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 § 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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 12 and 27 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.
Claim 12 recites the limitation "the content of the polymerization accelerator(s) in the adhesive" in line 2. There is insufficient antecedent basis for this limitation in the claim.
Claim 27 recites the limitation "the at least one reducing agent in the adhesive" in lines 1-2. There is insufficient antecedent basis for this limitation in the claim.
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) 1 and 28-35 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Arita et al. (US 2010/0311864), when taken with Matsumura et al. (US 2021/0298997).
Regarding claim 1 and 28-35: Arita et al. (US ‘864) discloses a dental adhesive set containing a dental primer and a dental adhesive [abstract], wherein Example 12 [Ex. 12; 0053-0054; Table 2, Ex. 12] applied the primer of Ex. 12 on a tooth surface was dried. The two-paste dental adhesive C [Table 5, adhesive C] was mixed at a 1:1 weight ratio, applied to the dried primer and was chemically polymerized [Ex. 12; 0053-0054; Table 2, Ex. 12]. Arita et al. (US ‘864) discloses the primer of Ex. 12 contains 7.5 wt% TEGDMA (triethylene glycol dimethacrylate [0035]), 2.5 wt% UDMA (di-2-methacryloxyethyl-2,2,4-trimethylhexamethylene dicarbamate [0036]), 9.5 wt% MDP (10-methacryloyloxydecyldihydrogen phosphate [0038]), 30.45 wt% acetone, 0.25 wt% V(C5H7O2)3 (vanadiaum acetylacetonate [0047]) and 1.5 wt% pTSNA (p-toluenesulfinic acid sodium salt [0048]) {primer of Ex. 12 corresponding to instant polymerizable adhesive free of photoinitiator} [Table 2, Ex. 12]. Arita et al. (US ‘864) discloses the adhesive C contains {after mixing at a 1:1 weight ratio} 33.6 wt% UDMA, 7.5 wt% GDMA (2-hydroxy-1,3-dimethacryloxypropane [0034]), 2.5 wt% MDP, 0.4 wt% t-BHP (tert-butyl hydroperoxide [0040]), 53.7 wt% SiO2 powder, 1.9 wt% Aerosil (fumed silica [0045]), 0.26 wt% NATU (N-acetyl thiourea [0042]), and 0.02 wt% VO(C5H7O2)2 (vanadyl acetylacetonate [0046]) {adhesive C corresponding to instant self-cure composite restorative including a redox initiator system} [Table 5, adhesive C].
Matsumura et al. (US ‘997) provides evidence that p-toluenesulfinic acid sodium salt is an organic reducing agent [0131; 0135-0137].
Claim(s) 2, 4-8, 10-14, 16-18 and 26-27 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Arita et al. (US 2010/0311864), when taken with Matsumura et al. (US 2021/0298997).
Regarding claim 2, 4-8, 10-14, 16-18, and 27: Arita et al. (US ‘864) discloses a dental adhesive set containing a dental primer and a dental adhesive [abstract], wherein Example 12 [Ex. 12; 0053-0054; Table 2, Ex. 12] applied the primer of Ex. 12 on a tooth surface and was dried. The two-paste dental adhesive C [Table 5, adhesive C] was mixed at a 1:1 weight ratio, applied to the dried primer and was chemically polymerized [Ex. 12; 0053-0054; Table 2, Ex. 12]. Arita et al. (US ‘864) discloses the primer of Ex. 12 contains 7.5 wt% TEGDMA (triethylene glycol dimethacrylate [0035]), 2.5 wt% UDMA (di-2-methacryloxyethyl-2,2,4-trimethylhexamethylene dicarbamate [0036]), 9.5 wt% MDP (10-methacryloyloxydecyldihydrogen phosphate [0038]), 30.45 wt% acetone, 0.25 wt% V(C5H7O2)3 (vanadiaum acetylacetonate [0047]) and 1.5 wt% pTSNA (p-toluenesulfinic acid sodium salt [0048]) {primer of Ex. 12 corresponding to instant polymerizable adhesive free of photoinitiator} [Table 2, Ex. 12]. Arita et al. (US ‘864) discloses the adhesive C contains {after mixing at a 1:1 weight ratio} 33.6 wt% UDMA, 7.5 wt% GDMA (2-hydroxy-1,3-dimethacryloxypropane [0034]), 2.5 wt% MDP, 0.4 wt% t-BHP (tert-butyl hydroperoxide [0040]), 53.7 wt% SiO2 powder, 1.9 wt% Aerosil (fumed silica [0045]), 0.26 wt% NATU (N-acetyl thiourea [0042]), and 0.02 wt% VO(C5H7O2)2 (vanadyl acetylacetonate [0046]) {adhesive C corresponding to instant self-cure composite restorative including a redox initiator system} [Table 5, adhesive C].
Matsumura et al. (US ‘997) provides evidence that p-toluenesulfinic acid sodium salt is an organic reducing agent [0131; 0135-0137].
Regarding claim 26: Arita et al. (US ‘864) discloses applying the composition to a tooth during a restoration procedure [0030].
Claim(s) 20-22 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Arita et al. (US 2010/0311864), when taken with Matsumura et al. (US 2021/0298997).
Regarding claims 20-22: Arita et al. (US ‘864) discloses a method of applying a dental adhesive set containing a dental primer and a dental adhesive to a tooth [abstract; 0030; 0053-0054], wherein Example 12 [Ex. 12; 0053-0054; Table 2, Ex. 12] applied the primer of Ex. 12 on a tooth surface having exposed enamel or dentine and was dried. The two-paste dental adhesive C [Table 5, adhesive C] was mixed at a 1:1 weight ratio, applied to the dried primer and was chemically polymerized [Ex. 12; 0053-0054; Table 2, Ex. 12]. Arita et al. (US ‘864) discloses the primer of Ex. 12 contains 7.5 wt% TEGDMA, 2.5 wt% UDMA, 9.5 wt% MDP (10-methacryloyloxydecyldihydrogen phosphate [0038]), 0.25 wt% V(C5H7O2)3 (vanadium acetylacetonate [0047]), 1.5 wt% pTSNA (p-toluenesulfinic acid sodium salt [0048]), and 0.05 wt% polymerization inhibitor (2,6-di-tert-butyl-p-cresol [0052]) {primer of Ex. 12 corresponding to instant polymerizable adhesive free of photoinitiator} [Table 2, Ex. 12]. Arita et al. (US ‘864) discloses the adhesive C contains {after mixing at a 1:1 weight ratio} 33.6 wt% UDMA, 7.5 wt% GDMA, 2.5 wt% MDP, 0.4 wt% t-BHP (tert-butyl hydroperoxide [0040]), 53.7 wt% SiO2 powder, 0.26 wt% NATU (N-acetyl thiourea [0042]), and 0.02 wt% VO(C5H7O2)2 (vanadyl acetylacetonate [0046]) {adhesive C corresponding to instant self-cure composite restorative including a redox initiator system} [Table 5, adhesive C].
Matsumura et al. (US ‘997) provides evidence that p-toluenesulfinic acid sodium salt is an organic reducing agent [0131; 0135-0137].
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.
Claim(s) 25 is/are rejected under 35 U.S.C. 103 as being unpatentable over Arita et al. (US 2010/0311864) as applied to claim 1 above, and further in view of Oh et al. (US 8,956,629).
Regarding claim 25: Arita et al. (US ‘864) discloses the basic claimed composition [as set forth above with respect to claim 1]; wherein Arita et al. (US ‘864) discloses applying the composition to a tooth during a restoration procedure [0030].
Arita et al. (US ‘864) does not disclose removing a dental amalgam and filling the resulting cavity with the dental material. However, Oh et al. (US ‘629) discloses dental compositions [abstract], wherein amalgams composed of alloys and mercury are problematic due to mercury toxicity [1:18-67]. Arita et al. (US ‘864) and Oh et al. (US ‘629) are analogous art because they are concerned with a similar technical difficulty, namely the preparation of dental compositions. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have combined replacing amalgams with polymeric dental materials, as taught by Oh et al. (US ‘629) in the invention of Arita et al. (US ‘864), and would have been motivated to do so since Oh et al. (US ‘629) suggests amalgams composed of alloys and mercury are problematic due to mercury toxicity [1:18-67].
Allowable Subject Matter
Claim 36 is allowable.
The following is a statement of reasons for the indication of allowable subject matter: Arita et al. (US 2010/0311864) discloses the thiourea derivative is present in the dental adhesive (the dental adhesive corresponding to instant self-cure composite restorative including a redox initiator system) [0025-0026; 0028]. There is no motivation to include the thiourea derivative in the dental primer (the dental primer corresponding to instant polymerizable adhesive free of photoinitiator). Such a reconstruction of the claims would be based on improper hindsight reasoning.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-26 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.
Oh et al. (US 8,956,629) was relied on for disclosing dental compositions [abstract], wherein amalgams composed of alloys and mercury are problematic due to mercury toxicity [1:18-67].
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.
See attached form PTO-892.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL F PEPITONE whose telephone number is (571)270-3299. The examiner can normally be reached on 7:00 AM - 3:30 PM.
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/MICHAEL F PEPITONE/Primary Examiner, Art Unit 1767
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