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) 1-9 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Fukudome et al. (US 2019/0192386).
Regarding claims 1-2, 5 and 8: Fukudome et al. (US ‘386) discloses dental compositions [abstract], wherein Example 15 [Ex. 15; 0476-0478; Table 10, Ex. 15] contains the paste of Ex. 5, 10.5 ppm yellow pigment, 3.1 ppm red pigment, and 1.4 ppm blue pigment [Ex. 15; 0476-0479; Table 10, Ex. 15]. Fukudome et al. (US ‘386) discloses Ex. 5 [Ex. 5; 0466-0473; Table 4, Ex. 5] contains 100 parts by mass {pbm} monomer M-4, 100 pbm inorganic filler F-1, 100 pbm organic-inorganic composite filler CF-1, and 0.2 mas% CQ (camphorquinone [0400-0402]) [Ex. 5; 0466-0473; Table 4, Ex. 5]. Fukudome et al. (US ‘386) discloses M-4 contains 30 mass% Bis-GMA [0384-0385], 40 mass% D2.6E [0392-0393] and 30 mass% 3G [0388-0389] [Table 1, M4]; F-1 is a spherical filler (average primary particle size 0.4 µm) [Table 2, F-1]; and CF-1 prepared from M-2 (UDMA [0396-0397; Table 2, M-2]) and F-1 (average primary particle size 0.4 µm), and having an average primary particle size of 5.5 µm [0425-0431; Table 3; CF-1]. Fukudome et al. (US ‘386) discloses Ex. 15 was cured and has a contrast ratio (1 mm thick; Yb/Yw [0439-0443]) of 0.45 [Table 11; Ex. 15].
The claimed effects and physical properties, i.e. ratios R650/600, R700/600, and R750/600 of spectral reflectances at 650 nm, 700 nm, and 750 nm wavelengths to a spectral reflectance at 600 nm wavelength all fall within a range of 97% to 103% when measured for a 1.0 mm-thick cured product of the dental curable composition against a white background with a spectral colorimeter [instant claim 1], would inherently be achieved, as “Products of identical chemical composition can not have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) [see MPEP 2112.01].
Regarding claim 3: Fukudome et al. (US ‘386) discloses a light diffusivity (D=[{(I(20)/cos 20°)+(I(70)/cos 70°)}/(2×I(0))]×100) [0444-0466] of a 0.5mm sample of 44 [Ex. 15; Table 11, Ex. 15].
The claimed effects and physical properties, i.e. a light diffusivity (LD; (I5/cos5o)/Io) of 0.0001 to 0.99 for a 0.25mm thick cured sample [instant claim 3], would inherently be achieved, as “Products of identical chemical composition can not have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) [see MPEP 2112.01].
Regarding claim 4: Fukudome et al. (US ‘386) discloses the basic claimed composition [as set forth above with respect to claim 1].
The claimed effects and physical properties, i.e. a 1.0 mm-thick cured product of the dental curable composition has a chromaticity index a*/w of -3.0 to 2.0 as measured in L*a*b*color system with a standard whiteboard placed behind the cured product [instant claim 4], would inherently be achieved, as “Products of identical chemical composition can not have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) [see MPEP 2112.01].
Regarding claim 6-7: Fukudome et al. (US ‘386) discloses CF-1 is agglomerated [0256] and was prepared from F-1 (average primary particle size 0.4 µm) having an average primary particle size of 5.5 µm [0425-0431; Table 3; CF-1]. Fukudome et al. (US ‘386) discloses F-1 has a refractive index of 1.521 [Table 2, F-1]. Fukudome et al. (US ‘386) discloses M-4 has a refractive index after curing (nP) [0374] of 1.551 [Table 1, M-4] {corresponding to a refractive index difference |(M-4) – (F-1)| of 0.03}.
Regarding claim 9: Fukudome et al. (US ‘386) discloses CF-1 was prepared from F-1 (average primary particle size 0.4 µm) having an average primary particle size of 5.5 µm [0425-0431; Table 3; CF-1] and M-2 (UDMA [0396-0397; Table 2, M-2]). Fukudome et al. (US ‘386) discloses F-1 has a refractive index of 1.521 [Table 2, F-1] and M-2 has a refractive index after curing (nP) [0374] of 1.509 [Table 1, M-2]. Fukudome et al. (US ‘386) discloses M-4 has a refractive index after curing (nP) [0374] of 1.551 [Table 1, M-4] {corresponding to a refractive index difference |(M-4) – (F-1)| of 0.03; a refractive index difference |(M-4) – (M-2)| of 0.042}.
Response to Arguments
Applicant's arguments filed 4/3/26 have been fully considered but they are not persuasive. The rejection of claims 1-5 and 8 based upon Fukudome et al. (US 2019/0192386) is maintained.
Fukudome et al. (US ‘386) was relied on for disclosing dental compositions [abstract], wherein Example 15 [Ex. 15; 0476-0478; Table 10, Ex. 15] contains the paste of Ex. 5, 10.5 ppm yellow pigment, 3.1 ppm red pigment, and 1.4 ppm blue pigment [Ex. 15; 0476-0479; Table 10, Ex. 15]. Fukudome et al. (US ‘386) discloses Ex. 5 [Ex. 5; 0466-0473; Table 4, Ex. 5] contains 100 parts by mass {pbm} monomer M-4, 100 pbm inorganic filler F-1, 100 pbm organic-inorganic composite filler CF-1, and 0.2 mas% CQ (camphorquinone [0400-0402]) [Ex. 5; 0466-0473; Table 4, Ex. 5]. Fukudome et al. (US ‘386) discloses M-4 contains 30 mass% Bis-GMA [0384-0385], 40 mass% D2.6E [0392-0393] and 30 mass% 3G [0388-0389] [Table 1, M4]; F-1 is a spherical filler (average primary particle size 0.4 µm) [Table 2, F-1]; and CF-1 prepared from M-2 (UDMA [0396-0397; Table 2, M-2]) and F-1 (average primary particle size 0.4 µm), and having an average primary particle size of 5.5 µm [0425-0431; Table 3; CF-1]. Fukudome et al. (US ‘386) discloses Ex. 15 was cured and has a contrast ratio (1 mm thick; Yb/Yw [0439-0443]) of 0.45 [Table 11; Ex. 15].
As Fukudome et al. (US ‘386) discloses a dental composition substantially identical to the claimed composition, the claimed effects and physical properties, i.e. ratios R650/600, R700/600, and R750/600 of spectral reflectances at 650 nm, 700 nm, and 750 nm wavelengths to a spectral reflectance at 600 nm wavelength all fall within a range of 97% to 103% when measured for a 1.0 mm-thick cured product of the dental curable composition against a white background with a spectral colorimeter [instant claim 1], would inherently be achieved, as “Products of identical chemical composition can not have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) [see MPEP 2112.01].
“[T]he PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his [or her] claimed product. Whether the rejection is based on ‘inherency’ under 35 U.S.C. 102, on ‘prima facie obviousness’ under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same...[footnote omitted].” The burden of proof is similar to that required with respect to product-by-process claims. In re Fitzgerald, 619 F.2d 67, 70, 205 USPQ 594, 596 (CCPA 1980) (quoting In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-34 (CCPA 1977)). [See MPEP 2112]. Evidence {data} would need to be provided showing the composition disclosed by Fukudome et al. (US ‘386) does not necessarily or inherently possess the characteristics of the claimed product.
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 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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