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 .
The preliminary amendment dated 18 May 2023 is acknowledged. Claims 1-10, 13, and 14 as amended are pending.
Election/Restrictions
REQUIREMENT FOR UNITY OF INVENTION
As provided in 37 CFR 1.475(a), a national stage application shall relate to one invention only or to a group of inventions so linked as to form a single general inventive concept (“requirement of unity of invention”). Where a group of inventions is claimed in a national stage application, the requirement of unity of invention shall be fulfilled only when there is a technical relationship among those inventions involving one or more of the same or corresponding special technical features. The expression “special technical features” shall mean those technical features that define a contribution which each of the claimed inventions, considered as a whole, makes over the prior art.
The determination whether a group of inventions is so linked as to form a single general inventive concept shall be made without regard to whether the inventions are claimed in separate claims or as alternatives within a single claim. See 37 CFR 1.475(e).
When Claims Are Directed to Multiple Categories of Inventions:
As provided in 37 CFR 1.475 (b), a national stage application containing claims to different categories of invention will be considered to have unity of invention if the claims are drawn only to one of the following combinations of categories:
(1) A product and a process specially adapted for the manufacture of said product; or
(2) A product and a process of use of said product; or
(3) A product, a process specially adapted for the manufacture of the said product, and a use of the said product; or
(4) A process and an apparatus or means specifically designed for carrying out the said process; or
(5) A product, a process specially adapted for the manufacture of the said product, and an apparatus or means specifically designed for carrying out the said process.
Otherwise, unity of invention might not be present. See 37 CFR 1.475 (c).
Restriction is required under 35 U.S.C. 121 and 372.
This application contains the following inventions or groups of inventions which are not so linked as to form a single general inventive concept under PCT Rule 13.1.
In accordance with 37 CFR 1.499, applicant is required, in reply to this action, to elect a single invention to which the claims must be restricted.
Group I, claim(s)1-6 and 10, drawn to a dental composition and adhesive thereof.
Group II, claim(s) 7-9 and 13, drawn to a two part composition from the dental composition.
Group III, claim(s) 14, drawn to a kit of the dental composition with other dental accessories.
The groups of inventions listed above do not relate to a single general inventive concept under PCT Rule 13.1 because, under PCT Rule 13.2, they lack the same or corresponding special technical features for the following reasons:
Groups I-III lack unity of invention because even though the inventions of these groups require the technical feature of the dental composition of claim 1, this technical feature is not a special technical feature as it does not make a contribution over the prior art in view of JP 2005-289961 A (“Fuchigami”) as evidenced by US 2009/0215616 (“Misumi”) and US 5,792,821 (“Bowen”).. As outlined below, Fuchigami teaches a dental composition including non-acid polymerizable components, and microcapsules including those having a pH sensitive inorganic component as wall material, and redox initiator components as core components.
During a telephone conversation with Cynthia Mitchell on 29 January 2026 a provisional election was made with traverse to prosecute the invention of Group I, claims 1-6 and 10. Affirmation of this election must be made by applicant in replying to this Office action. Claims 7-9, 13, and 14 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
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 1-6 and 10 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 1 recites the broad recitation “a pH-sensitive inorganic component”, and the claim also recites “preferably forming a shell around the core” which is the narrower statement of the range/limitation. Claim 2 recites “an anion” and “a multivalent cation,” and also “the anion being preferably selected from” and “the multivalent cation being preferably selected from”. Claim 3 recites “the pH-sensitive inorganic component being able to produce gas” and also “being preferably selected from . . . “. Claim 7 recites “an acidic component and also “preferably a polymerizable component comprising an acidic moiety”. 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.
Claim 1 recites the limitation "the core" in line 7. There is insufficient antecedent basis for this limitation in the claim.
Claim Rejections - 35 USC § 103
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 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.
Claim(s) 1, 2, 6, and 10 are rejected under 35 U.S.C. 103 as being unpatentable over JP 2005-289961 A (“Fuchigami”) as evidenced by US 2009/0215616 (“Misumi”) and US 5,792,821 (“Bowen”).
As to claim 1, Fuchigami teaches a composition in particular for dental application (para. 0061-0063). Fuchigami teaches a composition containing radically polymerizable monomers, that is, a polymerizable component, that may be lacking acidic group (para. 0068).
Fuchigami teaches that the composition includes microcapsules to protect components from one another. Fuchigami teaches that the wall material may be an inorganic non-polymeric material, paras. 0184-0186, including calcium oxide. While not stated to be pH sensitive, calcium oxide, which is component comprising an anion and multivalent cation as required by claim 3 is known to be highly acid reactive, which suggests a strong pH sensitivity, as evidenced by Misumi, para. 0002).
Fuchigami teaches that the microcapsule core may be initiator or accelerator (para. 0065). While not exemplified, Fuchigami teaches the use of initiators such as benzoyl peroxide, which is non water soluble, as evidenced by Bowen, 7:5-15, and is a peroxide, thus a redox initiator as acknowledged by applicant at specification, pp. 8-9. As such, the use of microcapsules, including using pH sensitive inorganic component and nonsoluble redox agents, are an obvious combination suggested by Fuchigami as suitable materials for dental compositions.
As to claim 6, Fuchigami teaches the microcapsules have diameter ranging from several to several hundred micrometers (para. 0028), which includes the range of 1 to 200 micrometers. Moreover, Fuchigami teaches numerous examples of microcapsules in the recited diameter range (paras. 0238, 0245), and as such, microcapsules with particle size in the recited range are an obvious modification suggested by Fuchigami.
As to claim 10, Fuchigami teaches dental adhesives (para. 0003), which are adhesive when cured (para. 0061), thus suggesting self-adhesive cement.
Claim(s) 4 is rejected under 35 U.S.C. 103 as being unpatentable over JP 2005-289961 A (“Fuchigami”) as evidenced by US 2009/0215616 (“Misumi”) and US 5,792,821 (“Bowen”) as applied to claim 1, further as evidenced by US 2010/0068679 (“Zappini”).
While not exemplified, Fuchigami teaches the use of numerous amine compounds characterized as accelerators (para. 0140). While not characterized as redox initiators, it is known that such compounds, including N,N-dimethyl-p-toluidine, are reducing agents, as evidenced by Zappini, (para. 0078), and are water insoluble as evidenced by Bowen, 7:5-15. Therefore, Fuchigami teaches that the core material may include insoluble reducing agents.
Allowable Subject Matter
Claims 3 and 5 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: the prior art, including Fuchigami, does not teach or suggest a dental composition having microcapsules having the recited pH-sensitive inorganic component capable of producing gas with acids of claim 3 in conjunction with non-water soluble redox initiator component, nor the ratio of non water soluble redox initiator component and pH-sensitive inorganic component required by claim 5.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KREGG T BROOKS whose telephone number is (313)446-4888. The examiner can normally be reached Monday to Friday 9 am to 5:30 pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Arrie Reuther can be reached at (571)270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/KREGG T BROOKS/Primary Examiner, Art Unit 1764