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 .
This application is a national stage entry under 35 U.S.C. §371 of International Application No. PCT/JP2021/048422 filed 12/24/2021.
Acknowledgment is made of applicant's claim for foreign priority under 35 U.S.C. §119(a)-(d) by Application No. JP 2020-218032 filed 12/25/2020, which papers have been placed of record in the file.
Claims 1-14 are pending.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 5 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 5 recites the compound (A) has a glass transition temperature at 20 ˚C or less. However, claim 1 recites compound (A) has a glass transition temperature region of 20 to 40 ˚C. Therefore, claim 5 does include all the limitations of claim 1.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Appropriate correction and/or clarification is required.
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.
Claims 1, 9, 10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Suzuki et al. (US 2017/0014312).
Regarding claim 1: 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).
Regarding claim 7: Compound (A) may be a mixture of (meth)acrylic acid esters having two or more glass transition temperatures.
Regarding claim 9: The monomer (b) can include an acid group ([0042]).
Regarding claim 10: A filler is disclosed ([0085]).
Regarding claim 14: A dental cement is disclosed.
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.
Claims 2, 6-7, 12, 14 are rejected under 35 U.S.C. 103 as being unpatentable over Suzuki et al. (US 2017/001431).
Regarding claim 2: The compound (A) has a weight average molecular weight of 10000 to 500,000 ([0035]). While a specific compound (A) having a weight average molecular weight within the claimed range of 2,000-50,000, is not specifically mentioned, the Mw at least overlaps the claimed range.
A prima facie case of obviousness typically exists when the ranges of a claimed composition overlap the ranges disclosed in the prior art. In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003).
Regarding claim 6: The compound (A) is used in an amount of 10-250 parts per 100 parts of compound (A) and compound (B) ([0049]). While a specific composition comprising compound (A) in claimed amounts is not specifically mentioned, it would have been obvious to have selected this amount since the amounts at least overlap.
A prima facie case of obviousness typically exists when the ranges of a claimed composition overlap the ranges disclosed in the prior art. In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003).
Claims 1-11 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). A machine translation of JP 2019-199448 is provided with this office action.
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).
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 10: The composition comprises a filler (F).
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 as applied to claim 1 above, and further in view of Tomonao et al. (JP 2014/024775, cited in IDS filed 6/23/2023).
A machine translation of JP 2014/024775 is provided with this office action.
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.
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