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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 6/10/26 has been entered.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1, 3, 9-10, 12, 15, 17-19, and 21 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Wachter et al. (US 2015/0111176), when taken with Nguyen, J.-F.; Pomes, B.; Sadoun, M.; Richad, E. Polymer Testing, 2019, 80, 106113, when taken with Jancar, J.; Wang, W.; Dibenedetto, A. T. J. Mater. Sci.: Mater. Med. 2000, 11, 675.
Regarding claims 1, 3, 9-10, and 12: Wachter et al. (US ‘176) discloses compositions for stereolithographic production of dental composites [abstract], wherein Example 1, Resin B [Ex. 1; Resin B; 0077-0080] contains UDMA (mol. wt. 470.56 g/mol; n = 2; Mw/n = 235.28; Tg homopolymer = 137.9 oC), Bis-GMA (mol. wt. 512.59 g/mol; n = 2; Mw/n = 256.3; Tg homopolymer = 230 oC), decane-1,10-dioldimethacrylate (mol. wt. 310.43 g/mol; n = 2; Mw/n = 155.22; Tg homopolymer = >60 oC [see instant specification 0030; 0032]), camphorquinone (photoinitiator [0026-0027]), and Lucerin TPO (photoinitiator [0024-0025]) [Ex. 1; Resin B; 0077-0080].
Nguyen et al. (Polymer Testing, 2019, 80, 106113) provides evidence for UDMA having a Tg for the homopolymer = 137.9 oC [Table 2].
Jancar et al. (J. Mater. Sci.: Mater. Med. 2000, 11, 675) provides evidence for Bis-GMA having a Tg for the homopolymer = 230 oC [Fig. 2].
Regarding claims 15, 19 and 21: Wachter et al. (US ‘176) discloses a dental cement is applied to cement the dental component to the tooth {corresponding to a kit}, and this layer is cured as well during the further curing step [0069-0070; 0073-0074]. Wachter et al. (US ‘176) discloses Example 2 [0081] stereolithographically prints pieces from Resin B of Ex. 1, adheres the pieces with SR Link and Variolink 2 fixing composite, cures the fixing composite and post-cures the stereolithographically printed pieces with 460 nm light [Ex. 2; 0081]. Wachter et al. (US ‘176) discloses unreacted polymerizable groups on the surface of the 3D body, which are subsequently cured/reacted with the dental cement [0073-0074].
Regarding claims 17-18: Wachter et al. (US ‘176) discloses the basic claimed composition [as set forth above with respect to claim 15]; wherein Wachter et al. (US ‘176) discloses good curing depth, and good mechanical and aesthetic properties [0013].
The claimed effects and physical properties, i.e. the difference between a transparency ΔLA of a cured product of the energy ray-curable coating material (A) for three-dimensional shaped articles and a transparency ΔLB of a cured product of the energy ray-curable composition (B) for three-dimensional shaping is 20 or less [instant claim 17]; the difference between a tensile elastic modulus of a cured product of the energy ray-curable coating material (A) for three-dimensional shaped articles and a tensile elastic modulus of a cured product of the energy ray-curable composition (B) for three-dimensional shaping is 200 MPa or less [instant claim 18], would inherently 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].
Claim(s) 16 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Wachter et al. (US 2015/0111176) as applied to claim 15 above, when taken with Variolink II SDS.
Regarding claim 16: Wachter et al. (US ‘176) discloses the basic claimed composition [as set forth above with respect to claim 15]; wherein Wachter et al. (US ‘176) discloses Variolink 2 contains Bis-GMA (Mw/n = 256.3), UDMA (Mw/n = 235.28) and initiator (dibenzoyl peroxide) [Ex. 2; 0081].
Variolink SDS provides evidence for Variolink containing Bis-GMA, UDMA [§3 (Base)] and dibenzoyl peroxide [§3 (Catalyst)].
Claim Rejections - 35 USC § 103
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) 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wachter et al. (US 2015/0111176) as applied to claim 9 above, when taken with Barker et al. (GB 2632734).
Regarding claim 11: Wachter et al. (US ‘176) discloses the basic claimed composition [as set forth above with respect to claim 9]; wherein Wachter et al. (US ‘176) discloses the composition can contain ethoxylated bisphenol-A-dimethacrylates (ex. SR-348c) [0036].
Wachter et al. (US ‘176) does not specifically disclose Ex. 1, Resin B containing an ethoxylated bisphenol-A-dimethacrylate. 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 included ethoxylated bisphenol-A-dimethacrylate (ex. SR-348c; mol. wt. 496 g/mol; n = 2; Mw/n = 248; having a Tg homopolymer = 116 oC) based on the invention of Wachter et al. (US ‘176), and would have been motivated to do so since Wachter et al. (US ‘176) discloses the composition can contain ethoxylated bisphenol-A-dimethacrylates (ex. SR-348c) [0036]. Additionally, “It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art.” In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) (citations omitted) [see MPEP 2144.06].
Barker et al. (GB 2632734) provides evidence for SR-348C (ethoxylated bisphenol A dimethacrylate; mol. wt. 496 g/mol; n = 2; Mw/n = 248) having a Tg homopolymer = 116 oC [pg. 7, ln. 18-20; pg. 46, ln. 13; Table 1, SR348C].
Claim(s) 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wachter et al. (US 2015/0111176) as applied to claim 1 above.
Regarding claim 14: Wachter et al. (US ‘176) discloses the basic claimed composition [as set forth above with respect to claim 1]; wherein Wachter et al. (US ‘176) discloses the composition can contain solvents [0042].
Wachter et al. (US ‘176) does not specifically disclose Ex. 1, Resin B containing a solvent. 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 included a solvent based on the invention of Wachter et al. (US ‘176), and would have been motivated to do so since Wachter et al. (US ‘176) discloses the composition can contain solvents [0042]. Additionally, “It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art.” In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) (citations omitted) [see MPEP 2144.06].
Claim(s) 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wachter et al. (US 2015/0111176) as applied to claim 19 above.
Regarding claim 20: Wachter et al. (US ‘176) discloses the basic claimed composition [as set forth above with respect to claim 19]; wherein Wachter et al. (US ‘176) discloses the resin is cured in layers [0058-0059].
Wachter et al. (US ‘176) does not specifically disclose the coating layer having a thickness of less than 250 µm. 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 a coating layer thickness of 250 µm or less in the product of Wachter et al. (US ‘176) since such a modification would have involved a change in the size of the component and a change of size is generally recognized as being within the level of ordinary skill in the art. In re Rose, 220 F.2d 459, 105 USPQ 237 (CCPA 1955) [see MPEP 2144.04]. See also, Gardner v. TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984), the Federal Circuit held that, where the only difference between the prior art and the claims was a recitation of relative dimen-sions of the claimed device and a device having the claimed relative dimensions would not perform differ-ently than the prior art device, the claimed device was not patentably distinct from the prior art device [see MPEP 2144.04].
“[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to dis-cover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955); see also Peterson, 315 F.3D at 1330, 65 USPQ2d at 1382; In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969). For more recent cases applying this principle, see Merck & Co. Inc. v. Biocraft Laboratories Inc., 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989); In re Kulling, 897 F.2d 1147, 14 USPQ2d 1056 (Fed. Cir. 1990); and In re Geisler, 116 F.3D 1465, 43 USPQ2d 1362 (Fed. Cir. 1997) [see MPEP 2144.05].
Claim(s) 22 and 26-27 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wachter et al. (US 2015/0111176) in view of Sun et al. (US 2018/0000570), taken with Variolink II SDS.
Regarding claims 22 and 26-27: Wachter et al. (US ‘176) discloses compositions for stereolithographic production of dental composites [abstract], wherein Example 1, Resin B [Ex. 1; Resin B; 0077-0080] contains UDMA (mol. wt. 470.56 g/mol; n = 2; Mw/n = 235.28), Bis-GMA (mol. wt. 512.59 g/mol; n = 2; Mw/n = 256.3), decane-1,10-dioldimethacrylate (mol. wt. 310.43 g/mol; n = 2; Mw/n = 155.22), camphorquinone (photoinitiator [0026-0027]), and Lucerin TPO (photoinitiator [0024-0025]) [Ex. 1; Resin B; 0077-0080]. Wachter et al. (US ‘176) discloses a dental cement is applied to cement the dental component {corresponding to a kit}, and this layer is cured as well during the further curing step [0069-0070; 0073-0074]. Wachter et al. (US ‘176) discloses Example 2 [0081] stereolithographically prints pieces from Resin B of Ex. 1, adheres the pieces with SR Link and Variolink 2 fixing composite, cures the fixing composite and post-cures the stereolithographically printed pieces with 460 nm light [Ex. 2; 0081]. Wachter et al. (US ‘176) discloses unreacted polymerizable groups on the surface of the 3D body, which are subsequently cured/reacted with the dental cement [0073-0074]. Wachter et al. (US ‘176) discloses stereolithographic production of 3D bodies and dental components [0075].
Wachter et al. (US ‘176) does not specifically disclose production of a denture base material or an orthodontic mouthpiece. However, Sun et al. (US ‘570) discloses compositions for stereolithographic production of objects, wherein the object can be a dental product [abstract], such as an orthodontic, an aligner [0002; 0015], and a denture base [0015]. Wachter et al. (US ‘176) and Sun et al. (US ‘570) are analogous art because they are concerned with a similar technical difficulty, namely stereolithographic production of dental objects. 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 stereolithographic production of an orthodontic, an aligner, and/or a denture base, as taught by Sun et al. (US ‘570) in the invention of Wachter et al. (US ‘176), and would have been motivated to do so since Sun et al. (US ‘570) discloses stereolithographic production of dental products, an orthodontic, an aligner, and/or a denture base [abstract; 0002; 0015].
Variolink SDS provides evidence for Variolink containing Bis-GMA, UDMA [§3 (Base)] and dibenzoyl peroxide [§3 (Catalyst)].
Allowable Subject Matter
Claims 5-8 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.
The following is a statement of reasons for the indication of allowable subject matter: While Arita et al. (US 2016/0326387) discloses active energy ray curable compositions for three-dimensional printing [abstract; 0003], Arita et al. (‘387) does not disclose a composition containing a monofunctional (meth)acrylic compound having a polymer Tg of 60 oC or more and having a side chain having at most two carbon atoms and/or a monofunctional aromatic (meth)acrylic compound having a polymer Tg of 60 oC or less other than benzyl methacrylate.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1, 3, 5-12, 14-22, and 26-27 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
See attached form PTO-892.
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
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