smoothness and glossiness [11:11-17; 93:50-54].
Fuchigama et al. (JP ‘534) provides evidence for MS51SG1 being a tetramethoxysilane partial hydrolysis condensate [0043].
Regarding claims 5 and 16: Kajikawa et al. (US ‘195) and Nakatuka et al. (US ‘861) disclose fluoroaluminosilicate glass powder treated with a low condensed product of silane compound MS51SG1 (tetramethoxysilane partial hydrolysis condensate; 2-6).
The claimed effects and physical properties, i.e. a dispersion of 1.0 g of the (El) surface-treated basic filler in a mixed solution of 40 g of distilled water and 10 g of ethanol has pH-value in a range from 7.5 to 10.0 after stirring for 1 hour [instant claim 5]; a pH-value after immersing a cured body of the dental curable composition having a diameter of 15 mm and a thickness of 1 mm in 5 mL of a lactic acid aqueous solution having pH-value of 4.0 for 24 hours is 4.5 or more [instant claim 16], would implicitly be achieved, as “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) [see MPEP 2112.01].
Regarding claim 13: Kajikawa et al. (US ‘195) and Nakatuka et al. (US ‘861) disclose the basic claimed composition [as set forth above with respect to claim 1].
Kajikawa et al. (US ‘195) does not disclose a two-pack composition consisting of a first paste and a second paste. However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have prepared a two-pack composition consisting of a first paste and a second paste, as a prima facie case of obviousness exists where changes in the sequence of adding ingredients derived from the prior art process steps. Ex parte Rubin , 128 USPQ 440 (Bd. App. 1959). See also In re Burhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946) (selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results); In re Gibson, 39 F.2d 975, 5 USPQ 230 (CCPA 1930) (Selection of any order of mixing ingredients is prima facie obvious.) [See MPEP 2144.04]. Additionally, it is prima facie obvious to make components separable. See In re Dulberg, 289 F.2d 522, 523, 129 USPQ 348, 349 (CCPA 1961) [MPEP 2144.04]. When faced with a mixture, one of ordinary skill in the art would be motivated by common sense to select a 1:1 ratio, a ratio that falls within the presently claimed amount, absent evidence of unexpected or surprising results. Case law holds that "[h]aving established that this knowledge was in the art, the examiner could then properly rely... on a conclusion of obviousness, 'from common knowledge and common sense of the person of ordinary skill in the art within any specific hint or suggestion in a particular reference." (see In re Bozek, 416 F.2d 1385, 1390, 163 USPQ 545, 549 (CCPA 1969)) [MPEP 2143].
Allowable Subject Matter
Claims 7 and 11 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claims 14-15 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: Hara et al. (US 2015/0342838) does not disclose a photoacid generator comprising an aryl iodonium salt. The combination of Kajikawa et al. (US 2011/0288195) and Nakatuka et al. (US 6,620,861) does not disclose the surface treated filler of claim 7 or the composition of claims 14-15 with sufficient specificity. Kajikawa et al. (US ‘195) discloses a separate adhesive material (B) containing a polymerizable monomer having an acidic group [0003; 0031; 0109-0118]. There is no motivation to include 1-30 parts by mass in 100 parts by mass of monomers of the polymerizable monomer having an acidic group in the filling/restoring material (A) [0003;0031-0033].
Response to Arguments
The rejection of claims 13-15 under 35 U.S.C. 112(b) is maintained. The transitional phrase “consisting of” excludes any element (“consisting of” defined as “closing the claim to the inclusion of materials other than those recited except for impurities ordinarily associated therewith.”) [see MPEP 2111.03], not just a third paste from the composition as applicant argues. It is unclear if the dental curable composition is open-ended or closed to the inclusion of other materials, therefore claims 13-15 are indefinite. Claims 13-15 will be interpreted as the dental curable compositions consist of a first paste and a second paste, wherein the first paste and second paste comprise, with respect to 200 parts by mass of total of the (A) polymerizable monomer contained in the first paste and the second paste…
Kajikawa et al. (US 2011/0288195) was relied on for dental compositions [abstract], wherein composite resin 1 (CR1) [0156-0157; Table 2, CR1] contains 70 parts by mass {pbm} D-2.6E (2,2’-bis[4-(methacryloxyethoxy)phenyl]propane [0135]), 20 pbm 3G (triethylene glycol dimethacrylate [0135]), 10 pbm UDMA (urethane dimethacrylate [0135]), 15 pbm MF1 (fluoroaluminosilicate glass powder [0145]), 0.3 pbm CQ (camphorquinone [0143]), 0.5 pbm MDEOA (N-methyldiethanolamine [0138)], 0.5 pbm DMBE (ethyl p-N,N-dimethylaminobenzoate [0140]), 0.75 pbm DPIB (4-methylphenyl-4’-isopropylphenyliodonium tetrakis(pentafluoro)borate [0141]), and 202 pbm F1 (silica-zirconia [0146]) {corresponding to 0.3 parts CQ; 0.75 parts DPIB, 1 part MDEOA+DMBE; 15 parts MF1 per 100 parts monomers (D-2.6E/3G/UDMA)} [0156-0157; Table 2, CR1]. Kajikawa et al. (US ‘195) discloses diaryliodonium salts (ex. diphenyl iodonium) having anions such as hexafluorophosphate, trifluoromethanesulfonate and tetrakis(pentafluorophenyl)borate [0075; 0141].
While aryl iodonium salts of an anion having an organic group and one or more atoms selected from the group consisting of P, B, Al, S and Ga {corresponding to instant (B2)} appear to provide unexpected results with respect to color stability deterioration suppression when compared to an aryl iodonium salt of an anion not having an organic group and one or more atoms selected from the group consisting of P, B, Al, S and Ga (i.e. Examples A31-A33 and B20-21), however, the examples employed in Tables 3-6 represent specific aryl iodonium salts of an anion having an organic group and one or more atoms selected from the group consisting of P, B, Al, S and Ga and are not commensurate in scope with the breadth of photoacid generators of instant (B2) included in claim 1. It is unclear if nonafluorobutane sulfonate, tris(pentafluoropropyl)trifluorophosphate, tris(pentafluoroethyl)trifluorophosphate, tetrakis(pentafluorophenyl)borate, tetra(nonafluoro-tert-butoxy)aluminate, tetra(pentafluorophenyl)gallate, and/or p-toluenesulfonate anions affords the unexpected result, or if any anion having an organic group and one or more atoms selected from the group consisting of P, B, Al, S and Ga yield similar results.
As the data obtained from Tables 3-6 was obtained from compositions of narrower scope than the broad genus of claim 1, it is not possible for the examiner to conclude the data from Tables 3-6 represent unexpected results over the prior art of record [see also MPEP 716.01(c), 716.02(d), 2145; In re Lindner, 457 F.2d 506, 509, 173 USPQ 356, 359 (CCPA 1972); In re Lindner, 457 F.2d 506, 508, 173 USPQ 356, 358 (CCPA 1972)].
Additionally, to establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range. In re Hill, 284 F.2d 955, 128 USPQ 197 (CCPA 1960) [see MPEP 716.02(d)]. See also In re Lindner, 457 F.2d 506, 509, 173 USPQ 356, 359 (CCPA 1972).
Whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the “objective evidence of non-obviousness must be commensurate in scope with the claims which the evidence is offered to support.” In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980) [See MPEP 716.02(d)].
Nakatuka et al. (US 6,620,861) was relied on for disclosing dental compositions [abstract] comprising fluoroaluminosilicate glass powder [31:60-32:39; 89:6-22] treated with a low condensed product of silane compound MS51SG1 (tetramethoxysilane partial hydrolysis condensate; 2-6) with subsequent heat treating at 150 oC for 6 h [89:23-91:4]. The resulting filler is further treated with γ-methacryloyloxypropyltrimethoxysilane [91:32-92:5].
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
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL F PEPITONE whose telephone number is (571)270-3299. The examiner can normally be reached on 7:00 AM - 3:30 PM.
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/MICHAEL F PEPITONE/Primary Examiner, Art Unit 1767