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 .
This Office Action is in response to the Amendment filed on 10/9/2025. Claim 33 was added. Claims 14-33 are now pending in the application.
The previous objections to claims 27 and 28 and the 35 USC 112 rejections of claims 14-32 are withdrawn in light of Applicant’s amendment and remarks.
Claim Interpretation
For purposes of examination, the preamble stating “A self-cleaning resin” is broadly interpreted as a resin that is or acts as a self-cleaning resin. Therefore any composition meeting the limitations as set forth in the claim 1 is considered to act as a self-cleaning resin. See MPEP 2111.02 (II) wherein “if the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction.”
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.
Claims 14 - 33 are rejected under 35 U.S.C. 103 as being unpatentable over Rusin et al. (US PG Pub 2009/0305194 A1).
Regarding claims 14-16 and 27-28, Rusin et al. teach a dental composition comprising a treated surface (Title) and a resin with a water-dispersible, hydrophobic polymeric film former [0017], [0073] wherein the composition is a slurry (Examples) thereby reading on the “A hydrophobic and self-cleaning resin slurry” as required by the instant claim,
wherein Rusin et al. teach the compositions are photopolymerizable i.e. the compositions contain a photopolymerizable component and a photoinitiator [0050] wherein the photopolymerizable components include UDMA, Bis-GMA and TEGDMA in various combinations [0056], [0107] thereby reading on the dimethacrylate monomer and the triethylene glycol dimethacrylate (TEGDMA) of claim 14 and the Bis-GMA and UDMA of claim 15. Rusin et al. further teach the photopolymerizable components in the amount of from at least 5% by weight to at most 80% by weight [0052],
wherein Rusin et al. teach the water-dispersible polymeric film-former includes a repeating unit that includes a hydrophobic fluorine containing group of acrylic or methacrylic acid esters of dihydroperflouroalkanols and homologs [0086] thereby reading on the perfluoroalkyl acrylate as required by the instant claim 14,
wherein Rusin et al. teach the fillers are preferably nanoparticles [0025], particularly nanosilica particles (“Filler A” and “Filler B” [0107]),
wherein Rusin et al. teach the fillers are surface treated with silanes [0038], particularly γ-methacryloxypropyltrimethoxysilane (“A174” [0107]),
wherein Rusin et al. teach the surface treated fillers are present in the amounts of at least 1% and at most 40% by weight [0036] thereby reading on the required 1-15 parts of nano-silica and 1-30 parts of γ-methacryloxypropyltrimethoxysilane as required by claim 14,
wherein Rusin et al. teach photoinitiators are preferably camphorquinone ([0057], “CPQ” [0107]) in the amounts of from 0.1 to 5 weight percent [0060], wherein in preferred embodiments the amount of camphorquinone is 0.3 wt% (Table 1) thereby reading on the claimed range of from 0.05 – 0.5 parts,
wherein Rusin et al. teach ethyl 4-(N,N-dimethyl amino) benzoate in combination with the photoinitiators ([0061] and “EDMAB” [0107]) thereby reading on the photo-curing accelerator of claim 14 and the EDMAB of claim 16, wherein Rusin et al. teach the amounts of 0.1 to 5 weight percent [0061].
Rusin et al. and the claims differ in that Rusin et al. do not teach the exact same amounts for the dimethacrylate monomer, trieethylene glycol dimethacrylate and the photo curing accelerator as recited in the instant claims.
However, one of ordinary skill in the art at the time the invention was made would have considered the invention to have been obvious because the amounts taught by Rusin et al. (at least 5% by weight to at most 80 % by weight for the combined amount of photopolymerizable components) overlap the instantly claimed ranges (3 to 10 parts of a dimethylacrylate monomer and 5-30 parts of TEGDMA) and 0.1 to 5 weight percent for the photo curing accelerator overlaps with the claimed range of 0.1 to 1 part and therefore are considered to establish a prima facie case of obviousness. It would have been obvious to one of ordinary skill in the art to select any portion of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in the prior art reference, MPEP 2144.05.
Rusin et al. does not teach the particular amount of the perfluoroalkyl acrylate (FMA) as required by instant claim 14.
However, Rusin et al. teach the water-dispersible polymeric film formers having a repeating group that includes a modulating group that modulate properties such as glass transition temperature, solubility in the carrier medium, hydrophilic-hydrophobic balance and the like [0090]. As such, the amount of the film former will affect the resulting Tg, solubility and hydrophobicity of the final product. Therefore, the amounts of the film former can be optimized to reach the desired properties via a routine optimization. The case law has held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). Thus, it would have been obvious to one having ordinary skill in the art at the time of the invention was made to adjust the relative amount of the film former to arrive at the claimed 5-15 parts via a routine optimization, thereby obtaining the present invention.
Regarding claim 17, Rusin et al. teach the particle size of the filler is less than 0.075 micrometers (which corresponds to less than 75 nm) [0027].
Rusin et al. and the claims differ in that Rusin et al. do not teach the exact same range for the particle size as recited in the instant claims.
However, one of ordinary skill in the art at the time the invention was made would have considered the invention to have been obvious because the range taught by Rusin et al. (less than 75 nm) overlap the instantly claimed range (15 to 20 nm) and therefore are considered to establish a prima facie case of obviousness. It would have been obvious to one of ordinary skill in the art to select any portion of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in the prior art reference, MPEP 2144.05.
Regarding claim 18, Rusin et al. teach the composition may contain an alcohol solvent [0093].
Regarding claim 19, Rusin et al. teach a method of making the composition comprising combining the ingredients [0110] thereby reading on the mixing as required by the instant claim.
Regarding claim 20, Rusin et al. do not particularly teach the duration of the combining/mixing step.
However, all Examples of Rusin et al. imply uniform mixing and further, case law has held that it would have been obvious to one having ordinary skill in the art to have determined the optimum values of the relevant process parameters through routine experimentation in the absence of a showing of criticality. In re Aller, USPQ 233 (CCPA 1955). Where the principle difference between the claimed process and that taught by the reference is a temperature difference, it is incumbent upon applicant to establish criticality of that difference (see Ex parte Khusid, 174 USPQ 59). This decision is clearly analogous to other process parameters such as mixing time. The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of ranges is the optimum combination of values (MPEP 2144.05.II.A.). This decision is clearly analogous to other process parameters such as mixing time.
Regarding claims 21 and 26, Rusin et al. do not teach separate mixing steps as required by the instant claim.
However, case law has held that order of mixing ingredients is prima facie obvious. See MPEP 2144.04.IV.C. Absent new or unexpected results, the selection of any order of mixing ingredients is obvious, including the order of mixing as required by the instant claim 21.
Regarding claim 22, Rusin et al. do not particularly teach the duration of the combining/mixing step.
However, all Examples of Rusin et al. imply uniform mixing and further, case law has held that it would have been obvious to one having ordinary skill in the art to have determined the optimum values of the relevant process parameters through routine experimentation in the absence of a showing of criticality. In re Aller, USPQ 233 (CCPA 1955). Where the principle difference between the claimed process and that taught by the reference is a temperature difference, it is incumbent upon applicant to establish criticality of that difference (see Ex parte Khusid, 174 USPQ 59). This decision is clearly analogous to other process parameters such as mixing time. The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of ranges is the optimum combination of values (MPEP 2144.05.II.A.). This decision is clearly analogous to other process parameters such as mixing time.
Regarding claim 23 and 29, Rusin et al. teach a dental material (title) that undergoes curing light [0100-0101].
Regarding claim 24, Rusin et al. teach curing is done with a 3M Visilux dental curing light [0101].
Rusin et al. do not particularly teach the optical wavelength of the photo-curing.
However, Rusin et al. teach the composition are cured to reach the desired visual opacity [0141]. As such, the curing will affect the resulting opacity of the final product. Therefore, the wavelength of the curing can be optimized to reach the desired properties via a routine optimization. The case law has held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). Thus, it would have been obvious to one having ordinary skill in the art at the time of the invention was made to adjust the wavelength of the curing to reach the desired opacity via a routine optimization, thereby obtaining the present invention.
Regarding claims 25 and 30, Rusin et al. teach curing is done with a 3M Visilux dental curing light for 60 seconds [0101] thereby reading on the claimed range of 20 to 80 s.
Regarding claims 31 and 32, Rusin et al. teach Bis-GMA, UDMA and EDMAB as set forth in the rejection of claims 14-16 above.
Regarding claim 33, Rusin et al. teach the hydrophobic and self cleaning slurry as set forth above for claim 14. Further, the compositions taught by Rusin et al. meet the “consisting of” language as required by the instant claim because Rusin et al. disclose embodiments where ingredients that are excluded by the consisting of language in the instant claim are considered optional ingredients and are present at 0 parts (see Table 1, where phosphorus “DPIHFP” is at an amount of 0 in Resin A and Resin D, etc.).
Response to Arguments
Applicant's arguments filed 10/9/2025 have been fully considered but they are not persuasive.
In regards to the 103 rejection over Rusin et al., Applicant states “the present application defines perfluoroalkyl acrylate, being small molecule rather than a polymer”. In response, attention is drawn to the instant specification [0039]. There is no such definition provided of perfluoroalkyl acrylate being a “small molecule” in the instant application. Rather, the instant specification demonstrates the structure of perfluoroalkyl acrylate:
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Further, the perfluoroalkyl acrylate disclosed by Rusin et al. meets the structural requirements of the FMA set forth in the instant specification [0039]. Rusin et al. teach the fluorine-containing groups are acrylic or methacrylic acid esters of CF3(CF2)x(CH2)yOH, where x is zero to 20 and y is at least 1 up to 10 [0086] thereby arriving at the claimed perfluoroalkyl acrylate.
Applicant further states that Rusin does not mention the amount of film former in the final composition. In response, the office action acknowledges in the rejection above that Rusin does not teach the amount of the perfluoroalkyl acrylate. However, Rusin et al. teach the water-dispersible polymeric film formers having a repeating group that includes a modulating group that modulate properties such as glass transition temperature, solubility in the carrier medium, hydrophilic-hydrophobic balance and the like [0090]. As such, the amount of the film former will affect the resulting Tg, solubility and hydrophobicity of the final product. Therefore, the amounts of the film former can be optimized to reach the desired properties via a routine optimization.
Applicant further states that Rusin does not teach the “consisting of” language found in the new claim 33. In response, attention is drawn to the rejection as set forth above, wherein Rusin teach alternative embodiments where the ingredients that are excluded by the “consisting of” language are not present. It is for these reasons, Applicants arguments are not found to be persuasive.
Conclusion
THIS ACTION IS MADE FINAL. 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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/ARRIE L REUTHER/ Supervisory Primary Examiner, Art Unit 1764