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 § 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.
Claim(s) 1, 2, 4, and 6-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ukida et al. (US Patent No. 4331795)
Regarding claims 1, 2, and 4; Ukida et al. teaches, in a preferred embodiment, a polybutadiene acrylate (TE-2000, urethane polybutadiene acrylate; MW about 2,600, Tg -9°C, see instant spec [0139]; instant A), 2-hydroxyethyl acrylate (instant B), and cumene hydroperoxide (photoinitiator) [Ex1, Table1]. It is noted that Ukida et al. teaches TE-2000 and hydroxyethyl acrylate to be preferred components for compound (A) and (B) respectfully, thus the Examiner takes the position that TE-2000 and hydroxyethyl acrylate have a solubility of less than 20 g/L in acetone at 25°C.
Ukida et al. teaches, in the preferred embodiment, a 60:40 ratio of the butadiene oligomer to the acrylic monomer, however fails to teach a content of compound (A) (oligomer) is 0.1 to 50 parts with respect to the total 100 parts by mass of compound (A) and (B) (oligomer and acrylate monomer). Ukida et al. contemplates a larger range, wherein the ratio of the oligomer to the acrylic monomer is in a range of 90 to 40:10 to 60 [col2, line47-50]. In the instance the ratio of oligomer to monomer is 40:60; the polybutadiene based oligomer is employed in an amount of 40 parts with respect to the total 100 parts by mass of compounds (A) and (B). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. See 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.
The Examiner makes note that “dental” composition is merely an intended use limitation. If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999). See also Rowe v. Dror, 112 F.3d 473, 478, 42 USPQ2d 1550, 1553 (Fed. Cir. 1997); see MPEP §2111.02.
Regarding claims 6 and 7; Ukida et al. teaches the composition may comprise acrylic acid as the acrylate monomer [col1, line58-62], and the composition may further comprise a filler [col3, line17-20]. A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art, including the non-preferred embodiments. Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.); See MPEP §2123. Ukida et al. does not specifically disclose an embodiment containing acrylic acid and/or a filler. However, at the time of invention a person of ordinary skill in the art would have found it obvious to prepare a composition further containing the acrylic acid or filler, based on the invention of Ukida et al., and would have been motivated to do so since Ukida et al. suggests that the composition can contain acrylic acid and/or fillers.
Regarding claim 8; according to the specification, TE-2000 has a weight average molecular weight per polymerizable group of about 1250 or more [0139].
Regarding claims 9-11; “a dental composite resin”, “a self-adhesive dental resin”, and “a dental cement” are merely intended use limitations. The language of the instant claims merely require the composition of claimed 1, thus the limitations to being used in dental field are directed to intended use. If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999). See also Rowe v. Dror, 112 F.3d 473, 478, 42 USPQ2d 1550, 1553 (Fed. Cir. 1997); see MPEP §2111.02.
Response to Arguments
Applicant's arguments filed 13 July 2026 have been fully considered but they are not persuasive.
Applicant's arguments do not comply with 37 CFR 1.111(c) because they do not clearly point out the patentable novelty which he or she thinks the claims present in view of the state of the art disclosed by the references cited or the objections made. Further, they do not show how the amendments avoid such references or objections.
As such, Ukida et al. (US Patent No. 4331795) is still relied upon for rendering obvious the basic claimed composition, as set forth above.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JESSICA ROSWELL whose telephone number is (571)270-5453. The examiner can normally be reached M-F 8:00 am to 5:00 pm.
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/JESSICA M ROSWELL/Primary Examiner, Art Unit 1767
