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 .
Any new grounds of rejection set forth below are necessitated by Applicant’s amendment. For this reason, the present action is properly made final.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office Action.
Claims 1-2, 4-9, 11-14 are pending.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 5 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 5 has been amended to recite a glass transition temperature of 15 ˚C or less. While a glass transition temperature -75 to 15 ˚C or less at [0094] of the PGPUB, a glass transition temperature of 15 ˚C or less is not supported.
Appropriate correction and/or clarification is required.
Claim Rejections - 35 USC § 103
Claims 1-2, 4-9, 11 are rejected under 35 U.S.C. 103 as being unpatentable over Ito et al. (JP 2019-199448, cited in IDS filed 6/23/2023) in view of Suzuki et al. (US 2017/0014312).
Regarding claim 1: Ito is directed to a dental composition comprising a compound (A) having a weight average molecular weight of urethanized (meth) acrylic compound (A) is preferably 500 to 50000, a monomer (B), and a photoinitiator polymerization initiator (C). The monomer (B) excludes the compound (A) having a weight average molecular weight of 2000 or more.
Ito doesn't specifically recite the component (A) has a glass transition region of temperatures. However, component (A) produced in Ito is substantially identical to the component (A) produced in the instant invention.
Specifically, Example 1 comprises the reaction of polyester polyol P-5010 manufactured by Kurray Co Ltd reacted with a polymer of adipic acid and 3-methyl-1,5-pentanediol, weight-average molecular weight Mw: 5,000, thereafter 75 g of 2-hydroxyethylacrylate and 0.4 g of hydroquinone monomethyl ether. This is the same synthesis of Example 1 of the present invention.
Case law holds that the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP 2112.01(I).
Hence, Ito suggests a component (A) having a two more glass transition temperatures within the scope of the claims. Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant's position; and (2) it would be the Office's position that the application contains inadequate disclosure, since one skilled in the art would not understand how to obtain the claimed properties with only the claimed reactants, claimed amounts, and substantially similar process of making.
Finally, when the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not. Further, when the claimed compositions are not novel they are not rendered patentable by recitation of properties, whether or not these properties are shown or suggested in the prior art. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). See MPEP 2112.01 (I).
The composition of Ito comprises a filler (F), although doesn’t mention any specific amount.
Suzuki is directed to a dental composition comprising a compound having a weight average molecular weight of at least 2000, a monomer (B) and a polymerization initiator (C), wherein the compound (A) has a glass transition temperature of 25-50 ˚C (abstract Suzuki). The compound (B) excludes the compound (A).
A filler is disclosed ([0085]) in an amount of 100-500 parts by mass per 100 parts of the composition comprising (a) (b) and (e) ([0092]) and is therefore well within the claimed range of 50-98% by mass based on a total mass of the dental composition. One skilled in the art would have been motivated to have selected this amount of filler in Ito for mechanical strength and good flexibility ([0092] Suzuki). Therefore, it would have been obvious to one skilled in the art at the time the invention was filed to have selected an amount of filler in Ito to arrive claim 1.
Regarding claims 2, 4: Compound (A) having a weight average molecular weight of urethanized (meth) acrylic compound (A) is preferably 500 to 50000, which has a urethane bond.
Regarding claim 5: Example 1 comprises the reaction of polyester polyol P-5010 manufactured by Kurray Co Ltd reacted with a polymer of adipic acid and 3-methyl-1,5-pentanediol, weight-average molecular weight Mw: 5,000, thereafter 75 g of 2-hydroxyethylacrylate and 0.4 g of hydroquinone monomethyl ether. This is the same synthesis of Example 1 of Ito, and therefore there is a reasonable expectation the compound would have the same glass transition temperature.
Regarding claim 6: Compound (A) is used in an amount of 10-90 mass of the compound (D). The amount of component (B) is used in an amount of 0.1-90 mass % of component (D). It follows the component (A) at least overlaps the claimed amount of 0.1-50 parts by mass of the compound (A) and (B).
Regarding claims 7-8: Ito doesn't specifically recite the component (A) has two or more glass transition temperatures. However, component (A) produced in Ito is substantially identical to the component (A) produced in the instant invention.
Specifically, Example 1 comprises the reaction of polyester polyol P-5010 manufactured by Kurray Co Ltd reacted with a polymer of adipic acid and 3-methyl-1,5-pentanediol, weight-average molecular weight Mw: 5,000, thereafter 75 g of 2-hydroxyethylacrylate and 0.4 g of hydroquinone monomethyl ether. This is the same synthesis of Example 1 of the present invention.
Case law holds that the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP 2112.01(I).
Hence, Ito suggests a component (A) having a two more glass transition temperatures within the scope of the claims. Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant's position; and (2) it would be the Office's position that the application contains inadequate disclosure, since one skilled in the art would not understand how to obtain the claimed properties with only the claimed reactants, claimed amounts, and substantially similar process of making.
Regarding claim 9: The ionic group in component (B) includes acid groups of carboxylic acid.
Regarding claim 11: Ito doesn't specifically recite the polymerizable group has a weight average molecular weight of 1250 or more ad less than 20,000 per its polymerizable group. However, component (A) produced in Ito is substantially identical to the component (A) produced in the instant invention. Specifically, Example 1 comprises the reaction of polyester polyol P-5010 manufactured by Kurray Co Ltd reacted with a polymer of adipic acid and 3-methyl-1,5-pentanediol, weight-average molecular weight Mw: 5,000, thereafter 75 g of 2-hydroxyethylacrylate and 0.4 g of hydroquinone monomethyl ether. This is the same synthesis of Example 1 of the present invention.
Case law holds that the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP 2112.01(I).
Hence, Ito suggests a component (A) having a polymerizable group having a weight average molecular weight within the scope of the claims. Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant's position; and (2) it would be the Office's position that the application contains inadequate disclosure, since one skilled in the art would not understand how to obtain the claimed properties with only the claimed reactants, claimed amounts, and substantially similar process of making.
Claims 12-14 are rejected under 35 U.S.C. 103 as being unpatentable over Ito and Suzuki as applied to claim 1 above, and further in view of Tomonao et al. (JP 2014/024775, cited in IDS filed 6/23/2023).
Regarding claims 12-14: Ito doesn’t specify the dental compositions are used in a composite resin, self-adhesive or cement.
Tomonao teaches that dental fillings (composites), cements, and adhesives used in dental materials contain radically polymerizable monomers, fillers, and photoinitiators. One skilled in the art would have been motivated to have used the composition of Ito as a dental fillings (composites), cements, and adhesives since they are dental materials that contain radically polymerizable monomers, fillers, and photoinitiators. Therefore, it would have been obvious to one skilled in the art at time the invention was filed to have used the composition of Ito as a dental fillings (composites), cements, and adhesives to arrive at claims 12-14 of the present invention.
Response to Arguments
Applicant's arguments filed 4/13/2026 have been fully considered but they are not persuasive.
Applicant argues (p. 5-6 Remarks) in view of the amendments of claim 1 to require a urethane bond, the rejection over Suzuki should be withdrawn.
This argument is found persuasive in light of the amendment of claim 1 to require a urethane bond.
Applicant argues (p. 6-8 Remarks) the claimed composition now recite a significant amount of 50% by mass or more and 98% or less of a filler based on a total mass of the dental composition. This yields a superior mechanical strength for use in restorative treatments that can concurrently achieve reduced polymerization shrinkage stress and excellent mechanical strength in the cured product. In contrast, Ito intends to provide photocurable compositions for mouth guards, occlusal splints, and denture base materials. Although Ito teaches inclusion of filler, Ito does not teach an amount. Indeed, one skilled in the art would recognize an amount of 50% or more filler would be deemed to excessive to satisfy Ito’s intended purpose. Optical articles such as these are typically produced from SLA, utilizing light to excite the photoinitiator. If filers are present in excessive amounts, light scattering and absorption increase, preventing light from reaching deeper regions. Oxygen diffusion and radical mobility become restricted at high filler loads. As a result, high filler load renders Ito’s resin composition unsatisfactory for the intended purpose. Therefore, one skilled in the art would not select an amount of filler recited in claim 1.
This argument is not found persuasive since there is no evidence to suggest the amount of filler recited in claim 1 would necessarily lead to a resin composition unsatisfactory for intended use in Ito. Further, Suzuki teaches an amount of filler within the scope of claim 1 and indicates the compositions can be used for making denture liner, wherein Ito is primarily directed to making denture base material. Therefore, it is the Examiner’s position that an amount of filler would not result in a resin composition unsatisfactory for the intended use in Ito’s denture liner.
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.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT T BUTCHER whose telephone number is (571)270-3514. The examiner can normally be reached Telework M-F 9-5 Pacific Time Zone.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Lanee Reuther can be reached at (571) 270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ROBERT T BUTCHER/Primary Examiner, Art Unit 1764
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