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 § 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) 7-9 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Oxman et al. (US Patent No. 7537452).
Regarding claims 7-9; Oxman et al. teaches, in a preferred embodiment, a composition suitable for use in dental resins [col3, line43-47], comprising 185.7g CYGEPSI Resin (silorane epoxy material, 50/50 mixture of difunctional epoxide and tetrafunctional epoxide; 100 mass% of cationically polymerizable material (a)), 1.0g CPQ (camphorquinone, alpha-diketone photosensitizer), 5.97g RHODORSIL 2074 (iodonium tetrakis(pentafluorophenyl)borate-type photoacid generator; instant b1, 3.21 parts by mass to 100 parts of (a), as calculated by Examiner), 0.08g Pyridinium tosylate (pyridinium para-toluenesulfonate (instant b2, 0.04 parts by mass to 100 parts (a), as calculated by Examiner), and 70% filler A (silane-treated quartz filler, 75 parts by mass to 100 parts (a)) [Ex, col19, line45-55; col22, line53-56].
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 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hamazu et al. (US Patent No. 5359017), as applied to claim 1 above.
Regarding claims 1-3 and 5; Hamazu et al. teaches, in a preferred embodiment, a phenyl glycidyl ether compound (cationically polymerizable epoxy monomer), 3 parts by weight cationic polymerization catalyst (first photoacid generator), and 0.15 parts stabilizer (second photoacid generator) [Table1, Ex3].
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Although Hamazu et al. teaches the anion portion of the stabilizer is methyl sulfate (alkyl sulfate) in the preferred embodiment, Hamazu et al. contemplates other anions, such as p-toluenesulfonate [col2, line52-53].
Hamazu et al. teaches all of the above required components, however fails to explicitly disclose each in a preferred embodiment. A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art, including the non-preferred embodiments. See Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.); MPEP §2123. Hamazu et al. does not specifically disclose an embodiment containing the stabilizer having an anion selected from p-toluenesulfonate. However, at the time of invention a person of ordinary skill in the art would have found it obvious to prepare a coating composition containing glycidoxymethyltriethoxysilane, cationic initiator, and silica sol based on the invention of Cheng et al., and would have been motivated to do so since Cheng et al. suggests that the coating composition can contain glycidoxymethyltriethoxysilane [0015], cationic initiator [0022], and silica sol [0079]. 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].
Regarding claim 4; Hamazu et al. teaches a blending amount of the stabilizer (second photoacid generator) with respect to 1 mol of a blending amount of the cationic polymerization catalyst (first photoacid generator) is about 0.11 mol, as calculated by Examiner.
3 g cationic polymerization catalyst * (mol/458g) = 0.0063
0.15 g stabilizer * (mol/203g) = 0.00074
1 /0.0063 = 158*(0.00075) = 0.118 mol of stabilizer/second photoacid generator to 1 mol of cationic polymerizable catalyst/first photoacid generator
Regarding claim 6; Hamazu et al. teaches the composition may further comprise fillers [col5,line10-14].
Claim(s) 10-12 and 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Oxman et al. (US Patent No. 7537452).
Regarding claims 10-12 and 14; Oxman et al. teaches, in a preferred embodiment, a composition suitable for use in dental resins [col3, line43-47], comprising 185.7g CYGEPSI Resin (silorane epoxy material, 50/50 mixture of difunctional epoxide and tetrafunctional epoxide), 1.0g CPQ (camphorquinone, alpha-diketone photosensitizer), 5.97g RHODORSIL 2074 (iodonium tetrakis(pentafluorophenyl)borate-type photoacid generator; instant b1), 0.08g Pyridinium tosylate (pyridinium para-toluenesulfonate, instant b2), and 70% filler A (silane-treated quartz filler) [Ex, col19, line45-55; col22, line53-56].
Oxman et al. fails to teach wherein the blending amount of the second photoacid generator (b2) with respect to 1 mol of a blending amount of the first photoacid generator (b1) included in the photoacid generators (b) is from 0.33 mol to 0.75 mol in a preferred embodiment. However, Oxman et al. teaches the iodonium salt is preferably present in an amount of 0.05-10 weight percent [col14, line52-60], thus in the instance RHODORSIL 2074 is employed in an amount of 0.75g (0.38 weight percent of the total composition); the blending ratio per 1 mol of (b1) is 0.43 mol of (b2) (as calculated by Examiner). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. See In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990), see MPEP §2144.05. At the time of filing, a person of ordinary skill in the art would have found it obvious to employ the iodonium salt photoacid generator in an amount of 0.38 wt.% based on the total composition, and would have been motivated to do so since Oxman et al. teaches it suitable to employ the iodonium salt in an amount as low as 0.05 wt.% up to 10 wt.%.
Claim(s) 15-17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Oxman et al. (US Patent No. 7537452).
Regarding claims 15-17; Oxman et al. teaches, in a preferred embodiment, a composition suitable for use in dental resins [col3, line43-47], comprising 185.7g CYGEPSI Resin (silorane epoxy material, 50/50 mixture of difunctional epoxide and tetrafunctional epoxide; 100 mass% of cationically polymerizable material (a)), 1.0g CPQ (camphorquinone, alpha-diketone photosensitizer), 5.97g RHODORSIL 2074 (iodonium tetrakis(pentafluorophenyl)borate-type photoacid generator; instant b1, 3.21 parts by mass to 100 parts of (a), as calculated by Examiner), 0.08g Pyridinium tosylate (pyridinium para-toluenesulfonate (instant b2, 0.04 parts by mass to 100 parts (a), as calculated by Examiner), and 70% filler A (silane-treated quartz filler, 75 parts by mass to 100 parts (a)) [Ex, col19, line45-55; col22, line53-56].
Oxman et al. fails to teach wherein the blending amount of the second photoacid generator (b2) with respect to 1 mol of a blending amount of the first photoacid generator (b1) included in the photoacid generators (b) is from 0.33 mol to 0.75 mol in a preferred embodiment. However, Oxman et al. teaches the iodonium salt is preferably present in an amount of 0.05-10 weight percent [col14, line52-60], thus in the instance RHODORSIL 2074 is employed in an amount of 0.75g (0.38 weight percent of the total composition); the blending ratio per 1 mol of (b1) is 0.43 mol of (b2) (as calculated by Examiner). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. See In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990), see MPEP §2144.05. At the time of filing, a person of ordinary skill in the art would have found it obvious to employ the iodonium salt photoacid generator in an amount of 0.38 wt.% based on the total composition, and would have been motivated to do so since Oxman et al. teaches it suitable to employ the iodonium salt in an amount as low as 0.05 wt.% up to 10 wt.%.
Claim(s) 10 and 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hamazu et al. (US Patent No. 5359017), as applied to claim 1 above.
Regarding claims 10 and 13; Hamazu et al. teaches, in a preferred embodiment, a phenyl glycidyl ether compound (cationically polymerizable epoxy monomer), 3 parts by weight cationic polymerization catalyst (first photoacid generator), and 0.15 parts stabilizer (second photoacid generator) [Table1, Ex3].
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Although Hamazu et al. teaches the anion portion of the stabilizer is methyl sulfate (alkyl sulfate) in the preferred embodiment, Hamazu et al. contemplates other anions, such as p-toluenesulfonate [col2, line52-53].
Hamazu et al. teaches all of the above required components, however fails to explicitly disclose each in a preferred embodiment. A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art, including the non-preferred embodiments. See Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.); MPEP §2123. Hamazu et al. does not specifically disclose an embodiment containing the stabilizer having an anion selected from p-toluenesulfonate. However, at the time of invention a person of ordinary skill in the art would have found it obvious to prepare a coating composition containing glycidoxymethyltriethoxysilane, cationic initiator, and silica sol based on the invention of Cheng et al., and would have been motivated to do so since Cheng et al. suggests that the coating composition can contain glycidoxymethyltriethoxysilane [0015], cationic initiator [0022], and silica sol [0079]. 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].
Hamazu et al. teaches, in the preferred embodiment, a blending amount of the stabilizer (second photoacid generator) with respect to 1 mol of a blending amount of the cationic polymerization catalyst (first photoacid generator) is about 0.11 mol, as calculated by Examiner. However, Hamazu et al. teaches the cationic polymerization catalyst contemplated in a larger range of from 0.01-20 parts by weight, based on 100f the cationically polymerizable organic material [col3, line56-61]. Thus, in the instance the cationic polymerization catalyst is employed in an amount of 1 part by weight, the molar ratio of the stabilizer (b2) to 1 mole of (b1) would be 0.34, as calculated by Examiner.
1 g cationic polymerization catalyst * (mol/458g) = 0.0022
0.15 g stabilizer * (mol/203g) = 0.00074
1 /0.0063 = 454.54*(0.00074) = 0.336 mol of stabilizer/second photoacid generator to 1 mol of cationic polymerizable catalyst/first photoacid generator
In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. See In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990), see MPEP §2144.05.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-9 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.
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 JESSICA ROSWELL whose telephone number is (571)270-5453. The examiner can normally be reached M-F 8:00 am to 5:00 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Eashoo can be reached at 571-272-1197. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JESSICA M ROSWELL/Primary Examiner, Art Unit 1767