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 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.
Claims 3, 25-28, 31-32, 37, 40, 42-43, 46, 56, 60, 70, 79 and 82 are 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.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 25 recites the broad recitation a water-soluble acrylate-based monomer, a water-soluble acrylamide-based monomer and a water-soluble chelating monomer, and the claim also recites a multi-arm poly(ethylene glycol) acrylate, a multi-arm poly(ethylene glycol) acrylamide, an acrylate functionalized polyether, an acrylamide functionalized polyether, and a methacrylamide functionalized polyether which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. Accordingly, dependent claim 26-28, 31-32, 37, 43, 46, 56, 60, 70, 79 and 82 are indefinite.
Claims 3 and 32 contain the trademark/trade name Jeffamine, ED-900 and ED-2003. Where a trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph. See Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982). The claim scope is uncertain since the trademark or trade name cannot be used properly to identify any particular material or product. A trademark or trade name is used to identify a source of goods, and not the goods themselves. Thus, a trademark or trade name does not identify or describe the goods associated with the trademark or trade name. In the present case, the trademark/trade name is used to identify/describe the curable sealer and, accordingly, the identification/description is indefinite. See MPEP 2173.05(u).
Claim 40 recites the limitation "obturation material" in lines 4-5. There is insufficient antecedent basis for this limitation in the claim.
Claim 42 recites the limitation "obturation material" in lines 6, 9 and 11. There is insufficient antecedent basis for this limitation in the claim.
Claim 43 recites (b) as 5-acrylamido-2,4,6-triiodo isophthalic acid, however, claim 25 recites (b) as a free radical polymerization initiator. Claim 43 recites (c) as free-radical polymerization initiator, however, claim 25 recites (c) as a radiopaque material. It is unclear if the ingredients of claim 43 correspond to ingredients in claim 25, therefore claim 43 is indefinite.
Claim 46 recites (c) as 1-phenyl-1,2-propandione, however, claim 25 recites (c) as a radiopaque material. Claim 46 recites (d) as 5-acrylamido-2,4,6-triiodo isophthalic acid, however, claim 25 recites (d) as an aqueous carrier. Claim 46 recites (e) as an aqueous carrier, however, claim 25 recites (d) as the aqueous carrier. It is unclear if the ingredients of claim 46 correspond to ingredients in claim 25, therefore claim 46 is indefinite.
Claim 56 recites (b) as 5-acrylamido-2,4,6-triiodo isophthalic acid, however, claim 25 recites (b) as a free radical polymerization initiator. Claim 56 recites (c) as a first-free radical polymerization initiator, however, claim 25 recites (c) as a radiopaque material. Claim 56 recites (d) as a second free-radical polymerization initiator, however, claim 25 recites (d) as the aqueous carrier. Claim 56 recites (e) as an aqueous carrier, however, claim 25 recites (d) as the aqueous carrier. It is unclear if the ingredients of claim 56 correspond to ingredients in claim 25, therefore claim 56 is indefinite.
Claim 60 recites (b) as 5-acrylamido-2,4,6-triiodo isophthalic acid, however, claim 25 recites (b) as a free-radical polymerization initiator. Claim 60 recites (c) as free-radical polymerization initiator, however, claim 25 recites (c) as a radiopaque material. It is unclear if the ingredients of claim 60 correspond to ingredients in claim 25, therefore claim 60 is indefinite.
Claim 70 recites (b) as water soluble ionic or non-ionic iodinated x-ray contrast acrylate monomer, however, claim 25 recites (b) as a free-radical polymerization initiator. Claim 70 recites (c) as free-radical polymerization initiator, however, claim 25 recites (c) as a radiopaque material. It is unclear if the ingredients of claim 70 correspond to ingredients in claim 25, therefore claim 70 is indefinite.
Claim 79 recites (b) as water soluble ionic iodinated x-ray contrast acrylate monomer, however, claim 25 recites (b) as a free-radical polymerization initiator. Claim 79 recites (c) as free-radical polymerization initiator, however, claim 25 recites (c) as a radiopaque material. It is unclear if the ingredients of claim 79 correspond to ingredients in claim 25, therefore claim 79 and dependent claim 82 are indefinite.
Claim Rejections - 35 USC § 102
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 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.
Claim(s) 1-2, 6, 13-14, 16, and 24 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Sovak (EP 0 436 316), when taken with Isopropyl alcohol Product Specification; Sigma-Aldrich and Isopropyl alcohol; ChemicalBook.
Regarding claims 1-2, 6, 13-14, 16, and 24: Sovak (EP ‘316) discloses the composition of Example 16 [Ex. 16; pg. 10, ln. 40-56] contains acrylamide, 5-N-acrylamido-2,4,6-triiodoisophthalic acid, N,N’-methylenebisacrylamide, isopropanol, and ammonium persulfate [Ex. 16; pg. 10, ln. 40-56].
A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim [see MPEP 2111.02].
Note 5-N-acrylamido-2,4,6-triiodoisophthalic acid {2,4,6-Triiodo-5-[(1-oxo-2-propen-1-yl)amino]-1,3-benzenedicarboxylic acid}:
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[Ex. 16].
Isopropyl alcohol Product Specification provides evidence for isopropyl alcohol containing water [§ Test].
Isopropyl alcohol provides evidence for isopropyl alcohol having a pH of 7.0 [§ Properties].
Note: claim 6 further defines species of the water-soluble chelating monomer component recited in claim 1. However, as claimed, such species only further define the genus of the optional water-soluble chelating monomer component (i.e. claims 1 and 6 do not require the curable mixture of ingredients to comprise the water-soluble chelating monomer component).
Note: claim 16 further defines species of the light initiator component recited in claim 2. However, as claimed, such species only further define the genus of the optional light initiator component (i.e. claims 2 and 16 do not require the curable mixture of ingredients to comprise the light initiator component).
Claim(s) 25-26, 31 and 37 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Vogel et al. (US 2003/0211083).
Regarding claims 25-26, 31 and 37: Vogel et al. (US ‘083) discloses injectable compositions comprising microspheres for dental use [abstract; 0002, 0019], wherein Example 23 [Ex. 23; 0137-0138] prepares a composition as in Ex. 15 [Ex. 15; 0129-0131] by adding glycerol to an aqueous solution of sodium chloride and sodium acetate, and adjusting the pH to 5.9-6.1. Then 80 g of N-tris-hydroxy-methyl methylacrylamide, 10 g (acrylamido-3-propionamido)-3-triiodo-2,4,6-benzoic acid, 35 mg diethylaminoethylacrylamide, and 10 g N,N-methylene-bis-acrylamide are added to the solution, followed by the addition of ammonium persulfate and N,N,N’,N’-tetramethylenediamine [Ex. 23; 0137-0138].
A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim [see MPEP 2111.02].
The claimed effects and physical properties, i.e. at least one liquid part has a viscosity of less than 100 cP at 25 oC [instant claim 25]; at least one liquid part has a viscosity of less than 20 cP at 25 oC [instant claim 26]; heat curable upon exposure to human body temperature, and the obturation material has a Shore A hardness of at least 10 when cured [instant claim 31]; a hardness value of at least 40 shore A within 40 seconds of exposure to light energy [instant claim 37], would inherently be achieved, as “Products of identical chemical composition can not have mutually exclusive properties.” 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. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) [see MPEP 2112.01].
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 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.
Claim(s) 25-26, 31, 37, 70, 79 and 82 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sovak (EP 0 436 316), when taken with Isopropyl alcohol Product Specification; Sigma-Aldrich.
Regarding claims 25-26, 31 and 37: Sovak (EP ‘ 316) discloses Example 17 [Ex. 17; pg. 10, ln. 58 – pg. 11, ln. 12] prepares a composition comprising 2.0g acrylamide, 8.0g 5-N-acrylamido-2,4,6-triiodo-isophthalic acid, 0.1 g N,N’-methylenebis-acrylamide, 0.1 g benzoyl peroxide, and 50 ml isopropanol [Ex. 17; pg. 10, ln. 58 – pg. 11, ln. 12].
Sovak (EP ‘316) does not specifically disclose two or more liquid parts. However, at the time of invention, a person having ordinary school in the art would have found it obvious to have prepared two or more liquid parts, as it is prima facie obvious to make components separable. See In re Dulberg, 289 F.2d 522, 523, 129 USPQ 348, 349 (CCPA 1961) [MPEP 2144.04].
Additionally, a prima facie case of obviousness exists where changes in the sequence of adding ingredients derived from the prior art process steps. Ex parte Rubin, 128 USPQ 440 (Bd. App. 1959). See also In re Burhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946) (selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results); In re Gibson, 39 F.2d 975, 5 USPQ 230 (CCPA 1930) (Selection of any order of mixing ingredients is prima facie obvious.) [See MPEP 2144.04].
A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim [see MPEP 2111.02].
The claimed effects and physical properties, i.e. at least one liquid part has a viscosity of less than 100 cP at 25 oC [instant claim 25]; at least one liquid part has a viscosity of less than 20 cP at 25 oC [instant claim 26]; heat curable upon exposure to human body temperature, and the obturation material has a Shore A hardness of at least 10 when cured [instant claim 31]; a hardness value of at least 40 shore A within 40 seconds of exposure to light energy [instant claim 37], would implicitly be achieved, as “Products of identical chemical composition can not have mutually exclusive properties.” 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. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) [see MPEP 2112.01].
Note 5-N-acrylamido-2,4,6-triiodoisophthalic acid {2,4,6-Triiodo-5-[(1-oxo-2-propen-1-yl)amino]-1,3-benzenedicarboxylic acid}:
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[Ex. 17].
Isopropyl alcohol Product Specification provides evidence for isopropyl alcohol containing water [§ Test].
Regarding claims 70, 79 and 82: Sovak (EP ‘ 316) discloses Example 17 [Ex. 17; pg. 10, ln. 58 – pg. 11, ln. 12] contains ~ 4 wt% acrylamide (28 mmol), 16 wt% 5-N-acrylamido-2,4,6-triiodo-isophthalic acid (13 mmol), 0.2 wt% N,N’-methylenebis-acrylamide, 0.2 wt% benzoyl peroxide, and 79 wt% isopropanol (0.784 g/ml) [Ex. 17; pg. 10, ln. 58 – pg. 11, ln. 12]. Sovak (EP ‘ 316) discloses the comonomer (acrylamide) will normally be present in a mole ratio of about 10-50:1 of the triiodoaryl monomer [pg. 6, ln. 44-47].
Sovak (EP ‘ 316) does not disclose Ex. 17 containing 16 wt% acrylamide. However, in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) [See MPEP 2144.05]. Additionally, while Ex. 17 does not contain 16 wt% acrylamide, one of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to have prepared a composition containing 16 wt% acrylamide, as Sovak (EP ‘ 316) discloses the comonomer (acrylamide) will normally be present in a mole ratio of about 10-50:1 of the triiodoaryl monomer [pg. 6, ln. 44-47]. See also In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980) [MPEP 2144.05].
While Sovak (EP ‘ 316) does not disclose 60 wt% isopropanol, differences in concentration will not support the patentability of subject mat-ter encompassed by the prior art unless there is evidence indicating such concentration is critical. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to dis-cover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955); see also Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382; In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969). For more recent cases applying this principle, see Merck & Co. Inc. v. Biocraft Laboratories Inc., 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989); In re Kulling, 897 F.2d 1147, 14 USPQ2d 1056 (Fed. Cir. 1990); and In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997) [see MPEP 2144.05].
Claim(s) 27-28 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sovak (EP 0 436 316), when taken with Isopropyl alcohol Product Specification; Sigma-Aldrich as applied to claim 25 above, and further in view of Rheinberger et al. (US 5,780,668).
Regarding claims 27-28: Sovak (EP ‘316) discloses the basic claimed material [as set forth above with respect to claim 25 above].
Sovak (EP ‘316) does not disclose degassing the monomer solution. However, Rheinberger et al. (US ‘668) discloses polymerization of ethylenically unsaturated triiodo substituted benzoic acid derivatives [abstract; 3:9-67], wherein the monomer solution is freed from oxygen by three freeze-pump-thaw cycles under argon [7:35-52]. Sovak (EP ‘316) and Rheinberger et al. (US ‘668) are analogous art because they are concerned with a similar technical difficulty, namely the polymerization of ethylenically unsaturated triiodo substituted benzoic acid derivatives. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have combined three freeze-pump-thaw cycles, as taught by Rheinberger et al. (US ‘668) in the invention of Sovak (EP ‘316), and would have been motivated to do so since Rheinberger et al. (US ‘668) discloses oxygen removal by three freeze-pump-thaw cycles [7:35-52].
Claim(s) 16-17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sovak (EP 0 436 316), when taken with Isopropyl alcohol Product Specification; Sigma-Aldrich as applied to claim 2 above, and further in view of Rheinberger et al. (US 5,780,668).
Regarding claims 16-17: Sovak (EP ‘316) discloses the basic claimed material [as set forth above with respect to claim 2 above].
Sovak (EP ‘316) does not disclose a photoinitiator. However, Rheinberger et al. (US ‘668) discloses polymerization of ethylenically unsaturated triiodo substituted benzoic acid derivatives [abstract; 3:9-67], wherein the initiator can be a thermal initiator or a photoinitiator [4:62-64] such as camphorquinone [5:16-36]. Rheinberger et al. (US ‘668) discloses amines, such as triethanolamine [5:16-36] to be used in combination with the photoinitiator. Sovak (EP ‘316) and Rheinberger et al. (US ‘668) are analogous art because they are concerned with a similar technical difficulty, namely the polymerization of ethylenically unsaturated triiodo substituted benzoic acid derivatives. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have combined camphorquinone and triethanolamine, as taught by Rheinberger et al. (US ‘668) in the invention of Sovak (EP ‘316), and would have been motivated to do so since Rheinberger et al. (US ‘668) discloses the initiator can be a photoinitiator [4:62-64 such as camphorquinone [5:16-36], and triethanolamine can be used in combination with the photoinitiator [5:16-36].
Claim(s) 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sovak (EP 0 436 316) when taken with Isopropyl alcohol Product Specification; Sigma-Aldrich as applied to claim 2 above, and further in view of Figuly et al. (US 8,062,673).
Regarding claim 19: Sovak (EP ‘316) discloses the basic claimed mixture [as set forth above with respect to claim 2 above].
Sovak (EP ‘316) does not disclose 2,2’-azobis[2-(2-imidazolin-2-yl) propane dihydrochloride. However, Figuly et al. (US ‘673) discloses 2,2’-azobis[2-(2-imidazolin-2-yl) propane dihydrochloride [8:36-66] is an initiator for the polymerization of the ethylenically unsaturated monomers. Sovak (EP ‘316) and Figuly et al. (US ‘673) are analogous art because they are concerned with a similar technical difficulty, namely the polymerization of the ethylenically unsaturated monomers. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have combined 2,2’-azobis[2-(2-imidazolin-2-yl) propane dihydrochloride, as taught by Figuly et al. (US ‘673) in the invention of Sovak (EP ‘316), and would have been motivated to do so since Figuly et al. (US ‘673) discloses 2,2’-azobis[2-(2-imidazolin-2-yl) propane dihydrochloride [8:36-66] is an initiator for the polymerization of ethylenically unsaturated monomers.
Claim(s) 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sovak (EP 0 436 316) when taken with Isopropyl alcohol Product Specification; Sigma-Aldrich as applied to claim 1 above, and further in view of Scharp et al. (US 2004/0136971).
Regarding claim 20: Sovak (EP ‘316) discloses the basic claimed mixture [as set forth above with respect to claim 1 above].
Sovak (EP ‘316) does not disclose potassium persulfate. However, Scharp et al. (US ‘971) discloses biological materials [abstract], wherein potassium persulfate can be used as a catalyst [0091; 0254] for the polymerization of the ethylenically unsaturated monomers. Sovak (EP ‘316) and Scharp et al. (US ‘971) are analogous art because they are concerned with a similar technical difficulty, namely the polymerization of ethylenically unsaturated monomers for biological materials. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have combined potassium persulfate, as taught by Scharp et al. (US ‘971) in the invention of Sovak (EP ‘316), and would have been motivated to do so since Scharp et al. (US ‘971) discloses potassium persulfate as a catalyst for the polymerization of the ethylenically unsaturated monomer [0091; 0254].
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 1-3, 6, 13-14, 16-17, 19-20, 22, 24-28, 31-32, 37, 40, 42-43, 46, 56, 60, 70, 79, and 82 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-25 of U.S. Patent No. 11,680,141. Although the claims at issue are not identical, they are not patentably distinct from each other because the curable mixture and method of filling a root canal with a hydrogel polymer of U.S. Patent No. 11,680,141 substantially overlaps in scope with the instant claimed curable mixture and method of fling a root canal with a hydrogel polymer. While U.S. Patent No. 11,680,141 does not specifically disclose 5-N-acrylamido-2,4,6-triiodoisophthalic acid as the radiopaque material in claims 1 and 17, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have employed 5-N-acrylamido-2,4,6-triiodoisophthalic acid as the radiopaque material, as U.S. Patent No. 11,680,141 claims 5-N-acrylamido-2,4,6-triiodoisophthalic acid as the radiopaque material [claim 8]. Additionally, “It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art.” In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) (citations omitted) [see MPEP 2144.06].
In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997) [See MPEP 2144.05].
See attached form PTO-892.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL F PEPITONE whose telephone number is (571)270-3299. The examiner can normally be reached on 7:00 AM - 3:30 PM.
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/MICHAEL F PEPITONE/Primary Examiner, Art Unit 1767