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 with traverse of the species of 10-methacryloyloxydecyl dihydrogen phosphate as (A-1) and the combination of the monomers of D-2.6E, 3G and MAEA as (A-2) in the reply filed on 9/15/2025 is acknowledged. This election reads on claims 1, 3-5 and 8-18. The traversal is on the grounds that there needs to be a patentable difference between the species as claimed and the restriction requirement is conclusory and does not have differences for the patentable species.
This is not found persuasive because this case is a national stage application filed under 35 USC 371 and not an application filed under 111(a). The rationale for requiring an election of species in a national stage application via lack of unity is explained in MPEP 1893.03(d). In this section and in chapter 10 of the International Search and Preliminary Examination Guidelines, it is explained that “if it can be shown that at least one Markush alternative is not novel over the prior art, the question of unity of invention should be reconsidered by the examiner”. The Examiner has set forth in the restriction requirement how all of the technical features including at least one species were known in the prior art, which provides the rationale for saying that the species lack unity of invention.
The requirement is still deemed proper and is therefore made FINAL.
Claims 2, 6 and 7 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected species, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 9/15/2025.
Please note that the species that was elected does not include any (A-2c) monomers. Claim 2 is indefinite as it is says that the polymer (A-2c) is optional but then requires “a mass ratio” of the monomers (A-2b) and (A-2c), which would necessarily require a non-zero mass of the monomer (A-2c), and therefore claims 2, 6 and 7 are withdrawn.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Claim Objections
Claim 1 is objected to because of the following informalities:
In claim 1, the phrases “being 1 to 40 parts by mass in total 100 parts by mass of the polymerizable monomer” and “being 50 to 90 parts by mass in total 100 parts by mass of the composition” are objected to grammatically. The objection can be overcome by changing the phrases to “being 1 to 40 parts by mass per 100 parts by mass of the total polymerizable monomer” and “being 50 to 90 parts by mass per 100 parts by mass of the total composition”, respectively, which is how the claim will be interpreted.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
Claims 3 and 17 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
In claim 3, the phrase “a one-pack type” renders the claim indefinite as the word “type” renders the claim indefinite. It has been held that “[t]he addition of the word “type” to an otherwise definite expression (e.g., Friedel-Crafts catalyst) extends the scope of the expression so as to render it indefinite. Ex parte Copenhaver, 109 USPQ 118 (Bd. App. 1955); likewise, the phrase “ZSM-5-type aluminosilicate zeolites” was held to be indefinite because it was unclear what “type” was intended to convey Ex parte Attig, 7 USPQ2d 1092 (Bd. Pat. App. & Inter. 1986).” Please see MPEP 2173.05(b). It is unclear what other packs of materials are included as being a “type” of one-pack. The rejection can be overcome by changing the phrase to “a one-pack composition” which is how the claim will be interpreted.
In claim 17, the phrase in parenthesis of “(average number of moles of ethoxy group added: 2.6)” renders the claim indefinite as it is unclear if this is required in the claim. The rejection can be overcome by removing the parenthesis around these limitations and changing the phrase to “having an average number of moles of ethoxy group added of 2.6” which is how the claim will be interpreted.
Claim Rejections - 35 USC § 102
Claims 1, 3-5, 10 and 12-18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by 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 and 12-18, Example 1 of Table 1 of Kudo et al. clearly anticipates all of these claims [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].
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.
Claim Rejections - 35 USC § 103
Claims 8, 9 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Kudo et al. (US 2017/0135910).
With regard to claims 8 and 9, Kudo et al. teach all of the limitation of claim 1 above. They 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 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 8-18 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 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]; however, Kudo et al. do not have a single example with these specific monomers.
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.
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 claims 8 and 9, 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 teach a composition having both 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 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 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].
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The Examiner has cited US 2017/0135909 which is cumulative to the prior art reference applied above.
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 (variable one work-at-home day).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Ruthkosky can be reached at (571) 272-1291. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Gerard Higgins/Primary Examiner, Art Unit 1785