DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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.
Election/Restrictions
Applicant’s election without traverse of the species of a 3D printed device, claims 17-19, in the reply filed on 7/18/2025 is acknowledged.
Claims 21-24 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim.
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.
Claim 19 is 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.
Claim 19 depends from claim 17 and recites additional limitations regarding stain resistance after soaking in “grape juice”; however, the claim does not specify the type of grape juice used for the measurement. Juice made from different types of grapes (e.g., red grapes, green grapes) will have different staining properties; a device that meets the claimed limitations when soaked in juice from green grapes might not meet the required properties when soaked in juice from a red variety of grape. The scope of the claim is therefore indefinite, as it is unclear what type of grape juice the device must be tested against.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 17-19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Rist, US2020/0199268.
Example 12 of Rist (Table 2) discloses a composition comprising an oligomer (for claim 17); dicyclopentanyl methacrylate, corresponding to the claimed monomer (for claim 17); triethylene glycol dimethacrylate (TEGDMA), corresponding to the claimed crosslinker (for claim 17); a glass filler; and diphenyl (2,4,6-trimethylbenzoyl)phenylphosphine oxide (TPO), corresponding to the claimed photoinitiator (for claim 17). Note that Rist specifies that the glass filler is a silanized glass filler (for claim 17) (see Table 2: footnote 8).
Rist further specifies that the prior art composition is used in the production of orthodontic appliances such as aligners, corresponding to the claimed intraoral device, via additive manufacturing (i.e., 3D printing) (abstract; ¶0002, 003, 0008).
Regarding claims 18, 19: Rist is silent regarding the stain resistance properties of the prior art device; however, it is reasonably expected that this property is met by the prior art.
“[T]he PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his [or her] claimed product. Whether the rejection is based on inherency under 35 U.S.C. 102, on prima facie obviousness under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same…" as that required with respect to product-by-process claims. In re Fitzgerald, 619 F.2d 67, 70, 205 USPQ 594, 596 (CCPA 1980) (MPEP § 2112).
As discussed above, the prior art teaches the production of a dental material used for producing dental devices/protheses via 3D printing methods, wherein the material comprises an oligomer, dicyclopentanyl methacrylate, crosslinker, silanized glass filler, and photoinitiator.
Note that Rist teaches that the oligomer used in the prior art composition is a (meth)acrylate terminated oligomer having a main chain made either by polymerizing ε-caprolactone, which forms a polyester, or by reacting a diisocyanate with a polyol, which forms a polyurethane (¶0014). The prior art oligomer therefore is either a polyester (meth)acrylate or a polyurethane (meth)acrylate. Note that applicant teaches the use of urethane (meth)acrylate oligomers and/or polyester (meth)acrylate oligomers as the oligomer component of the claimed invention(specification page 6: lines 13-19). Furthermore, one of ordinary skill in the art will recognize that dicyclopentanyl acrylate is a hydrophobic methacrylic ester comprising a C9 fused cycloalkyl group; note that applicant’s specification discloses the use of hydrophobic monomers having cycloalkyl groups as the required monomer component (specification page 5: lines 12-13).
The prior art dental device is therefore made via the same method of 3D printing as the claimed device from a composition that is made from the same compounds as used by applicant for the recited composition. As the prior art dental device appears to be the same as the claimed device, it is reasonably expected that its properties would necessarily be the same as those of the claimed invention. The burden is therefore shifted to the applicant to provide evidence demonstrating that the claimed properties would not be met by the prior art.
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.
Claims 17-19 are rejected under 35 U.S.C. 103 as being unpatentable over Sun et al, WO2009/032228.
Sun discloses the production of dental devices and protheses such as dentures, corresponding to the claimed intraoral device (for claim 17) from a polymerizable composition via a process comprising three dimensional printing and subsequent curing of the device (for claim 17) (¶0014-0017).
Example 19 of Sun (¶0079) discloses a light curable dental material comprising an oligomer (for claim 17); stearyl acrylate, corresponding to the claimed monomer (for claim 17); bisphenol A dimethacrylate, corresponding to the claimed crosslinker (for claim 17); and 2,4,6-trimethylbenzoyldiphenylphosphine oxide, corresponding to the claimed photoinitiator (for claim 17). Sun further discloses that the prior art dental material may comprise silanized glass (for claim 17) as a filler (¶0027).
Sun does not specifically disclose the production of a composition comprising the required silanized glass filler in combination with the oligomer, monomer, crosslinker, and photoinitiator.
It has been held that the selection of a known material based on its suitability for its intended use is prima facie obvious; see Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) (MPEP 2144.07). As noted above, Sun specifically teaches that silanized glass may be added to the dental material of WO2009/03228 as a filler. Barring a showing of evidence demonstrating unexpected results, it therefore would have been obvious to one of ordinary skill in the art to modify the composition of Sun’s Example 19 by adding silanized glass as a filler to improve its mechanical properties (for claim 17).
Regarding the properties of stain resistance (for claims 18, 19): As discussed above, the prior art renders obvious the production of a dental material used for producing dental devices/protheses via 3D printing methods, wherein the material comprises an oligomer, stearyl acrylate, bisphenol A dimethacrylate, silanized glass filler, and 2,4,6-trimethylbenzoyldiphenylphosphine oxide. Note that the oligomer is made via a process comprising the steps of 1) reacting a diisocyanate with the hydroxy-functional compound bisphenol A propoxylate to form an isocyanate-terminated intermediate and 2) reacting said intermediate with 2-hydroxyethyl methacrylate (0059); one of ordinary skill in the art will recognize that this process results in a methacrylate-functional polyurethane oligomer. Note that applicant teaches the use of urethane methacrylate oligomers as the oligomer component of the claimed invention(specification page 6: line 13). Furthermore, one of ordinary skill in the art will recognize that stearyl acrylate is a hydrophobic acrylic ester comprising a C18 alkyl group; note that applicant’s specification discloses the use of hydrophobic monomers having alkyl groups as the required monomer component (specification page 5: lines 12-13).
The prior art dental device is therefore made via the same method of 3D printing as the claimed device from a composition that is made from the same compounds as used by applicant for the recited composition. As the prior art dental device appears to be the same as the claimed device, it is reasonably expected that its properties would not be materially different from those of the claimed invention. The burden is therefore shifted to the applicant to provide evidence of an unobvious difference between the claimed invention and the prior art; see In re Fitzgerald cited earlier in this Action.
Claim 17 is rejected under 35 U.S.C. 103 as being unpatentable over Nguyen et al, WO2024/044330.
Nguyen discloses a photocurable composition used in the production of dental protheses and devices such as dentures, corresponding to the claimed intraoral device (for claim 17) via additive manufacturing (i.e., 3D printing) (for claim 17) (abstract, ¶0003, 0008). Said composition comprises ethoxylated difunctional bisphenol A dimethacrylate; at least one methacrylate monomer, corresponding to the claimed monomer (for claim 17); a difunctional urethane acrylate, corresponding to the claimed crosslinker (for claim 17); and a photoinitiator (for claim 17) (¶0012). Nguyen further teaches the inclusion of a filler such as glass having a silane coating (0018-0019)-i.e., silanized glass filler (for claim 17).
Regarding the claimed oligomer: As noted above, the prior art composition comprises ethoxylated bisphenol A dimethacrylate. This compound has the structure shown below.
PNG
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243
753
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Note that the structure shown above comprises (CH2CH2O) repeating units and therefore is a polyether structure, corresponding to the claimed oligomer (for claim 17).
Nguyen does not specifically disclose the production of a composition comprising the required silanized glass filler in combination with the oligomer, monomer, crosslinker, and photoinitiator.
As noted above, Nguyen teaches that silanized glass may be added to the composition of WO2024/044330 as a filler. Barring a showing of evidence demonstrating unexpected results, it therefore would have been obvious to one of ordinary skill in the art to prepare a dental device via 3D printing of a composition comprising silanized glass as a filler to improve its mechanical properties in view of the teachings of Nguyen (for claim 17); see Sinclair & Carroll Co. v. Interchemical Corp cited earlier in this Action.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JEFFREY S LENIHAN whose telephone number is (571)270-5452. The examiner can normally be reached Mon.-Fri. 5:30-2:00PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Heidi Riviere Kelley can be reached at 571-270-1831. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JEFFREY S LENIHAN/Examiner, Art Unit 1765
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