DETAILED ACTION
Summary
This is a non-final office action for application 17/756,535. The amendment dated 5 December 2025 in the RCE dated 18 December 2025 is acknowledged.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office 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 .
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 on 18 December 2025. 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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 5 December 2025 has been entered.
Claim Rejections - 35 USC § 112
Claims 44-45 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 upper bound in Claim 44 is recited as “above 0.5% by weight”. That is indefinite because it is not clear whether the upper bound is to be applied since amounts above 0.5% are unbounded. If this is a typographical error the intent is to recite “about” instead of “above”, then please amend so that it recites “about 0.5% by weight”.
Claim 44 recites that the dental material further comprises “a photoinitiator”. Claim 44 depends upon Claim 1. Claim 1 already recites “a photoinitiator”. It is not clear whether the same photoinitiator recited in Claim 1 can also satisfy Claim 44 or if two different photoinitiators are required. If the intent is to add a limitation on the amount of the Claim 1 photoinitiator, please remove the word ‘further’ and recite “the photoinitiator”.
Claim 45 recites that the dental material further comprises “a co-initiator”. Claim 44 depends upon Claim 1. Claim 1 already recites “a co-initiator”. It is not clear whether the same co-initiator recited in Claim 1 can also satisfy Claim 45 or if two different co-initiators are required. If the intent is to add a limitation on the amount of the Claim 1 co-initiator, please remove the word ‘further’ and recite “the co-initiator”.
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.
Claim 48 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 48 recites that the dental material comprises “about 5% water”. Claim 48 depends upon, and therefore includes, Claim 1. Claim 1 recites that the dental material comprises less than about 5% water. These two limitations contradict each other. Although the specification discloses that “about” means that the described value is within ±10% of the recited value and if you assume that the uncertainty of the two recitations is independent, this would only provide an overlap in the scopes of the two claims. Parts of the scope of Claim 48 are above the scope of Claim 1, so Claim 48 does not contain all of the limitations of Claim 1 from which it depends.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 103
Claims 1, 3, 9, 12, 16-18, 21, 23, 27, 29, 32, 44-46 and 48 are rejected under 35 U.S.C. 103 as being unpatentable over MARSHALL (US-20090197221-A1) in view of RUSIN (US-20090317772-A1) as evidenced by DENG (Int. J. Oral Sci, 5, 103-110 (2013)).
The RUSIN reference is in the IDS dated 1 September 2022.
Regarding Claim 1, MARSHALL teaches a dental bonding composition for bonding a dental resin composite to dentin ([0028]) containing a bioactive glass, a non-aqueous solvent and acidic monomers ([0030]).
MARSHALL teaches the bioactive glass Bioglass 45S5 which is composed of SiO2, NaO, CaO and P2O5 ([0045]) which satisfies the requirement of a calcium sodium phosphosilicate that is substantially fluoride free. Bioglass 45S5 is also the same bioactive glass used in the current invention (cur spec: [0106]). Here, the specification of the current invention is used as evidence to show that the Bioglass 45S5 taught by MARSHALL is a source of slow-releasing biologically active calcium and phosphate ions (cur spec: [0117]) which satisfies the claim.
MARSHALL teaches that the bioactive glasses of its invention promote the formation of apatite in aqueous environments ([0035]) facilitating a self-sealing mechanism in the bonded interface ([0035]). This is consistent with the recited requirement of the formation of apatite in the layer between the dental material and a tooth structure. MARSHALL teaches that the formulation of carbonated hydroxyapatite creates a bond between the bioactive glass and the dentin ([0038]). MARSHALL does not specifically teach a time scale for this hydroxyapatite formation, but MARSHALL teaches an example containing the bioactive glass 45S5 which exhibits an increase in shear bonding strength compared with the negative control when left overnight (Table 2). Because MARSHALL teaches that bioactive glass promotes apatite formation, and that apatite formation leads to increased bonding strength, then the increased bonding strength taught by MARSHALL in exemplary compositions left overnight is evidence that apatite formation has occurred during the exemplary overnight time period. This time period is within the period of about three days that is recited by the claim.
MARSHALL does not teach that Bioglass 45S5 provides an anticaries effect. Here, DENG is used as an evidentiary reference to disclose the inherent anticaries property of the Bioglass 45S5 taught by MARSHALL. DENG teaches that 45S5 bioglass (BG)(Abstract) has been shown capable of inhibiting and reversing initial caries progression in enamel (p. 104, Col 1, par. 1). This satisfies the requirement of an anticaries effect from the calcium sodium phosphosilicate.
MARSHALL teaches a non-aqueous solvent ([0029]) and teaches that the water content of the solvent is selected so that the reaction of the bioactive glass with water in the solvent is insignificant and may be so low as to avoid such a reaction ([0034]). MARSHALL teaches that its non-aqueous solvent preferably contains less than 5% water by volume, less than 1% water by volume and may contain no detectable water ([0019]).
MARSHALL teaches several specific acidic monomers ([0071]) as well several polymerizable monomers which typically form the basis of its dental resins ([0017]), but MARSHALL does not teach amount of its polymerizable components in its dental bonding composition. RUSIN, in an invention of a dental composition including a calcium and phosphorus releasing class (Abstract). RUSIN that its calcium and phosphorus-releasing glass is present in some embodiments of at least 20wt% and at most 90wt% ([0042]). RUSIN further teaches that its compositions contain a broad range of 1-80wt% of ethylenically unsaturated compounds (i.e. polymerizable) with acid functionality ([0052]) and 5-95wt% of ethylenically unsaturated (i.e. polymerizable) compounds without acid functionality ([0056]) relative to the weight of the unfilled composition. The 20-90% glass taught above corresponds to 10-80% of an unfilled composition. The total of the two types of polymerizable compounds is 6 to 95wt%. This calculates to a broad range of (0.06)(10) to (0.95)(80) or 0.6-76 wt% which encompasses the 50-60 wt% which is recited by the claim. In Example 7 ([0139]), RUSIN teaches a composition which contains 55% of a non-aqueous resin which contains 5 parts of resin D (which has 27.625+66.06=93.685wt% monomers (Table 1)) and 1 part HEMA monomer. This calculates to 5(93.685)/6 ≈ 94.738wt% monomer in the resin. Applying this to the 55% amount for the resin in the composition calculates to 0.94738*55 ≈ 52.11wt% of monomers in the composition which is within the recited range of 50-60 wt%. RUSIN teaches that its composition of polymerizable monomers and calcium and phosphorus releasing glass creates a hardenable composition ([0053]) which is suitable for a 1-part or 2-part light-curable paste system ([0139]). It would be obvious to one of ordinary skill in the art at the time of the effective filing date of the current invention to modify the invention of MARSHALL with the teachings of RUSIN and use an amount of polymerizable compounds that is within the range taught and exemplified by RUSIN that is also within the range recited by the claim for the purpose of creating a hardenable dental composition which is suitable as a 1-compound or two component paste.
MARSHALL teaches that in some cases, its composition contains photo-initiators to allow the adhesive to be cured by exposing the adhesive to light ([0077]) but does not specifically teach an initiator system containing a photo-initiator and a co-initiator. RUSIN teaches that suitable photoinitiators include binary and tertiary systems ([0061]) which may also contain an electron donor compound ([0061]). RUSIN teaches many initiators and prefers camphorquinone ([0061]). RUSIN teaches that its electron donor compounds include substituted amines such as ethyl dimethylaminobenzoate ([0061]) which is the same co-initiator used in the current application (cur. spec: [0081]). RUSIN exemplifies in the same Example 7 above ([0139]), a composition containing “resin D” which contains camphorquinone (CPQ) and ethyl dimethylaminobenzoate (EDMAB) (Table 1). It would be obvious to one of ordinary skill in the art at the time of the effective filing date of the current invention to further modify the invention of MARSHALL with the teachings of RUSIN and use a multiple-component system as its photoinitiator for the purpose of polymerizing the resin.
Regarding Claim 3, modified MARSHALL teaches the invention of Claim 1. MARSHALL teaches embodiments where the dental bonding composition may be provided in a single container ([0094]). MARSHALL teaches use of its composition as a dental bonding composition ([0057]) which satisfies the requirement of an adhesive.
Regarding Claim 9, modified MARSHALL teaches the invention of Claim 1. MARSHALL teaches that its bioactive glasses promote apatite formation, such as hydroxyapatite, in aqueous environments that contain calcium and phosphate ([0035],[0038]]), but MARSHALL does not specifically teach that its calcium sodium phosphosilicate further comprises a secondary source of biologically active ions. RUSIN teaches that its composition may contain remineralizing agents such as calcium phosphate compounds ([0110]). RUSIN exemplifies forming an additional glass filler component from monocalcium phosphate (MCPA) and dicalcium phosphate (DCPA) (Table p. 11; [0126]-[0131]). RUSIN does not exemplify these additives in a composition which has an amount of polymerizable compounds within the range recited by Claim 1 but it would be obvious to one of ordinary skill in the art to modify further modify the invention of MARSHALL with the teachings of RUSIN and include additional glass filler components which include monocalcium phosphate and dicalcium phosphate for the purpose of providing remineralization.
Regarding Claim 12, modified MARSHALL teaches the invention of Claim 1. MARSHALL teaches that its bioactive glasses promote apatite formation, such as hydroxyapatite, in aqueous environments that contain calcium and phosphate ([0035],[0038]]), but MARSHALL does not specifically teach that its calcium sodium phosphosilicate further comprises a secondary source of biologically active ions. RUSIN teaches that its composition may contain an additional source of calcium and phosphorus ([0110]) and remineralizing agents such as calcium phosphate compounds ([0110]). RUSIN exemplifies forming an additional glass filler component from monocalcium phosphate (MCPA) and dicalcium phosphate (DCPA) (Table p. 11; [0126]-[0131]) and teaches that these additional glass fillers are also source of calcium and phosphorus ions (Table 4). RUSIN does not exemplify these additives in a composition which has an amount of polymerizable compounds within the recited range but it would be obvious to one of ordinary skill in the art to modify further modify the invention of MARSHALL with the teachings of RUSIN and include an additional source of ions for the purpose of providing remineralization.
Regarding Claim 16, modified MARSHALL teaches the invention of Claim 1. MARSHALL teaches an example using an fluoride-free glass (45S5) over 8 days which is repeated 6 times obtaining an average of 40.8 MPa with a standard deviation of 9.0 MPa. Because the mean and standard deviation add up to 49.9 MPa, this strongly suggests that at least one of the 6 tests has a shear bond strength above the recited value of 45 MPa. Also, note that Example 7 taught by RUSIN ([0139]) satisfies all of the compositional limitations of the claim, including the narrowly recited amount of polymerizable monomer (see Claim 1 rejection) as well as the amounts of initiator and co-initiator (see Claim 44 and 45 rejections). Here, the primary reference MARSHALL is relied upon mainly for descriptive effects pertaining to apatite layer formation which are consistent with the intended purposes of the RUSIN. One would expect that the Example 7 composition taught by RUSIN would be within the scope of the instant invention and would inherently produce a shear bond strength of at least 45 MPa when bonded to dentin as is recited by the claim.
Regarding Claims 17, modified MARSHALL teaches the invention of Claim 1. MARSHALL testing the bond shear strength of its composition bound to teeth ([0129]) and obtains results of between 31.2-40.8 MPa for its compositions using the fluoride-free 45S5 glass (Table 2) which satisfies the requirement that the adhesive bond strength is at least 40 MPa.
Regarding Claim 18, modified MARSHALL teaches the invention of Claim 1. MARSHALL teaches the inclusion of bioactive glass Bioglass 45S5 ([0045]) which the specification teaches is a source of slow-releasing biologically active calcium and phosphate ions (cur spec: [0117]). MARSHALL does not measure the amount of calcium released by its composition. RUSIN teaches similar exemplary compositions which includes calcium-releasing glasses (Table after [0123])) teaches that its compositions release calcium and phosphorus ions ([0147], Table 3). RUSIN teaches amounts in units of micrograms-ion/gram per day (Table 3) which is the equivalent of ppm grams per day. RUSIN tests for a number of days including 7 days (Table 3) and for the examples with data, RUSIN teaches 246.1 *(7 days) ≈ 1722.7 ppm calcium ions and 62.79*(7 days) ≈ 439.5 ppm phosphorus ions (Table 3) which are both well over the recited amounts of 2 ppm and 100 ppm recited by the claim.
Regarding Claim 21, MARSHALL teaches a dental bonding composition for bonding a dental resin composite to dentin ([0028]) containing a bioactive glass, a non-aqueous solvent and acidic monomers ([0030]). MARSHALL teaches several specific acidic monomers ([0071]) as well several polymerizable monomers which typically form the basis of its dental resins ([0017]).
MARSHALL teaches that the bioactive glasses of its invention promote the formation of apatite in aqueous environments ([0035]) facilitating a self-sealing mechanism in the bonded interface ([0035]). This is consistent with the recited requirement of the formation of apatite in the layer between the dental material and a tooth structure. MARSHALL teaches that the formulation of carbonated hydroxyapatite creates a bond between the bioactive glass and the dentin ([0038]). MARSHALL does not specifically teach a time scale for this hydroxyapatite formation, but MARSHALL teaches an example containing the bioactive glass 45S5 which exhibits an increase in shear bonding strength compared with the negative control when left overnight (Table 2). Because MARSHALL teaches that bioactive glass promotes apatite formation, and that apatite formation leads to increased bonding strength, then the increased bonding strength taught by MARSHALL in exemplary compositions left overnight is evidence that apatite formation has occurred during the exemplary overnight time period. This time period is within the period of about three days that is recited by the claim.
MARSHALL teaches the bioactive glass Bioglass 45S5 ([0045]) which is the same bioactive glass used in the current invention (cur spec: [0106]). Here, the specification of the current invention is used as evidence to show that the Bioglass 45S5 taught by MARSHALL is a source of slow-releasing biologically active calcium and phosphate ions (cur spec: [0117]) which satisfies the claim. MARSHALL teaches that Bioglass 45S5 is a bioactive glass composed of 49.5% SiO2 , 17.0% NaO, 26.9% CaO, and 6.6% P2O5 ([0045]). The presence of phosphate ions along with silicon, calcium and sodium oxides suggests that Bioglass 45S5 is a calcium sodium phosphosilicate. The absence of fluoride makes it substantially fluoride free. MARSHALL does not teach that Bioglass 45S5 provides an anticaries effect. Here, DENG is used as an evidentiary reference to disclose the inherent anticaries property of the Bioglass 45S5 taught by MARSHALL. DENG teaches that 45S5 bioglass (BG)(Abstract) has been shown capable of inhibiting and reversing initial caries progression in enamel (p. 104, Col 1, par. 1). This satisfies the requirement of an anticaries effect from the calcium sodium phosphosilicate.
MARSHALL teaches several specific acidic monomers ([0071]) as well several polymerizable monomers which typically form the basis of its dental resins ([0017]), but MARSHALL does not teach amount of its polymerizable components in its dental bonding composition. RUSIN, in an invention of a dental composition including a calcium and phosphorus releasing class (Abstract). RUSIN that its calcium and phosphorus-releasing glass is present in some embodiments of at least 20wt% and at most 90wt% ([0042]). RUSIN further teaches that its compositions contain a broad range of 1-80wt% of ethylenically unsaturated compounds (i.e. polymerizable) with acid functionality ([0052]) and 5-95wt% of ethylenically unsaturated (i.e. polymerizable) compounds without acid functionality ([0056]) relative to the weight of the unfilled composition. The 20-90% glass taught above corresponds to 10-80% of an unfilled composition. The total of the two types of polymerizable compounds is 6 to 95wt%. This calculates to a broad range of (0.06)(10) to (0.95)(80) or 0.6-76 wt% which encompasses the 50-60 wt% which is recited by the claim. In Example 7 ([0139]), RUSIN teaches a composition which contains 55% of a non-aqueous resin which contains 5 parts of resin D (which has 27.625+66.06=93.685wt% monomers (Table 1)) and 1 part HEMA monomer. This calculates to 5(93.685)/6 ≈ 94.738wt% monomer in the resin. Applying this to the 55% amount for the resin in the composition calculates to 0.94738*55 ≈ 52.11wt% of monomers in the composition which is within the recited range of 50-60 wt%. RUSIN teaches that its composition of polymerizable monomers and calcium and phosphorus releasing glass creates a hardenable composition ([0053]) which is suitable for a 1-part or 2-part light-curable paste system ([0139]). It would be obvious to one of ordinary skill in the art at the time of the effective filing date of the current invention to modify the invention of MARSHALL with the teachings of RUSIN and use an amount of polymerizable compounds that is within the range taught and exemplified by RUSIN that is also within the range recited by the claim for the purpose of creating a hardenable dental composition which is suitable as a 1-compound or two component paste.
MARSHALL teaches that in some cases, its composition contains photo-initiators to allow the adhesive to be cured by exposing the adhesive to light ([0077]) but does not specifically teach an initiator system containing a photo-initiator and a co-initiator. RUSIN teaches that suitable photoinitiators include binary and tertiary systems ([0061]) which may also contain an electron donor compound ([0061]). RUSIN teaches many initiators and prefers camphorquinone ([0061]). RUSIN teaches that its electron donor compounds include substituted amines such as ethyl dimethylaminobenzoate ([0061]) which is the same co-initiator used in the current application (cur. spec: [0081]). RUSIN exemplifies in the same Example 7 above ([0139]), a composition containing “resin D” which contains camphorquinone (CPQ) and ethyl dimethylaminobenzoate (EDMAB) (Table 1). It would be obvious to one of ordinary skill in the art at the time of the effective filing date of the current invention to further modify the invention of MARSHALL with the teachings of RUSIN and use a multiple-component system as its photoinitiator for the purpose of polymerizing the resin.
MARSHALL teaches that its bioactive glasses promote apatite formation, such as hydroxyapatite, in aqueous environments that contain calcium and phosphate ([0035],[0038]]), but MARSHALL does not specifically teach that its calcium sodium phosphosilicate further comprises a secondary source of biologically active ions. RUSIN teaches that its composition may contain an additional source of fluoride ions ([0109]), an additional source of calcium and phosphorus ([0110]) and remineralizing agents such as calcium phosphate compounds ([0110]). RUSIN exemplifies forming an additional glass filler component from monocalcium phosphate (MCPA) and dicalcium phosphate (DCPA) (Table p. 11; [0126]-[0131]) and teaches that these fillers are a source of calcium and phosphorus ions (Table 4). RUSIN does not exemplify these additives in a composition which has an amount of polymerizable compounds within the recited range but it would be obvious to one of ordinary skill in the art to modify further modify the invention of MARSHALL with the teachings of RUSIN and include an additional source of ions for the purpose of providing remineralization.
Regarding Claim 23, modified MARSHALL teaches the invention of Claim 21. MARSHALL teaches embodiments where the dental bonding composition may be provided in a single container ([0094]). MARSHALL teaches use of its composition as a dental bonding composition ([0057]) which satisfies the requirement of an adhesive.
Regarding Claim 27, modified MARSHALL teaches the invention of Claim 21 where RUSIN teaches additional source of calcium and phosphorus ([0110]) and remineralizing agents such as calcium phosphate compounds ([0110]). RUSIN exemplifies forming an additional glass filler component from monocalcium phosphate and dicalcium phosphate (Table p. 11; [0126]-[0131]) and teaches that these fillers are a source of calcium and phosphorus ions (Table 4).
Regarding Claim 29, modified MARSHALL teaches the invention of Claim 21. MARSHALL teaches a non-aqueous solvent ([0029]) and teaches that the water content of the solvent is selected so that the reaction of the bioactive glass with water in the solvent is insignificant and may be so low as to avoid such a reaction ([0034]). MARSHALL teaches that its solvent may be acetone ([0049], [0065]) or ethanol ([0063]).
Regarding Claim 32, modified MARSHALL teaches the invention of Claim 21. MARSHALL teaches a non-aqueous solvent ([0029]) and teaches that the water content of the solvent is selected so that the reaction of the bioactive glass with water in the solvent is insignificant and may be so low as to avoid such a reaction ([0034]). MARSHALL teaches that its non-aqueous solvent preferably contains less than 15% water by volume ([0019]). This overlaps the recited amount of about 5wt%. An amount of water that is about 5wt% is an obvious modification of the invention of MARSHALL. Also, note that RUSIN teaches an optional water solvents ([0109], [0111], Claim 11) and teaches resin compositions which contain amounts of water which are both above and below the recited amount (Table 1, A and B above, C and D below). Following the logic of Claim 47 below, it would be obvious to modify the invention of MARSHALL with the teachings of RUSIN and use amounts of glass filler and polymerizable monomer that are within the amount taught by RUSIN that also allow for a remaining amount of water solvent to be within the range recited by the claim. It is well settled that where the prior art describes the components of a claimed compound or compositions in concentrations within or overlapping the claimed concentrations a prima facie case of obviousness is established. See In re Harris, 409 F.3d 1339, 1343, 74 USPQ2d 1951, 1953 (Fed. Cir 2005); In re Peterson, 315 F.3d 1325, 1329, 65 USPQ 2d 1379, 1382 (Fed. Cir. 1997); In re Woodruff, 919 F.2d 1575, 1578 16 USPQ2d 1934, 1936-37 (CCPA 1990); In re Malagari, 499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974). For more discussion see MPEP 2144.05-I.
Regarding Claim 44, modified MARSHALL teaches the invention of Claim 1 where RUSIN teaches the photoinitiator ([0061]). Claim 44 is rejected under 35 USC 112(b) above for use of “above” in the range. Here, we interpret this as intending to recite “about”. RUSIN generally teaches several initiators ([0061]) with amounts of one specific type of phosphine oxide initiator is present in 0.1-5 wt% ([0064]) which overlaps the 0.05-0.5 wt% recited by the claim. RUSIN exemplifies a different photoinitiator camphoquinone (CPQ) in an amount of 0.315 wt% of resin D (Table 1) which is incorporated into the Example 7 cited in the rejection above in an amount of (5/6)*55%, or 45.8wt%. This calculates to an amount of camphorquinone (CPQ) of 0.55*(5/6)*0.315 ≈ 0.144 wt% which is within the recited range of 0.05-0.5 wt%.
Regarding Claim 45, modified MARSHALL teaches the invention of Claim 1 where RUSIN teaches the photoinitiator and electron donor co-initiator ([0061]). RUSIN teaches that a preferred electron donor is ethyl dimethylaminobenzoate ([0061]). RUSIN does not have a general teaching for the amount of this component. RUSIN exemplifies ethyl dimethylaminobenzoate (EDMAB) in an amount of 1.25 wt% of resin D (Table 1) which is incorporated into the Example 7 cited in the rejection above in an amount of (5/6)*55%, or 45.8wt%. This calculates to an amount of ethyl dimethylaminobenzoate (EDMAB) of 0.55*(5/6)*1.25 ≈ 0.573 wt% which is within the range of 0.1-2.4 wt% which is recited by the claim.
Regarding Claim 46, modified MARSHALL teaches the invention of Claim 1. MARSHALL teaches a solvent for the bioactive glass which in exemplary embodiments is ethanol ([0006], [0063], Claim 9). RUSIN teaches that its composition may contain an alcohol such as ethanol ([0109]). Neither MARSHALL nor RUSIN teach a general amount of solvent. RUSIN exemplifies ethanol ([0141]-[0143]) but not in amounts within the recited range. Generally, RUSIN teaches 0.6-76 wt% of polymerizable monomer (see Claim 1 rejection for calculation) and 20-90% glass filler ([0042]) for a total of 20.6% or more. For cases where the amount of polymerizable monomer is within the recited range, this total is 50.6 or more. This allows for the remaining amount of up to 49.4% to be solvent and other additives such as initiators and co-initiators. RUSIN teaches that he initiators and other additives are present in amounts of less than 10wt% (Table 1). This leaves as much as 39.4wt% available for the solvent. It would be obvious to further modify the invention of MARSHALL with the teachings of RUSIN and use amounts of glass filler and polymerizable monomer that are within the amount taught by RUSIN that also allow for a remaining amount of ethanol solvent to be within the range recited by the claim. It is well settled that where the prior art describes the components of a claimed compound or compositions in concentrations within or overlapping the claimed concentrations a prima facie case of obviousness is established. See In re Harris, 409 F.3d 1339, 1343, 74 USPQ2d 1951, 1953 (Fed. Cir 2005); In re Peterson, 315 F.3d 1325, 1329, 65 USPQ 2d 1379, 1382 (Fed. Cir. 1997); In re Woodruff, 919 F.2d 1575, 1578 16 USPQ2d 1934, 1936-37 (CCPA 1990); In re Malagari, 499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974). For more discussion see MPEP 2144.05-I.
Regarding Claim 48, modified MARSHALL teaches the invention of Claim 1. MARSHALL teaches a non-aqueous solvent ([0029]) and teaches that the water content of the solvent is selected so that the reaction of the bioactive glass with water in the solvent is insignificant and may be so low as to avoid such a reaction ([0034]). MARSHALL teaches that its non-aqueous solvent preferably contains less than 15% water by volume ([0019]). This overlaps the recited amount of about 5wt%. An amount of water that is about 5wt% is an obvious modification of the invention of MARSHALL. Also RUSIN teaches an optional water solvents ([0109], [0111], Claim 11) and teaches resin compositions which contain amounts of water which are both above and below the recited amount (Table 1, A and B above, C and D below). Following the logic of Claim 47, it would be obvious to modify the invention of MARSHALL with the teachings of RUSIN and use amounts of glass filler and polymerizable monomer that are within the amount taught by RUSIN that also allow for a remaining amount of water solvent to be within the range recited by the claim.
Claim 47 is/are rejected under 35 U.S.C. 103 as being unpatentable over MARSHALL (US-20090197221-A1) in view of RUSIN (US-20090317772-A1) as evidenced by DENG (Int. J. Oral Sci, 5, 103-110 (2013)) as applied to Claim 1 above, and further in view of HOLMES (EP-0533434-B1).
Regarding Claim 47, modified MARSHALL teaches the invention of Claim 1 above. MARSHALL discusses pigment leaching ([0130]) but does not specifically teach a pigment or an amount of a pigment. RUSIN teaches pigments ([0110]) and titania fillers ([0101]) but does not teach an amount. HOLMES, in an invention of materials used to pigment cold-polymerizable dental composites, restoratives or cements ([0001]), teaches titanium dioxide as a microfine titania filler ([0002]). HOLMES suggests that this pigment provides and aesthetic effect (Title, [0008]). HOLMES teaches that its microfine titania filler is present in dental cements in amounts of 0.05-2.5 wt% ([0021]) which encompasses the 0.4-0.8 wt% that is recited by the claim. HOLMES exemplifies 0.4wt% ([0032], Table 1) which is on the endpoint of the recited range. It would be obvious to one of ordinary skill in the art to further modify the invention of MARSHALL with the teachings of HOLMES and include an amount of titanium dioxide which is within the recited range for the purpose of pigmenting the dental composition and adding an aesthetic effect.
Response to Arguments
Applicant's arguments filed 5 December 2025 have been fully considered but they are not persuasive.
The new Claim 48 contradicts Claim 1. A rejection under 35 USC 112(d) has been added above.
The amendment to Claim 12 has resolved the issue where Claim 9 and Claim 12 were substantial duplicates of each other. The objection to this claim has been withdrawn.
Applicant’s arguments with respect to the claims have been considered but are moot because the new ground of rejection does not rely on any combination of references applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
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/D.R.F./Examiner, Art Unit 1764
/KREGG T BROOKS/ Primary Examiner, Art Unit 1764