DETAILED ACTION
Response to Amendment
Applicant's amendment filed 3/27/2026 has been entered. Currently, claims 1-7 and 9-18 are pending, claim 8 is cancelled and claims 2, 6 and 7 are withdrawn.
Claim Rejections - 35 USC § 103
Claims 1, 3-5 and 9-18 are rejected under 35 U.S.C. 103 as being unpatentable over Kudo et al. (US 2017/0135910).
Please note that the limitations in the preamble or body of the claims of “for dental attachments” is an intended use limitation that is not dispositive of patentability.
With regard to claims 1, 4, 5, 9 and 12-18, Kudo et al. teach Example 1 of Table 1 at [0165]. The Example 1 has MDP, which is 10-methacryloyloxydecyl dihydrogen phosphate and reads on applicants’ monomer (A-1), in 10 parts relative to 100 parts total of polymerizable monomers, MAEA, which is N-methylacryloyloxyethyl acrylamide and reads on applicants’ formula (1) and monomer (A-2a), D-2.6E, which is 2,2-bis(4-methacryloyloxypolyethoxyphenyl)propane having an average moles of added ethoxy of 2.6, and TEGDMA, which is triethyleneglycol dimethacrylate, which read on applicants’ monomer (A-2) [0109], [0120], [0124] and [0125]. The Example 1 also has BAPO, which is bis(2,4,6-trimethylbenzoyl)phenylphosphine oxide and reads on applicants’ water-insoluble photopolymerization initiator, and 250 parts of filler relative to 351.1 parts of the total composition, which is approximately 71.2 parts of filler per 100 parts of the composition and reads on the content of filler of claim 1 [0136] and [0165]. Kudo et al. also teach that the filler in example 1 has an average particle size of 2.2 microns and the filler could also include ultrafine particle filler having an average particle diameter of less than 0.1 microns to improve the paste handling properties, wherein the average particle diameter of the ultrafine particle filler is preferably from 1 to 50 nm [0085], [0086] and [0141]; however, Kudo et al. do not teach a composition having both of these particles.
It would have been obvious to one having ordinary skill in the art to have combined the ultrafine particle filler having an average particle size of 1 to 50 nm with the exemplary filler particles having an average particle size of 2.2 microns. The results of such a combination would have been predictable to one having ordinary skill; further, the rationale to combine them is to improve the paste handling properties of the composite resin. This would read on applicants’ combination (II) in the claims.
With regard to claim 3, since all of the monomers, photopolymerization initiator and filler are combined together to make the composite resin, this reads on a one-pack composition as claimed [0165].
With regard to claim 10, since the Example has the same monomers as preferentially claimed along with a filler in the same proportion as claimed, the composition of Kudo et al. will inherently possess the flexural modulus claimed absent objective evidence to the contrary.
With regard to claim 11, Kudo et al. teach all of the limitation of claim 1 above. They also teach that the photopolymerization initiator may be a water-soluble acylphosphine oxide, which reads on applicants’ water-soluble photopolymerization initiator [0061] and [0067]; however, they do not specifically teach an example with this photopolymerization initiator.
It would have been obvious to one having ordinary skill in the art to have merely substituted the water-soluble acylphosphine oxide for the BAPO photopolymerization initiator of the Example 1. These are recognized equivalents in Kudo et al. for the photopolymerization initiator and the results of such a substitution would have been predictable to one having ordinary skill [0061].
Claims 1, 3-5 and 9-18 are rejected under 35 U.S.C. 103 as being unpatentable over Kudo et al. (US 2017/0135910).
Please note that the limitations in the preamble or body of the claims of “for dental attachments” is an intended use limitation that is not dispositive of patentability.
With regard to claims 1, 4, 5, 9 and 13-18, Kudo et al. teach a self-adhesive dental composite resin that reads on applicants’ composition [0018]. The composite resin can comprise a photopolymerization initiator, a filler, an asymmetric acrylamide-methacrylic acid ester that may be N-methylacryloyloxyethyl acrylamide, which reads on applicants’ formula (1) and resin (A-2a), an acid group-containing (meth)acrylic polymerizable monomer that may be 10-(meth)acryloyloxydecyl dihydrogen phosphate, which reads on the applicants’ monomer (A-1), and a hydrophobic crosslinkable polymerizable monomer that may preferable be 2,2-bis(4-methacryloyloxypolyethoxyphenyl)propane having an average moles of added ethoxy of 2.6 or triethyleneglycol di(meth)acrylate [0032], [0033], [0036], [0037], [0048], [0049], [0060] and [0071]. The hydrophobic crosslinkable polymerizable monomer can be a combination of two or more monomers [0050].
The 10-(meth)acryloyloxydecyl dihydrogen phosphate can be present at 1 to 40 parts relative to 100 parts by weight of the total polymerizable monomers, which reads on the parts by mass of (A-1) relative to the mass of the polymerizable monomer (A) of applicants’ claims [0043]. The filler can be 50 to 90 weight % relative to the total weight of the composite resin, which reads on applicants’ 50 to 90 parts by mass in total 100 parts by mass of the composition [0084]. The filler in the examples is taught to have an average particle size of 2.2 or 2.4 microns [0140]-[0143]. Additionally, the filler could also include ultrafine particle filler having an average particle diameter of less than 0.1 microns to improve the paste handling properties, wherein the average particle diameter of the ultrafine particle filler is preferably from 1 to 50 nm [0085] and [0086]; however, Kudo et al. do not have a single example with these specific monomers or a combination of both of the filler particles.
It would have been obvious to one having ordinary skill in the art to have made a composition with the combination of 10-methacryloyloxydecyl dihydrogen phosphate, N-methylacryloyloxyethyl acrylamide, 2,2-bis(4-methacryloyloxypolyethoxyphenyl)propane having an average moles of added ethoxy of 2.6 and triethyleneglycol dimethacrylate. The results of combining these monomers would have been predictable one having ordinary skill as they are all specifically taught as monomers for forming the composite resin.
It would have been obvious to one having ordinary skill in the art to have combined the ultrafine particle filler having an average particle size of 1 to 50 nm with the exemplary filler particles having an average particle size of 2.2 or 2.4 microns. The results of such a combination would have been predictable to one having ordinary skill; further, the rationale to combine them is to improve the paste handling properties of the composite resin. This would read on applicants’ combination (II) in the claims.
With regard to claim 3, since all of the monomer, photopolymerization initiator and filler are combined together to make the composite resin, this reads on a one-pack composition as claimed [0165].
With regard to claim 10, since the composition rendered obvious above has the same monomers as preferentially claimed along with a filler in the same proportion as claimed, the composition of Kudo et al. will intrinsically possess the flexural modulus claimed absent objective evidence to the contrary.
With regard to claims 11 and 12, the photopolymerization initiator may be a water-soluble acylphosphine oxide, which reads on applicants’ water-soluble photopolymerization initiator, or 2,4,6-trimethylbenzoyldiphenylphosphine oxide, which reads on applicants’ water insoluble photopolymerization initiator [0063] and [0067].
Response to Arguments
Applicant’s arguments, see Remarks, filed 3/27/2026, with respect to the claim objection and the 112(b) rejections and the 102 prior art rejection have been fully considered and are persuasive. The relevant objections/rejections have been withdrawn.
Applicant's arguments filed 3/27/2026 have been fully considered but they are not persuasive.
Applicants argue on page 9-10 of their Remarks that Kudo does not teach or suggest the use of the composite resin for dental attachments, and therefore it cannot render obvious the composition claimed as there is no expectation of success in the combination of fillers.
The Examiner respectfully disagrees and notes that intended use limitations are not dispositive of patentability. The Examiner has set forth a proper prima facie case of obviousness to have formed a combination of fillers based on the teaching of Kudo. There would have been a reasonable expectation of success in forming a working dental composite resin as the reference specifically suggests the benefit of a combination of fillers at least at [0088].
Additionally, the Examiner can have a rationale that differs from applicants; further, the fact that applicant “has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious”. See MPEP 2145(II). Just because applicants have recognized additionally properties of their composition with respect to uncut enamel is not persuasive in overcoming the prima facie obviousness rejections of the composition.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GERARD T HIGGINS whose telephone number is (571)270-3467. The examiner can normally be reached M-F 9:30-6pm.
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/Gerard Higgins/Primary Examiner, Art Unit 1785
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