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 .
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 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.
DETAILED ACTION
Status of claims
The amendment filed on 01/06/2026 is acknowledged. Claims 1-22, 30, and 31 have been canceled. Claims 23-29 and 32-45 are under examination in the instant office action.
Rejections withdrawn
Applicant’s amendments and arguments filed on 01/06/2026 are acknowledged and have been fully considered. Any rejection and/or objection not specifically addressed below is herein withdrawn. Applicant’s amendments have overcome the 35 U.S.C. 102(a)(1) rejection of claims 23, 26-29, 32, 33, 35-39, 44, and 45 over Thalacker et al. (US 2006/0270751 A1) from the previous Office Action. The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set of rejections and/or objections presently being applied to the instant application.
Rejections maintained
The following rejections of the claims are remained for reasons of record and the following. The rejections are modified based on the amendments.
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.
This application currently names joint inventors. In considering patentability of the claims under 35 U.S.C. 103(a), the examiner presumes that the subject matter of the various claims was commonly owned at the time any inventions covered therein were made absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and invention dates of each claim that was not commonly owned at the time a later invention was made in order for the examiner to consider the applicability of 35 U.S.C. 103(c) and potential 35 U.S.C. 102(e), (f) or (g) prior art under 35 U.S.C. 103(a).
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103(a) 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 23, 26-39, 44, and 45 are rejected under 35 U.S.C. 103(a) as being unpatentable over Thalacker et al. (US 2006/0270751 A1).
Thalacker et al. teach a dental composition comprising
unsaturated monomers including polyethylene glycol di(meth)acrylate (the instant claims 35 and 36) (paragraph 46 and 73);
unsaturated urethane prepolymers (film-forming polymers in the instant claim 23) with a molecular weight (MW) of about 600-20,000 (substantially overlapping with the claimed 1000-20000 in the instant claim 23 and thus anticipates the claimed 1000-20000) (paragraph 75-77 and claims 1, 2, 6, and 8);
solvents including ethanol (paragraph 48 and 78-81 and claims 1 and 2);
fluoride-release agents including NaF (the instant claims 32 and 33) and fluoroaluminosilicate glass and the fluoride source and the filler being one and the same (paragraph 49 and 82 and claims 1 and 2);
10-50% by weight (the instant claim 29) of filler including borosilicate glass, pyrogenic silicas (the claimed viscosity modifier in the instant claims 44 and 45), etc., which is surface-treated with a silane coupling agent functionalized with acrylates and/or methacrylates reactive curing groups (the instant claim 26) in order to enhance the bond between the filler and the polymerizable resin (paragraph 82-84 and claims 1-2); and
photobleachable colorants including Methylene Blue (a polycyclic pigment, the instant claims 37-39) (claims 1 and 2).
Thalacker et al. also teach about 0-30% by weight of prepolymers (claim 6); about 3-10% by weight of solvents (paragraph 48 and 78-81 and claims 1 and 2); and about 0.3-5% by weight of fluoride-release agents including NaF (paragraph 49 and 82).
With respect to the art rejection above, it is noted that the reference does not teach that the composition can be used in the manner instantly claimed, [dental varnish]; however, the intended use of the claimed composition does not patentably distinguish the composition, per se, since such undisclosed use is inherent in the reference composition. In order to be limiting, the intended use must create a structural difference between the claimed composition and the prior art composition. In the instant case, the intended use does not create a structural difference, thus the intended use is not limiting.
Although Thalacker et al. are silent about the specific fluoride releasing profile in the instant claims 27 and 28, the composition disclosed by Thalacker et al. is the same as the claimed composition comprising the same fluoride-release glass and thus would necessarily have the same claimed fluoride releasing profile.
Thalacker et al. do not specify the same weight percentages of film component and solvent in the instant claim 23 and NaF in the instant claim 34.
This deficiency is cured by the rationale that a prima facie case of obviousness typically exists when the range of a claimed composition lies inside the range disclosed in the prior art, such as in the instant rejection.
The claimed range of film component is 20-80% by weight and the range of prepolymers taught in the prior art is about 0-30% by weight and therefor, overlaps with the claimed range.
The claimed range of solvents is 5-30% by weight and the range of solvents taught in the prior art is about 3-10% by weight and therefor, overlaps with the claimed range.
The claimed range of fluoride salt is 1-10% by weight and the range of fluoride-release agents taught in the prior art is about 0.3-5% by weight and therefor, overlaps with the claimed range.
Response to Applicants’ arguments:
Applicants argue that Thalacker et al. do not teach the claimed dental vanish and do not recognize the superior results achieved by the claimed composition with 20-80% by weight of film component.
However, this argument is not deemed persuasive.
First, as stated in the rejection above and in the previous office action, the dental varnish limitation is an intended use limitation of the claimed composition and does not patentably distinguish the composition, per se, since such undisclosed use is inherent in the reference composition.
Second, applicant merely argues that the product is different and nothing has been shown to substantiate this. From MPEP 716.01(c) II: The arguments of counsel cannot take the place of evidence in the record.
Claims 23, 24, 26-41, 44, and 45 are rejected under 35 U.S.C. 103(a) as being unpatentable over Thalacker et al. (US 2006/0270751 A1) in view of Zeng et al. (US 2007/0129459 A1).
The teachings of Thalacker et al. are discussed above and applied in the same manner.
Thalacker et al. do not specify the component of the fluoroaluminosilicate glass in the instant claim 24 and colorants including inorganic coloring agent including yellow iron oxide in the instant claims 40 and 41.
This deficiency is cured by Zeng et al. who teach a dental enamel adhesive coating composition comprising a filler (abstract and paragraph 42) including glass fillers such as silica-, barium- and aluminum-containing glass powders, strontium-containing glass powders or combination thereof having fluorine gradually releasing properties (paragraph 34), a solvent, pigments including yellow iron oxide (paragraph 53), and viscosity controller (paragraph 39) and exemplified glasses containing, by weight, 30% of SiO2, 20% of SrO, 15% of F, 10% of B2O3, 10% t of Al2O3 (paragraph 99 and 100). It would have been prima facie obvious before the effective filing date of the claimed invention to a person of ordinary skill in the art to combine the teachings in to combine the teachings paragraph 34 and paragraph 99 and 100 to envisage a glass comprising, by weight, 30% of SiO2, 10% of Al2O3, 10% of B2O3, 20% of SrO, 15% of F (total 85%) and adjust the proportion of any one of the component including Al2O3 to 100% total, i.e., 25% Al2O3.
It would have been prima facie obvious before the effective filing date of the claimed invention to a person of ordinary skill in the art to combine the teachings in Thalacker et al. and Zeng et al. to specify the glass in the composition taught by Thalacker et al. comprising, by weight, 30% of SiO2, 25% of Al2O3, 10% of B2O3, 20% of SrO, 15% of F and add pigments including yellow iron oxide in the composition taught by Thalacker et al. Incorporating pigments including yellow iron oxide in a dental enamel adhesive coating composition was well known to a person of ordinary skill in the art before the effective filing date of the claimed invention. The motivation for specifying the glass in the composition taught by Thalacker et al. comprising, by weight, 30% of SiO2, 25% of Al2O3, 10% of B2O3, 20% of SrO, 15% of F and adding pigments including yellow iron oxide in the composition taught by Thalacker et al. flows from their having been used in the prior art, and from their being recognized in the prior art as useful for the same purpose.
Claims 23, 25-39, and 42-45 are rejected under 35 U.S.C. 103(a) as being unpatentable over Thalacker et al. (US 2006/0270751 A1) in view of Burwell et al. (US 2010/0086497 A1).
The teachings of Thalacker et al. are discussed above and applied in the same manner.
Thalacker et al. do not specify the particle size of the fluoride-release glass/filler in the instant claim 25 and further comprising sweetener including sucralose in the instant claims 42 and 43.
This deficiency is cured by Burwell et al. who teach a mixture for forming a tooth remineralization film comprising an ion-releasing bioactive glass with D50 particle size of about 5-10 µm for an effect on the release rate of ions when in contact with water, a water-soluble polymer with a MW of about 1000-20,000, a solvent, and sweeteners including sucralose (abstract and paragraph 39, 59, 60, 82, 88, and 93).
It would have been prima facie obvious before the effective filing date of the claimed invention to a person of ordinary skill in the art to combine the teachings in Thalacker et al. and Burwell et al. to specify the D50 particle size of the fluoride-release glass/filler in the composition taught by Thalacker et al. being about 5-10 µm for an effect on the release rate of ions when in contact with water and further comprising sweeteners including sucralose. Ion-releasing bioactive glass in a tooth remineralization film having a D50 particle size of about 5-10 µm and a tooth remineralization film further comprising sweeteners including sucralose was well known to a person of ordinary skill in the art before the effective filing date of the claimed invention. The motivation for specifying them flows from their having been used in the prior art, and from their being recognized in the prior art as useful for the same purpose.
Response to Applicants’ arguments:
Arguments regarding the 2nd and 3rd 103 rejections are basically the same as the above 1st 103 rejection, thus the response discussed above applies here as well and is not persuasive for reason discussed above.
Conclusion
No claims are allowed.
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 extension fee 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 HONG YU whose telephone number is (571)270-1328. The examiner can normally be reached on 9 am - 5:30 pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ali Soroush can be reached on 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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/HONG YU/
Primary Examiner, Art Unit 1614
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