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 § 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, 4-5, and 8-11 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Shinya et al. (US Serial No. 2010/0033661).
Regarding claims 1-2, 4-5, and 8; Shinya et al. teaches a composition comprising a polybutadiene acrylate (TE-2000, urethane polybutadiene acrylate; MW about 2,000, Tg -9°C, see instant spec [0139]), hydroxyethyl acrylate, and Irgacure®184 (photoinitiator) [0062]. It is noted that Shinya 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.
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 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.
Claim(s) 1 and 9-11 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ukida et al. (US Patent No. 4331795).
Regarding claim 1; 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]), 2-hydroxyethyl acrylate, 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.
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 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.
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) 3, 6, and 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ukida et al. (US Patent No. 4331795), as applied to claim 1 above.
Ukida et al. teaches the basic claimed composition, as set forth above, with respect to claim 1.
Regarding claim 3; 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.
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.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Yoshida et al. (US Serial No. 2013/028664 and 2015/0050509) teaches a photocurable resin composition used as an adhesive and/or a dental material, comprising the reaction product of G-3000 (polybutadiene glycol) to be reacted with KARENZ® MOI [0123, 0237 of ‘604; 0137, 0258, 0307 of ‘509]. The compound as taught by Yoshida et al. is used as an intermediate compound and thus does not read on the claimed invention.
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
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