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 .
Response to Election/Restrictions
Applicant’s election without traverse of Group I and guanidinyl-containing polymer in the reply filed on October 10, 2025 is acknowledged.
Claim 15 is withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on October 10, 2025.
Claims
Claim Objections
Claim 3 is objected to because of the following informalities: The claim recites catenary. It is believed the term should read quaternary.
Appropriate correction is required.
Claim Rejections - 35 USC § 112 - Indefiniteness
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 2-3, 7-9 and 12 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.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 7 recites the broad recitation wherein the paste-forming component does not comprise a radically-curable moiety, and the claim also recites preferably selected from which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 8 recites the broad recitation optionally comprises in addition an initiator system, and the claim also recites preferably a photo-initiator which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 9 recites the broad recitation a radically-curable moiety, and the claim also recites preferably characterized by the following which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claims 2-3 and 12 recite a structure for the guanidinyl-containing polymer. However, it is not clear at what position the guanidinyl is on the polymer. Therefore, the claims are indefinite.
Claim 12 recites “components” in line 13. It is not clear what “components” are being referred to. It will be concluded that components refers to the paste-forming component.
Claim Rejections - 35 USC § 103 - Obviousness
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-13 are rejected under 35 U.S.C. 103 as being unpatentable over Nowak et al. (20120045400) in view of Robinson et al. (US 20060134020).
Nowak et al. disclose an oral care composition comprising a polyguandinium compound (Abstract). A polyamine-based material is used to form polyguanidine compounds that are useful for their antimicrobial, anticaries, and mucoadhesive properties (Abstract).
The compounds have a formula of:
PNG
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259
588
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Greyscale
wherein R.sub.1 is hydrogen, hydroxide, methoxide, and linear or branched, saturated or unsaturated, optionally hydroxylated C.sub.1 to C.sub.16 alkyl groups when Z is CH or hydrogen and linear or branched, saturated or unsaturated, optionally hydroxylated C.sub.1 to C.sub.16 alkyl when Z is N; R.sub.2 and R.sub.3 are each independently hydrogen or linear or branched, saturated or unsaturated, optionally hydroxylated C.sub.1 to C.sub.16 alkyl groups; A is a covalent bond or linear or branched, saturated or unsaturated, optionally hydroxylated C.sub.1 to C.sub.16alkyl groups;] Z is a CH or N; X- is a counter ion, for example, bicarbonate or chloride; and n is an integer between 2 and 5,000. The polymer comprises 10% by weight of the composition.
The composition comprises a bioglass, which may interpreted as a filler. The bioactive glass comprises 10% of the composition (paragraph 0080). The composition further comprises anti-stain agents and include carboxylic acids. An agent to enhance surface deposition/retention of the bioglass and any resulting HAP deposits includes Gantrez, amelogenin, milk proteins (casein), chitosan, Pluracare L1220 (ethylene oxide/propylene oxide copolymer, comprises 20% (paragraph 0120)) (meeting paste forming component), polyox, PVP, methacrylates, shellac, arginine, and combination thereof (paragraph 01025). Other agents that may be used in the composition include thickening agents (paragraph 0055).
Nowak et al. differ from the instant claims insofar as it does not disclose carrageenan or its forms and the organic acids.
Robinson et al. disclose oral care composition with film forming polymers. Thickening agents are used in the composition and include carrageenans, particularly iota-carrageenan. Thickeners comprise 0.1 to about 10% by weight of the compositions. (paragraph 0051). Chelating agents are used and include citric acid and tartaric acid (meeting instant claims 1 and 5). Chelating agents comprise 0.5 to about 1% by weight of the composition (paragraphs 0027-0029).
Generally, it is prima facie obvious to select a known material for incorporation into a composition, based on its recognized suitability for its intended use. See MPEP 2144.07. It would have been obvious to one of ordinary skill in the art prior to filing the instant application to have used iota carrageenan and citric acid in the composition of Nowak in the amounts disclosed by Robinson et al. because they are suitable thickeners and chelating agents for oral care compositions.
The compositions do not require water nor do they comprise aluminum chloride.
In regard to the structure of the polymer, it appears the guanidinyl may be attached to different sites of the polymer. Therefore the polymer of Nowak et al. meets the limitation of the instant claims.
In regards to the composition being for retracting dental tissue, the composition of the combined references comprise substantially the same components. Therefore one would reasonably conclude that they would have a similar function of being capable of retracting dental tissue in combination with coagulating blood.
In regards to the organic acid, when citric or tartaric acids are used, they meet the limitations recited for the organic acid in instant claim 1 because these are acids specifically recited in instant claim 5.
Obvious-Type Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-13 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No. 11,766,386. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims are coextensive insofar as both sets of claims recite a guanidinyl-containing polymer, carrageenan and water. The instant claims are broader in scope insofar as the independent claim recites guanidinyl-containing polymers whereas the patented claims further define the polymers in the independent claim.
Claims 1-13 are rejected.
Claim 15 is withdrawn.
No claims allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LEZAH ROBERTS whose telephone number is (571)272-1071. The examiner can normally be reached Monday-Friday 11:00-7:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sahana Kaup can be reached at 571-272-6897. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LEZAH ROBERTS/Primary Examiner, Art Unit 1612