DETAILED ACTION
The present application is being examined under the pre-AIA first to invent provisions.
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.
Election/Restrictions
Applicant's election with traverse of the invention of Group I, claims 1-11, in the reply filed on 3/13/2026 is acknowledged. The traversal is on the ground(s) that because the inventions overlap in scope, there would not be a burden in searching all of the claimed inventions. This is not found persuasive because the invention of Group I reads on any composition comprising the recited elements, regardless of its end use. In contrast, the inventions of Groups II and III require that the prior art be searched for compositions comprising specific components that are used in specific manners. The mere fact that there is overlap between the claimed inventions does not overcome the fact searching the inventions of Groups II and III would add the additional burden of being required to search specific end uses/applications in addition to merely searching for the components required by Group I.
The requirement is still deemed proper and is therefore made FINAL.
Claims 12 and 13 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim.
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.
Claim 4 and 6-8 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.
Regarding claim 4: Claim 4 recites a limitation regarding the number average molecular weight (Mn) of the compound (A); however, the claim does not specify the units of the required range. The scope of the claim is therefore unclear.
Regarding claim 6: Claim 6 states that the composition may further comprises at least one mono(meth)acrylic acid ester compounds (E-1) and (E-2) which are represented by formulae (I) and (II) shown below, respectively, wherein X is a divalent C1-6 hydrocarbon group or an oxygen atom andR1 and R2 are chosen from formula (i) and formula (ii) and variable l may be any integer from 0 to 6.
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As written, the claim states that compounds (E-1) and (E-2) are each a mono(meth)acrylic acid ester compound; the description “mono(meth)acrylic acid ester” indicates that the compound is required to be an ester of either acrylic acid or methacrylic acid. The term “ester” is used in chemistry to refer to the functional group having the structure shown below.
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Note that when l is 0, however, the resulting structures will not be an ester of (meth)acrylic acid, as there will be no oxygen atom bonded to the carbonyl group. The scope of claim 6 is therefore indefinite, as it is unclear whether compounds (E-1) and (E-2) are required to be a (meth)acrylate ester-which would implicitly require that variable l be at least 1- or if they can be a compound that is not an ester, as allowed by the limitation that l is 0.
Claim 7 depends from claim 6 and does not correct this deficiency. Claim 7 is therefore indefinite per the same rationale as claim 6.
Regarding claim 8: Claim 8 depends from claim 6 and states that k and l are each independently 0 or 1. Per the same rationale as discussed above with respect to claim 6, the recitation that l may be 0 renders the claim indefinite, as it is unclear whether the compounds (E-1) and (E-2) are required to be an ester-as required by the phrase mono(meth)acrylic acid ester compound- or if they can be a compound that is not an ester, as is the result when variable l is 0.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 1-5 and 9-11 are rejected under 35 U.S.C. 103 as being unpatentable over Miyamoto et al, US5338769, in view of Yang et al, US5969000.
Miyamoto discloses a photocurable resin composition comprising a (meth)acrylated polycarbonate, polyolefin fine powder, a photopolymerization initiator, and (meth)acrylate-soluble oligomer (Column 6: lines 38-51), wherein said composition is used in dental products (Column 7: line 56-61).
Regarding the claimed (meth)acrylic compound (A): As noted above, the prior art composition comprises a (meth)acrylated polycarbonate. Miyamoto further specifies that the (meth)acrylated polycarbonate may be a polymer having an aromatic ring-containing repeating unit (for claim 2) (Column 4: lines 35-49) and a Mn of 200 to 10000, overlapping the claimed range (for claim 4), wherein the terminal hydroxy groups are esterified with (meth)acrylic acid (Column 4: lines 52-56). Note that this corresponds to the requirement that the terminal hydroxy groups are directly (meth)acryloylated (for claim 1). The prior art (meth)acrylated polycarbonate therefore corresponds to claimed component (A) (for claim 1).
Regarding the claimed (meth)acrylic ester compound (B): The prior art composition may further comprise a polyfunctional (meth)acrylate monomer (Column 7: lines 25-27). Note that Miyamoto exemplifies the use of difunctional (meth)acrylates and tri(meth)acrylates (Column 5: lines 37-60), corresponding to claimed component (B) (for claim 1), as said polyfunctional (meth)acrylate monomer.
Regarding the claimed initiator (D): As noted above, the prior art composition comprises a photopolymerization initiator (for claim 10), corresponding to claimed component (D) (for claim 1).
Regarding claim 3: The prior art teaches that the repeating unit of the polycarbonate structure may have the formula below (Column 4: lines 35-45).
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Note that each repeating unit contains a carbonate group. Furthermore, given that the Mn of the polycarbonate may be as high as 10000, an ordinary artisan will recognize that the prior art polycarbonate can have a structure containing more than 3 repeating units and thus can contain carbonate functional groups in an amount within the claimed range.
Regarding claim 5: The prior art composition may comprise (meth)acrylate monomer in addition to the (meth)acrylated polycarbonate, with the amount of (meth)acrylate monomer being up to 60 wt% (Column 5: lines 60-65). This implicitly corresponds to an amount of (meth)acrylated polycarbonate in the range of 40 wt% or more, overlapping the claimed range (for claim 5).
Miyamoto is silent regarding the inclusion of an inorganic filler having a particle diameter of 0.01 to 5 µm and a thermal initiator.
Yang discloses the production of photocurable dental compositions based on (meth)acrylated polycarbonates (Column 5: lines 36-50). AS taught by Yang, it was known in the art that such compositions could be modified via the addition of 25 to 90 wt% (for claim 9) of an inorganic filler having an average particle size in the range of 0.5 to 5 microns, corresponding to claimed component (C) (for claim 1), in order to improve mechanical properties such as compressive strength (Column 6: lines 38-55; Column 7: lines 33-57). Yang further teaches that dual curing methods using a thermal initiator such as benzoyl peroxide (for claim 11) were known in the art for such compositions (Column 3: lines 14-28).
Miyamoto and Yang are both directed towards the production of curable dental resin compositions comprising (meth)acrylated polycarbonate oligomers. Barring a showing of evidence demonstrating unexpected results, it would have been obvious to one of ordinary skill in the art to modify the composition of Miyamoto by adding an inorganic filler having an average particle size in the range of 0.5 to 5 microns, with the reasonable expectation of obtaining a final composition having improved properties as taught by Yang (for claim 1).
Furthermore, as taught by Yang it was known in the art to use a dual cure system comprising a thermal initiator and a photoinitiator to cure such compositions as an alternative to the sole use of a photoinitiator. It therefore would have been obvious to modify the teachings of Miyamoto by using a combination of thermal initiator and a photoinitiator, with the reasonable expectation of obtaining a cured composition as desired (for claim 11).
Claim(s) 6-8 are rejected under 35 U.S.C. 103 as being unpatentable over Miyamoto et al, US5338769, in view of Yang et al, US5969000, as applied to claims 1-5 and 9-11 above, and further in view of Sakamaki et al, US2019/017455.
The disclosures of Miyamoto and Yang are discussed earlier in this Action.
Miyamoto is silent regarding the use of a monomer corresponding to either claimed formula (I) or (II).
Sakamaki discloses the production of a photocurable dental resin composition (abstract), wherein said composition comprises a blend of (meth)acrylic monomers which includes a monomer (D) having a structure comprising one or more aromatic rings (abstract, 0016). 3-phenoxybenzyl (meth)acrylate, corresponding to claimed formula (II) wherein X is oxygen (for claims 6, 7) and R2 is formula (i) with k being 0 (for claims 6, 8) and R4 being a hydrogen or methyl group (for claim 6), is taught for use as monomer (D) (0218). Sakamaki discloses that the use of the prior art monomer composition results in improvements in properties such as impact strength (0216).
Miyamoto and Sakamaki are both directed towards the production of curable dental resin compositions comprising (meth)acrylate monomer mixtures. Barring a showing of evidence demonstrating unexpected results, it would have been obvious to one of ordinary skill in the art to modify the composition of Miyamoto by using the monomer mixture of Sakamaki as part of the polymerizable monomer mixture, with the reasonable expectation of obtaining a final composition having improved properties as taught by Sakamaki.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JEFFREY S LENIHAN whose telephone number is (571)270-5452. The examiner can normally be reached Mon.-Fri. 5:30-2:00PM.
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/JEFFREY S LENIHAN/Primary Examiner, Art Unit 1765
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