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 Status
Claims 12-14 are previously withdrawn.
Claims 1-2, 4-11, and 15-20 are rejected.
No claims are allowed.
Maintained 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.
1. Claims 1-2, 5-8, 10-11, and 18-20 are rejected under 35 U.S.C. 103 as being unpatentable over Rosenbaum et al., (US 5,766,012 A, June 16, 1998) (hereinafter Rosenbaum) in view of Eberhardt et al., (US 2018/0170860 A1, June 21, 2018) (hereinafter Eberhardt), as evidenced by PubChem (Crystal Violet, accessed July 30, 2025) (hereinafter PubChem).
Rosenbaum discloses an improved dental etchant composition comprising phosphoric acid as an active etchant and a colorant, wherein said etchant is a gel which contains from about 10% to about 20% by weight of said gel of phosphoric acid and said colorant contained in said gel is in an amount of from about 0.001% to about 0.05% by weight of said gel (Claim 1). The etchant may be used with polyurethane materials (col 3, lines 1-6). The etchant gel of Example 2 contains 20% by weight of phosphoric acid and .023% of crystal violet (i.e., a dye). The crystal violet added to the gel was prepared to contain 0.75% of the colorant in 1 to 1 by weight mixture of water and 200 proof ethanol (i.e., one or more water-miscible solvents) (col 3, lines 33-38).
Rosenbaum differ from the instant claims insofar as not disclosing wherein the composition comprises the urethane-urea compounds claimed in instant claim 1.
However, Eberhardt teaches urea urethanes of the following formula (I)
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in which at least one of the R1 or R2 radicals is a mono- or polyunsaturated, branched or unbranched alkenyl or alkynyl radical having 12 to 24 carbon atoms, n is an integer ≥1 (abstract). R2 is a saturated branched or unbranched alkyl radical having 8 to 24 carbon atoms ([0020]). All n R3 radicals are independently one or more radicals selected from the structural units (IIa-o), (IIa-m), (IIa-p),
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([0021]). All n+1 R4 radicals are independently one or more radicals selected from the structural units (IIIa), (IIIb), (IIIc), (IId), (IIIe), (IIIf), (IIIg) and (IIIh),
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([0023]). And n is an integer ≥1, where the upper limit for n arises from the maximum number-average molecular weight Mn of the urea urethanes of the general formula (I) which is 65 000 g/mol ([0025]). The urea urethanes provide a high-quality rheology control agent used to improve the antisettling characteristics of solids in liquid formulations ([0015]). The use of urea urethanes as an antisettling agent, i.e. as an additive that delays or even prevents the sedimentation of solid inorganic or organic particles ([0088]). The urea urethane compositions may be used in compositions that are used in the personal care sector or else in the healthcare sector for toothpaste, medicaments formulated in gel form, or hair colorants ([0101]). The proportion of urea urethanes is preferably 0.1% to 5% by weight ([0106]).
As discussed above, Rosenbaum discloses dental etchant gel compositions comprising crystal violet which is a solid particle, as evidenced by PubChem (Sources/Uses, page 32). Eberhardt teaches the claimed urea urethanes for use as an antisettling agent additive that delays or prevents the sedimentation of solid inorganic or organic particles in medicaments formulated in gel form. Accordingly, it would have been prima facie obvious to one of ordinary skill in the art to have formulated the dental etchant gel of Rosenbaum to comprise the claimed urethane-urea compounds to prevent the sedimentation of solid particles such as crystal violet, as taught by Eberhardt.
Regarding claim 10, as discussed above, the gel of Rosenbaum comprises only phosphoric acid, crystal violet (i.e., a colorant), water, and ethanol (i.e., one or more water-miscible solvents) and it would have been obvious to have incorporated the urea urethane of Eberhardt as an antisettling agent into the etching gel of Rosenbaum. As such, a composition that does not contain any further constituents apart from (A) the acid, (B) water, (C) the urethane-urea compounds, (D) a water-miscible solvent, and (E) a colorant would have been obvious.
Regarding claims 11, 19, and 20 reciting wherein the composition has a viscosity in the range from 0.1 to 200 Pa's or a viscosity in the range from 1 to 50 Pa's (after storage at 23°C for 6 months), as discussed above, it would have been obvious to have incorporated the urea urethane of Eberhardt into the etching gel of Rosenbaum. As noted by paragraph [0059] of the instant specification, the claimed storage stability is due to the claimed urethane-urea compound. As discussed above, the urea urethane of Eberhardt is substantially the same as the claimed urethane-urea compound. Accordingly, since the composition of the prior art comprises substantially the same urethane-urea compound as claimed, the composition of the prior art would necessarily have the same storage stability as the claimed invention.
Regarding claim 18, as discussed above, the gel of Rosenbaum comprises only phosphoric acid, crystal violet, water, and ethanol and crystal violet is an organic solid as evidenced by PubChem (Description, page 2) and comprises no silica particles. As such, a composition comprising less than 1% by weight of silica particles and inorganic solids would have been obvious.
2. Claims 4 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Rosenbaum et al., (US 5,766,012 A, June 16, 1998) (hereinafter Rosenbaum) in view of Eberhardt et al., (US 2018/0170860 A1, June 21, 2018) (hereinafter Eberhardt) and further in view of Leutfeld et al., (US 2012/0226075 A1, Sept. 06, 2012) (hereinafter Leutfeld).
The teachings of Rosenbaum and Eberhardt are discussed above. Rosenbaum and Eberhardt do not teach wherein wherein: Rl is an alkyl radical having 4 to 10 carbon atoms.
However, Leutfeld discloses a polyurea of the general formula (I)
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in which T is a polymeric unit which comprises at least 4 urea groups and R1 and R7 independently of one another are branched or unbranched C4-C32 alkyl radical or C3-C18 alkenyl radical, and R2 and R6 independently of one another are branched or unbranched C4-C22 alkylene radicals (Claim 1). The polymeric unit T of the polyureas of the invention according to formula (I) may comprise urethane groups ([0028]). Pigments and fillers have a tendency to settle during storage forming sediments which are in some cases decidedly hard and difficult to redisperse. Sedimentation is not a desired effect and can be prevented by the polyureas of the invention, thus leading to storage-stable systems ([0036]). The polyureas are suitable for use in cosmetics, human nutrition, and animal nutrition, dermatology, and pharmacy ([0082]) and may be in the form of a gel ([0085]).
As discussed above, Eberhardt discloses urea urethanes of the following formula (I)
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in which R1 is a mono- or polyunsaturated, branched or unbranched alkenyl radical having 12 to 24 carbon atoms. Accordingly, it would have been prima facie obvious to one of ordinary skill in the art to have substituted the mono- or polyunsaturated, branched or unbranched alkenyl radical having 12 to 24 carbon atoms with a branched or unbranched C4-C32 alkyl radical because branched or unbranched C4-C32 alkyl radicals are another known and effective R1 substituent for urea urethane compounds as taught by Leutfeld. One of ordinary skill in the art would have had a reasonable expectation of success since the urea urethane of Eberhardt is an antisettling agent, i.e. as an additive that delays or even prevents the sedimentation of solid inorganic or organic particles, and the polyurea of Leutfelt with a branched or unbranched C4-C32 alkyl radical as the R1 substituent also functions as an antisetiling agent since it prevents the sedimentation of pigments.
3. Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Rosenbaum et al., (US 5,766,012 A, June 16, 1998) (hereinafter Rosenbaum) in view of Eberhardt et al., (US 2018/0170860 A1, June 21, 2018) (hereinafter Eberhardt) and further in view of Jia et al., (US 2004/0014009 A1, Jan. 22, 2004) (hereinafter Jia).
The teachings of Rosenbaum and Eberhardt are discussed above. Rosenbaum and Eberhardt do not teach wherein the water is present in an amount of 30% to 60% by weight and wherein the water-miscible solvent is present in an amount of 0% to 20% by weight.
However, Jia teaches methods for simultaneously etching and priming the surface of a tooth prior to the application of dental adhesives and/or filling materials ([0001]). The etchant/primer compositions include a solvent. Such a solvent system includes water and/or a polar solvent such as ethanol ([0019]). The solvent serves the purpose of assuring that the etchant/primer compound contacts all exposed dentin surfaces so that the etchant/primer compound can function successfully. Thus, the solvent system must appropriately reduce the viscosity of the etchant/primer compound as well as provide a suitable surface tension such that the composition may penetrate the smallest cracks, fissures or pores in the dentin surface to assure suitable contact of the polymerized adhesive component with the dentin ([0020]).
As discussed above, Rosenbaum discloses a dental etchant comprising a 1 to 1 by weight mixture of water and 200 proof ethanol (i.e., one or more water-miscible solvents). One of ordinary skill in the art would have arrived at the claimed amount of water and ethanol (i.e., one or more water-miscible solvents) through routine experimentation to appropriately reduce the viscosity of the etchant/primer compound and provide a suitable surface tension for the composition as taught by Jia. Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. See MPEP 2144.05(II)(A).
4. Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over Rosenbaum et al., (US 5,766,012 A, June 16, 1998) (hereinafter Rosenbaum) in view of Eberhardt et al., (US 2018/0170860 A1, June 21, 2018) (hereinafter Eberhardt), and further in view of Lamarand et al. (WO 2021/108764 A1, Jun. 2, 2021) (cited by examiner on Form 892 dated 01/22/2025) (hereinafter Lamarand).
The teachings of Rosenbaum and Eberhardt are discussed above. Rosenbaum and Eberhardt do not teach a kit comprising the etching paste, a dental primer composition or adhesive composition, and optionally a dental restoration composition.
However, Lamarand discloses treating a tooth comprising applying an etching composition to the tooth to produce an etched dentin surface, applying an adhesive composition to produce an etched adhesive surface, and applying a restorative composite material to the etched adhesive surface, wherein the restorative composite material is configured to release a biologically active ion (claim 35). The dental composition may be provided in a kit with an applicator ([0099]).
Accordingly, it would have been prima facie obvious to one of ordinary skill in the art to have formulated a kit comprising the etching gel of Rosenbaum and Eberhardt, an adhesive composition, and a restorative composite material motivated by the desire to treat a tooth, wherein the three compositions are needed to treat a tooth and a kit will allow these compositions to be provided along with an applicator to apply these compositions as taught by Lamarand.
5. Claim 17 is rejected under 35 U.S.C. 103 as being unpatentable over Rosenbaum et al., (US 5,766,012 A, June 16, 1998) (hereinafter Rosenbaum) in view of Eberhardt et al., (US 2018/0170860 A1, June 21, 2018) (hereinafter Eberhardt), Jia et al., (US 2004/0014009 A1, Jan. 22, 2004) (hereinafter Jia), and further in view of Gu et al., (Effect of phosphoric acid concentration used for etching on the microtensile bond strength to fluorotic teeth, Aug. 21, 2018) (hereinafter Gu).
The teachings of Rosenbaum, Eberhardt, and Jia are discussed above. Rosenbaum, Eberhardt, and Jia do not teach phosphoric acid in an amount of 30% to 42% by weight.
However, Gu teaches that excess intake or ingestion of fluoride during tooth development contributes to dental fluorosis, which is the condition of hypomineralization in enamel and aesthetic veneers are a suitable treatment in patients with dental fluorosis. The concentration of etching acid used to prepare the enamel directly affects the bonding strength of veneers to fluorotic teeth (Introduction, page 1). Fluorotic teeth have an acid-resistant superficial layer in their enamel but maximum bond strengths of 14.95 ± 0.75, 11.38 ± 1.23, and 9.23 ± 0.87 MPa were achieved when 40% phosphoric acid was used due to the fact that a layer penetrated by resin was formed during the generation of a continuous bonding interface when the fluorotic enamel in the different groups was etched with 40% phosphoric acid (first paragraph, page 5).
Accordingly, it would have been prima facie obvious to one of ordinary skill in the art to have formulated the dental etchant of Rosenbaum wherein the phosphoric acid is present in 40% by weight to achieve the maximum bonding strength of veneers to fluorotic teeth as taught by Gu. One of ordinary skill in the art would have had a reasonable expectation of success since Rosenbaum discloses in col. 2, lines 50-51 that the acid etchant gel will usually contain from about 10 to about 20%. Thus, such amount is not required. Also, Rosenbaum discloses in col. 2, lines 52-54 that when the gel is to be used to etch dentin, the acid concentration is usually at the lower concentration. Thus, it would have been obvious to one of ordinary skill in the art to use amounts different from that disclosed by Rosenbaum when etching another part of the tooth, such as enamel.
Response to Applicant’s Arguments
Applicant argues that Rosenbaum provides no motivation for the inclusion of urethane-urea compounds in the dental etchant compositions disclosed therein since it teaches that the polyurethanes may be included in restorative material and the restoratives do not come in contact with the dental etchant composition.
Applicant’s arguments have been fully considered but are not found persuasive. As this is a 103 obviousness rejection, no one piece of prior art is required to teach each and every claim limitation. The motivation for the inclusion of urethane-urea compounds in the dental etchant compositions of Rosenbaum is provided by the teachings of Eberhardt, not within Rosenbaum itself. As discussed above, the dental etchant gel compositions of Rosenbaum comprise crystal violet which is a solid particle, as evidenced by PubChem. Eberhardt teaches the claimed urea urethanes for use as an antisettling agent additive that delays or prevents the sedimentation of solid inorganic or organic particles in medicaments formulated in gel form. Accordingly, one of ordinary skill in the art would have been motivated to have formulated the dental etchant gel of Rosenbaum to comprise the claimed urethane-urea compounds to prevent the sedimentation of solid particles such as crystal violet, according to the teachings of Eberhardt. Thus, the motivation for the inclusion of urethane-urea compounds in the dental etchant compositions of Rosenbaum is independent from the polyurethanes of the restorative materials of Rosenbaum although one would have a reasonable expectation of success for inclusion of the urethane-urea compounds of Eberhardt since the teachings of Rosenbaum suggest that the dental etchant composition is compatible with polyurethanes.
Applicant argues that there is no suggestion in Rosenbaum et al. that the dental etchant composition disclosed therein suffers from sedimentation issues and Section 3.2.4 of the PubChem reference discloses the solubility of crystal violet in water and ethanol, which indicates that the crystal violet would be soluble at the concentrations used in the dental etchant compositions of Rosenbaum so there would be no motivation to include an anti-settling agent.
Applicant’s arguments have been fully considered but are not found persuasive. Pubchem teaches that crystal violet is soluble at less than 1 mg/mL at 86 °F and has a solubility % in water of 0.2-1.7% and in ethanol of 3-14% (page, 3.2.4 Solubility). Rosenbaum teaches that that the concentration of colorant (i.e., crystal violet) in the etchant gel is quite low, and will normally be between about 0.001% and about 0.05% based on the weight of the gel (col 2, lines 17-19). Rosenbaum does not teach the concentration of the colorant (i.e., crystal violet) with regards to the amount of water and ethanol, only based on the weight of the gel composition as a whole. Further, Rosenbaum does not teach a required amount of water and ethanol, does not teach that solvents are required for the colorant, nor a required storage temperature for the composition. Thus, because the solubility of crystal violet is dependent upon temperature, the amount of crystal violet, and the amount of water or ethanol, and Rosenbaum does not teach a definite requirement for any or all of these factors and does not teach that the crystal violet must be dissolved, it cannot be concluded that the crystal violet of the composition of Rosenbaum would necessarily be dissolved or would necessarily stay dissolved during storage and one of ordinary skill in the art would have been motivated to have formulated the dental etchant gel of Rosenbaum to comprise the claimed urethane-urea compounds to prevent the sedimentation of solid particles such as crystal violet, according to the teachings of Eberhardt.
Applicant argues that Leutfeld does not remedy the deficiencies of Rosenbaum and Eberhardt.
Applicant’s arguments have been fully considered but are not found persuasive. The Examiner submits that Applicant’s argument with regards to Rosenbaum and Eberhardt is addressed above and is unpersuasive. Therefore, these rejections are maintained.
Applicant argues that Jia does not remedy the deficiencies of Rosenbaum and Eberhardt.
Applicant’s arguments have been fully considered but are not found persuasive. The Examiner submits that Applicant’s argument with regards to Rosenbaum and Eberhardt is addressed above and is unpersuasive. Therefore, these rejections are maintained.
Applicant argues that Lamarand does not remedy the deficiencies of Rosenbaum and Eberhardt.
Applicant’s arguments have been fully considered but are not found persuasive. The Examiner submits that Applicant’s argument with regards to Rosenbaum and Eberhardt is addressed above and is unpersuasive. Therefore, these rejections are maintained.
Applicant argues that Jia and Gu do not remedy the deficiencies of Rosenbaum and Eberhardt.
Applicant’s arguments have been fully considered but are not found persuasive. The Examiner submits that Applicant’s argument with regards to Rosenbaum and Eberhardt is addressed above and is unpersuasive. Therefore, these rejections are maintained.
Conclusion
THIS ACTION IS MADE FINAL. 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Samantha J Knight whose telephone number is (571)270-3760. The examiner can normally be reached Monday - Friday 8:30 am to 5:00 pm ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ali Soroush can be reached at (571)272-9925. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/S.J.K./Examiner, Art Unit 1614
/TRACY LIU/Primary Examiner, Art Unit 1614