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 .
Election/Restrictions
Applicant’s election without traverse of Group I in the reply filed on May 20th, 2025 is acknowledged.
Claims 7-12 have been withdrawn as being drawn to a non-elected invention. Claim 3 has been withdrawn as being drawn to a non-elected species.
Claim Objections
Claim 1 is objected to by the examiner for the recitation of “bisphenol A glyceride”, and suggests replacing said component with “bis-GMA” since this term is well-known in the art.
For the purpose of examination, the claim term will be interpreted as requiring bis-GMA since that abbreviation is used interchangeably with the compound name in the specification.
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.
Claim 3 is rejected under 35 U.S.C. § 112(b) for being indefinite.
Regarding claim 3, claim 3 recites the limitation "…the composite of the thermochromic dye consists of…" in line 11 (page 1) of the claims. There is insufficient antecedent basis for this limitation in the claim.
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 3 is rejected under 35 U.S.C. § 112(d) for failing to further limit the subject matter of the claim upon which it depends.
Regarding claim 3, claim 3 is rejected for attempting to further limit a species (thermochromic dye composite) which is no longer recited in claim 2.
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.
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.
Claims 1, 2 & 4 – 6 are rejected under 35 U.S.C § 103 as being obvious over Chen et al. (US 2010/0278998 A1), in view of Burgath et al. (US 2002/0152929 A1).
Regarding claims 1 & 6, Chen teaches a dental adhesive comprising at least one monofunctional polymerizable monomer and at least one multifunctional polymerizable monomer (Abstract). Suitable monofunctional monomers include hydroxyethyl methacrylate (HEMA), included in amounts of 5-30 wt.% (p. 2, [0019]).
Suitable multifunctional monomers include multifunctional urethane acrylates (i.e., acrylic polyurethane), triethylene glycol methacrylate, ethoxylated trimethylolpropane triacrylate and bis-GMA. Chen suggests combining multifunctional polymerizable monomers by disclosing “one or more”, further suggesting these monomers be present in amounts of 1-70 wt.% (p. 2, [0020]).
It would have been obvious to select and combine these monomers, as they are expressly suggested for use in this capacity and are recited in parallel as equivalents. See MPEP § 2144.06 and § 2144.07.
It would have been obvious to include the monomers in any amount such that the combined total falls within Chen’s suggested range (i.e. greater than 0 wt.% & less than 70 wt.%).
Further, Chen teaches photoinitiator(s) (p. 3, [0022]) suggesting they are used in amounts of 0.01-10 wt.%. Chen teaches dibutylhydroxytoluene & its benefits (p. 4, [0027]) suggesting BHT is used in amounts of 0.0001 – 5 wt.%. Also disclosed by Chen is silica as a filler (p. 3, [0025]).
Chen does not teach the elected thermochromic component.
In the same field of endeavor, Burgath teaches dental materials comprising a thermochromic dye (Abstract). Burgath teaches amounts of the thermochromic dye may be present in amounts of 0.01-2 wt.% (p. 2, [0025]). Burgath provides motivation to include a thermochromic dye by expressly disclosing benefits thereof (p. 2, [0026]).
It would have been obvious to one of ordinary skill in the art at the time of filing to modify the teachings of Chen in view of the disclosures from Burgath, as Burgath expressly states benefits of the composition at hand further comprising a thermochromic dye.
A prima facie case of obviousness exists where the claimed ranges overlap or lie inside the ranges disclosed by the prior art. See MPEP § 2144.05. It is prima facie obvious to substitute equivalents where the equivalence is recognized by the prior art. See MPEP § 2144.06. It is prima facie obvious to select a known material based on its suitability for its intended use. See MPEP § 2144.07.
Modification of Chen in view of Burgath as detailed above reads on all limitations established by the instant claims 1 & 6.
Regarding claim 2, maintaining the modification of Chen in view of Burgath previously detailed, Burgath teaches liquid crystal derivatives of cholesterol dyes suitable for use as the thermochromic component in the composition (p. 2, [0023]-[0024]) and provides several examples thereof. Burgath states mixtures of these dyes are also suitable for this purpose. It is prima facie obvious to select a known material based on its suitability for its intended use. See MPEP § 2144.07.
Mixtures of the thermochromic components taught by Burgath read on all the limitations established by the instant claim 2.
Regarding claims 4 & 5, maintaining the modification of Chen in view of Burgath previously detailed, Chen discloses the photoinitiator may be camphorquinone (CQ), further disclosing the benefits of using camphorquinone in tandem with a co-initiator (p. 3, [0022]). Suitable co-initiators include 2-ethylhexyl-4-(N,N-dimethylamino) benzoate.
It is prima facie obvious to substitute equivalents where the equivalence is recognized by the prior art. See MPEP § 2144.06. It is prima facie obvious to select a known material based on its suitability for its intended use. See MPEP § 2144.07.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTIAAN ROELOFSE whose telephone number is (571)272-2825. The examiner can normally be reached Monday-Friday 8:00-4:00 EST.
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/CHRISTIAAN ROELOFSE/ Examiner, Art Unit 1762
/ROBERT S JONES JR/ Supervisory Patent Examiner, Art Unit 1762