DETAILED ACTION
Continued Examination
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 01/12/2026 has been entered.
Previous Rejections
Applicant’s arguments, filed January 12, 2026, have been fully considered. Rejections and/or objections not reiterated from previous office actions are hereby withdrawn. The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set presently being applied to the instant application.
Claim Rejections - 35 USC § 103
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 21-23 are rejected under 35 U.S.C. 103 as being as being obvious over Musa et al. (US 2011/0293540 A1) in view of Sharma et al. (US 2009/0317339 A1).
Regarding claim 21, Musa disclose the use of compositions with cationic copolymers that include N-vinyl pyrrolidone and N-vinyl formamide [0031] [0046]-[0047] [0159]-[0176], and repeating units therefore [0036], for oral care, such as to reduce and/or prevent the adherence of oral bacteria to the tooth enamel [0029] [0088]-[0089]. Musa discloses the compositions are contacted with a tooth surface [0041] [0138]-[0139]. The compositions also include an orally acceptable carrier [0107] and fluoride [0126] [0140].
Musa does not disclose the composition is contacted with a tooth surface for thirty seconds or more.
Sharma discloses an oral care device configured to contact teeth with a polymeric material, such as vinyl pyrrolidone copolymers [abstract; claim 8]. Sharma teaches that the oral device is contacted with the teeth for greater than 30 seconds and that this is a sufficient period of time for treating teeth (i.e., mineralizing the teeth) [0026]. Sharma also teaches that the optimal duration and frequency of application will depend on the desired effect, the severity of any condition being treated, the health and age of the user and like considerations and that the greater the contact time, the greater the potential to mineralize teeth [0026].
Since Musa generally teaches vinyl pyrrolidone copolymers to be contacted with teeth, it would have been prima facie obvious to one of ordinary skill in the art to contact the teeth with the copolymer for greater than 30 seconds because Sharma teaches that the oral device (with a polymeric material such as vinyl pyrrolidone copolymers) is contacted with the teeth for greater than 30 seconds and that this is a sufficient period of time for treating teeth (i.e., mineralizing the teeth) [0026].
Furthermore, 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). In this case, the general conditions of contacting a tooth with copolymers that include monomers such as N-vinyl pyrrolidone and N-vinyl formamide have been taught by the prior art (i.e., Musa) and the time of contact is known in the art (i.e., Sharma) as such, it would not have been inventive for the skilled artisan to have discovered the optimum contact time via routine experimentation, especially as Sharma teaches that the optimal duration and frequency of application will depend on the desired effect, the severity of any condition being treated, the health and age of the user and like considerations and that the greater the contact time, the greater the potential to mineralize teeth [0026].
Further regarding claim 21, while “inhibiting demineralization of a tooth” is not explicitly disclosed by Musa, Musa does disclose that the compositions are used to reduce and/or prevent the adherence of oral bacteria to the tooth enamel [0029] [0088]-[0089]. The compositions would therefore be expected to inhibit demineralization of a tooth because bacteria are known to cause tooth demineralization.
Furthermore, a chemical composition and its properties are inseparable. See MPEP 2112.01 II. Therefore, because the prior art teaches oral compositions with the same components (e.g., cationic N-vinyl pyrrolidone copolymers and fluoride; the latter of which is already known in the art to prevent demineralization – see the instant specification pg. 1, bottom paragraph), the properties the applicant discloses and/or claims would reasonably be expected to be necessarily present.
Claim 22 is rendered prima facie obvious because Musa further discloses the composition includes the essential oil, eucalyptol [0130].
Claim 23 is rendered prima facie obvious because Musa discloses the composition includes fluoride [0126] [0140].
Response to Arguments
Applicant's arguments filed 01/12/2026 have been fully considered but they are not persuasive, and will be addressed insofar as they apply the new ground of rejection.
Applicant argues that Musa does not teach or suggest the specific method of the present invention, as amended. For example, Musa nowhere teaches or suggests the timeframe during which the composition of the methods of the present invention, as amended, is required to contact a tooth surface.
The Examiner disagrees. In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See. MPEP 2145. In the instant case, the contact time is taught by Sharma.
Applicant' s further arguments with respect to claims 21-23 have been considered but are moot because the new ground of rejection (Musa in view of Sharma) does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument (Musa in view of Morgan).
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 21-23 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-24 of U.S. Patent Application No. 18/114,937 in view of Musa et al. (US 2011/0293540 A1).
Although the claims at issue are not identical, they are not patentably distinct from each other. The copending claims recite all of the features instantly recited expect for a cationic copolymer having repeat units derived from monomers containing amines or guanidine.
Musa disclose the use of compositions with cationic copolymers that include N-vinyl formamide [0031] [0046]-[0047] [0159]-[0176] for oral care [0088].
It would have been prima facie obvious to one of ordinary skill in the art to include N-vinyl formamide, within the copending claims. The ordinarily skilled artisan would have been motivated to formulate the composition, as taught by Musa [0031] [0046]-[0047] [0159]-[0176].
This is a provisional nonstatutory double patenting rejection.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Ashlee E Wertz whose telephone number is (571)270-7663. The examiner can normally be reached Monday - Friday, 8 AM - 5 PM.
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/ASHLEE E WERTZ/Examiner , Art Unit 1612
/SAHANA S KAUP/Supervisory Primary Examiner, Art Unit 1612