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 Amendment
Applicant's amendments and remarks filed on October 7, 2025 have been entered and considered. Claim 6 is cancelled, claims 1 and 7 are amended and claims 1 – 5 and 7 are pending. In view of Applicant’s amendments to claim 1, the examiner withdraws both 35 U.S.C. 102(a)(1) rejections as being anticipated by Kobayashi et al. (US 2012/0015018). The invention as currently claimed is not found to be patentable for reasons herein below.
Response to Arguments
Applicant's arguments filed October 7, 2025 have been fully considered but they are not persuasive.
Applicant argues that Akiyama does not describe or suggest that the second glass powder is a phosphate glass powder and contains at least one element selected from Li, Ba, Y, Ce, Pr, Nd, Pm, Sm, Eu, Gd, Tb, Dy, Ho, Er, Tm, Yb, Lu, Ti, Zr, Ta,Cu, Al. Ga, Si, Sn, and P”. As noted in the previously set forth 35 USC 103 rejection over Akiyama et al. (US 2019/0151204) which is repeated in this Office Action, Akiyama et al. teach a second glass powder (i.e. phosphate containing dental glass [0010]).
It should be noted that phosphate glass is P2O5, therefore, it would contain “at least one element selected from…P:” If the Applicant intends that the “at least one element is not a part of the basic glass structure”, the Applicant should amend the claim to indicate “at least one additional element”.
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.
Claim(s) 1-5 and 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Akiyama et al. (US 2019/0151204).
Akiyama et al. discloses a glass powder composite formed by mixing:
a first glass powder (i.e. filler, e.g. fluoroaluminosilicate glass [0042]); and
a second glass powder (i.e. phosphate containing dental glass [0010]) having a different solubility from that of the first glass powder; and
wherein both the first glass powder and the second glass powder have ion sustained-release properties.
It should be noted that phosphate glass is P2O5, therefore, it would contain “at least one element selected from…P:”
The second glass may also contain fluorine [0028]; aluminum is excluded from the second glass [0021] while included in the first glass. There are many elements disclosed as possible additions to the second glass that are not recited in the first glass (e.g. Ag [0027] and Zn [0026].
With respect to the claimed dissolution rates, where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP 2112.01
Products of identical chemical composition cannot have mutually exclusive properties. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). 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. MPEP 2112.01
Note that Akiyama et al. discloses that the solubility of dental glass in water is 10% or greater [0034].
Further note that since the first and second glass powder in Akiyama et al. are compositionally different, they will have different properties.
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 JENNIFER A BOYD whose telephone number is (571)272-7783. The examiner can normally be reached M-F 8 am - 5 pm with alternating Fridays off.
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, Sri Kumar can be reached at (571) 272-7769. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JENNIFER A BOYD/Supervisory Patent Examiner, Art Unit 1786
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