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 Status
Applicants’ amendments and arguments filed 10/15/2025 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 Rejections and/or objections not reiterated from previous office actions are hereby withdrawn.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.
Claim 1 is amended.
Claim 11 is withdrawn
Claims 1-10 and 12-14 are examined on the merits.
Priority
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.
Claim Interpretation
In regards to claim 9, specifically to the limitation of ‘wherein a cured product of the curable composition has a flexural modulus of 8 GPa or less” it is noted that the instant claims are composition claims and future intended use, such as use as a cured product, is not given patentable weight. Thus any prior art teaching the composition of claim 1 will meet this limitation.
In regards to limitations of claims 2 and 10, applicant is reminded this is a composition/product claim and the prior art teaches a dental curable composition of a polymerizable monomer comprised of 2,2-bis(4-methacryloyloxypolyethoxyphenyl)propane, wherein an average number of moles of ethyleneoxy group added is 2.6 and polybutylene glycol dimethacrylate, wherein an average number of moles of butylene glycol group added is 9, a polymerization initiator, and filler. Since a product is not separable from its physical properties then it necessarily teaches the polymerizable monomer has a viscosity at 30oC of 10 to 2,500 cP and the polymerization shrinkage stress of 12MPa or less. Further, the prior art teaches a composition described by applicants instant application, but applicants observation that it also has ‘has a viscosity at 30oC of 10 to 2,500 cP’ and ‘has a polymerization shrinkage stress of 12MPa or less’ does not give it patentable weight, since it is the same composition, as adding a characterization to a prior art patented invention is not patentable.
New Rejections Necessitated by Amendments
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.
Claim(s) 1-7, 9-10, and 12-14 are rejected under 35 U.S.C. 103 as being unpatentable over Nakabayashi et al. (Nakabayashi, N., Watanabe, A., & Gendusa, N. J. (1992). Dentin adhesion of “modified” 4-meta/MMA-TBB resin: Function of Hema. Dental Materials, 8(4), 259–264. https://doi.org/10.1016/0109-5641(92)90096-u, hereafter Nakabayashi) in view of Fukushima et al. (US5247038A, published 09/21/1993, hereafter Fukushima), Nakayama et al. (US2016012881A2, published 05/12/2016, hereafter Nakayama), and, Soetojo et al. (Soetojo, Adioro1,; Purnama, Dewi2; Lunardhi, Cecilia G. J.1; Widjiastuti, Ira1. Cytotoxicity Test of 4-Methacryloxyethyl Trimellitic Anhydride–Based Dentine Bonding Material Using Acetone Solution in Dental Pulp Fibroblast. Journal of International Oral Health 11(4):p 191-196, Jul–Aug 2019. | DOI: 10.4103/jioh.jioh_32_19, Soetojo).
Nakabayashi teaches a dentin adhesion of “modified” 4-META/MMA-TBB resin that can be used as an auto-cured acrylic resin, a photo-cured composite and an amalgam (title and abstract; according to the claim limitations of the instant claim 1). Nakabayashi teaches the base-liquid component of the Amalgambond adhesive resin was a mixture of 4-methacryloxyethyl trimellitate anhydride (4-META), 2,2-bis(4-methacryloyloxypolyethoxyphenyl)propane (2.6E), and 2-hydroxyethyl methacrylate (HEMA) in methyl methacrylate strength tests of acrylic resin, composite and amalgam bonded (MMA) (page 260, paragraph 2; according to the claim limitations of the instant claims 1, 7, 13-15). Furthermore, Nakabayashi teaches the composition to further comprise an initiator (page 260, paragraph 2; according to the claim limitations of the instant claim 1). Nakabayashi teaches examples of the resins to have glass filler particles (page 261, fig. 1 and 3 description; according to the claim limitations of the instant claim 1).
Nakabayashi fails to teach the concentration of 2,2-bis(4-methacryloyloxypolyethoxyphenyl)propane (2.6E) as in instant claim 3. Furthermore, Nakabayashi fails to teach the concentration and addition of polybutylene glycol dimethacrylate, wherein an average number of moles of butylene glycol group added is 9 as in instant claim 1. Nakabayashi teaches the addition of 4-META in the resin which has a carboxylic acid group, thus Nakabayashi fails to teach the composition does not comprise a polymerizable monomer which comprises acid group as in instant claim 1.
Fukushima claims a polybutylene glycol methacrylate and resin composition which comprises (a) 10-90 parts by weight of at least one compound selected from the group of epoxypoly-(meth)acrylate having two or more (meth)acryloyloxy groups in one molecule and urethane poly(meth)-acrylate having two or more (meth)acryloyloxy groups in one molecule, said urethane poly(meth)-acrylate having been obtained by the reaction of a hydroxy group-containing (meth)acrylate with isophorone diisocyanate, trimer of hexamethylene diisocyanate, 2,2,4-trimethylhexamethylene diisocyanate, dicyclohexylmethane diisocyanate, 1,3-bis(α,α-dimethylisocyanatemethyl)benzene, xylylene diisocyanate, tetramethylene diisocyanate, dimer acid diisocyanate, cyclohexane diisocyanate, tolylene diisocyanate, diphenylmethane diisocyanate, m-phenylene diisocyanate, naphthalene diisocyanate or biphenyl diisocyanate; (b) 10-90 parts by weight of polybutylene glycol di(meth)acrylate represented by the general formula below:
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65
256
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where R represents hydrogen or methyl and n is an integer of 5 to 16, with the total amount of components (a) and (b) being 100 parts by weight (title and claim 1; according to the claim limitations of the instant claims 1-7 and 12-14). Fukushima further teaches composition to includes 2,2'-bis(4-(meth)acryloxyphenyl)-propane, 2,2'-bis(4-(meth)acryloxyethoxyphenyl)-propane, 2,2'-bis(4-(meth)acryloxydiethoxyphenyl)-propane, 2,2'-bis(4-(meth)acryloxypentaethoxyphenyl)-propane, 2,2'-bis(4-(meth)acryloxyethoxy-3,5-dibromophenyl)-propane, 2,2'-bis(4-(meth)acryloxydiethoxy-3,5-dibromophenyl)propane, 2,2'-bis(4-(meth)acryloxypentaethoxy-3,5-dibromophenyl)-propane, 2,2'-bis(4-(meth)acryloxyethoxy3,5-dimethylphenyl)-propane, 2,2'-bis(4-(meth)acryloxyethoxy-3-phenylphenyl)-propane, and the compounds to be used in combination with one another (column 4, lines 5-47; according to the claim limitations of the instant claims 1-7). Fukushima teaches the resin composition for cast polymerization may be used in various fields after curing in a proper way selected for the individual usage (column 5, lines 1-4; according to the claim limitations of the instant claim 1).
Nakayama teaches a method for manufacturing a dental resin block (title; according to the claim limitations of the instant claim 1). Nakayama specifically states methacrylate compounds or acrylate compounds, which are often used for a dental material conventionally, can be used ([0016]; according to the claim limitations of the instant claim 1). Furthermore, Nakayama teaches a methacrylate compound or an acrylate compound, exemplified can be: butyleneglycoldimethacrylate, 2,2-bis(4-methacryloxypolyethoxyphenyl)propane, or mixtures thereof ([0016]; according to the claim limitations of the instant claim 1).
Soetojo teaches that 4-methacryloxyethyl trimellitic anhydride (4-META) monomers can induce cell death of surrounding tissues by producing free radicals (page 195, paragraph 2; according to the claim limitations of the instant claim 1). Soetojo teaches that dental compositions of 4-META is capable of causing 50% human pulp fibroblast cell death (abstract; according to the claim limitation of the instant claim 1).
It would be obvious to one skilled in the art before the effective filing date of the claimed invention to claim a dental curable composition comprising of 2,2-bis(4-methacryloyloxypolyethoxyphenyl)propane (2.6E) in combination with other monomers, a filler, and a polymerization initiator as outlined by Nakabayashi with the ready for improvement with the known technique of utilizing polybutylene glycol dimethacrylate, wherein an average number of moles of butylene glycol group added is 5 to 16 as a curable monomer and utilizing two monomers together, in which one is polybutylene glycol dimethacrylate, at concentrations of each monomer to be 10-90 parts by weight of each as outlined by Fukushima. Adjusting and adding the forementioned components of a dental curable composition as claimed by instant claims 1-7, 9-10, and 12-14 would yield predictable results thus making them of obviousness as modification of a known product with a known technique is within the purview of the skilled artisan. Furthermore, it would be obvious to one skilled in the art before the effective filing date of the claimed invention would claim a dental curable composition comprising of a filler, a polymerization initiator, 2,2-bis(4-methacryloyloxypolyethoxyphenyl)propane (2.6E) with the addition of polybutylene glycol dimethacrylate, wherein an average number of moles of butylene glycol group added is 5 to 16 as a curable monomer as outlined by Nakabayashi and Fukushima with the ready for improvement with the known technique of utilizing the combination of both butyleneglycoldimethacrylate and 2,2-bis(4-methacryloxypolyethoxyphenyl)propane together in a dental curable resin outlined by Nakayama. Combining the forementioned components to create a dental curable composition as claimed by instant claim 1 would yield predictable results thus making them of obviousness as modification of a known product with a known technique is within the purview of the skilled artisan. Lastly, it would be obvious to one skilled in the art before the effective filing date of the claimed invention would modify a dental curable composition comprising of 2,2-bis(4-methacryloyloxypolyethoxyphenyl)propane (2.6E) in combination with other monomers, a filler, and a polymerization initiator as outlined by Nakabayashi by the removal of 4-META as outlined by Soetojo under TSM, see MPEP 2143(G). As outlined by Soetojo, 4-META is known to cause cell-death, specifically cell death of pulp fibroblasts, which would motivate someone skilled in the art to advantageously remove 4-META from the composition of Nakabayashi as it would have a reasonable expectation of success.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Nakabayashi et al. (Nakabayashi, N., Watanabe, A., & Gendusa, N. J. (1992). Dentin adhesion of “modified” 4-meta/MMA-TBB resin: Function of Hema. Dental Materials, 8(4), 259–264. https://doi.org/10.1016/0109-5641(92)90096-u, hereafter Nakabayashi) in view of Fukushima et al. (US5247038A, published 09/21/1993, hereafter Fukushima), Nakayama et al. (US2016012881A2, published 05/12/2016, hereafter Nakayama), in view of Fusejima et al. (US7678843B2, published 03/16/2010, hereafter Fusejima), and in view of Soetojo et al. (Soetojo, Adioro1,; Purnama, Dewi2; Lunardhi, Cecilia G. J.1; Widjiastuti, Ira1. Cytotoxicity Test of 4-Methacryloxyethyl Trimellitic Anhydride–Based Dentine Bonding Material Using Acetone Solution in Dental Pulp Fibroblast. Journal of International Oral Health 11(4):p 191-196, Jul–Aug 2019. | DOI: 10.4103/jioh.jioh_32_19, Soetojo).
As outlined above, Nakabayashi, Fukushima, Nakayama, and Soetojo teach a dental curable composition comprising a polymerizable monomer comprising 2,2-bis(4- methacryloyloxypolyethoxyphenyl)propane, wherein an average number of moles of ethyleneoxy group added is 2.6 and polybutylene glycol dimethacrylate, wherein an average number of moles of butylene glycol group added is 9, a polymerization initiator, and a filler. Both Nakabayashi and Fukushima fail to teach the filler to have an average particle diameter of 0.01-50 µm as in instant claim 8.
Fusejima claims a dental restorative material composition comprising a (meth)acrylate monomer, and an organic-inorganic composite filler having an average particle diameter of 5 to 50 µm, photopolymerization initiator, and a glass powder having a maximum particle diameter of 0.03-3 µm (claim 1).
It would be obvious to one skilled in the art before the effective filing date of the claimed invention to claim a dental curable composition comprising a polymerizable monomer comprising 2,2-bis(4- methacryloyloxypolyethoxyphenyl)propane, wherein an average number of moles of ethyleneoxy group added is 2.6 and polybutylene glycol dimethacrylate, wherein an average number of moles of butylene glycol group added is 9, a polymerization initiator, and a filler as outlined by Nakabayashi in view of Fukushima with the ready for improvement with the known technique of selecting a filler with a particle size of 5-50 µm as outlined by Fusejima. Selecting the forementioned sized components in a dental curable composition comprising a polymerizable monomer comprising 2,2-bis(4- methacryloyloxypolyethoxyphenyl)propane, wherein an average number of moles of ethyleneoxy group added is 2.6 and polybutylene glycol dimethacrylate, wherein an average number of moles of butylene glycol group added is 9, a polymerization initiator, and a filler as claimed by instant claim 8 would yield predictable results thus making them of obviousness as modification of a known product with a known technique is within the purview of the skilled artisan.
Response to Applicant’s Arguments
Applicant’s arguments filed on 10/15/2025 have been considered by the Examiner.
In regards to Applicant’s argument against the 35 USC § 103 rejections of record, Applicant argues that the claims now recite “wherein the dental curable composition does not comprise a polymerizable monomer which comprises a carboxylic acid group” and that Nakabayashi teaches the addition of 4-META which contains a carboxylic acid group.
The previous rejections of record have been withdrawn due to claim amendments and new rejections are placed above.
In regards to the Non-Statutory Double Patenting rejection of record, Applicant argues the instant application has a priority date prior to the copending application 18728521 priority date.
The previous rejection of record has been withdrawn due to claim amendments.
Conclusion
No claims allowed.
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.
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/BETHANY P BARHAM/Supervisory Patent Examiner, Art Unit 1611
/A.N.I./ Examiner, Art Unit 1611