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 .
Response to Amendment
The Amendment filed 07/29/2026 has been entered. Claims 1-6 remain pending in the application. Claim 6 is newly added.
Claim Rejections - 35 USC § 112(a)
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 6 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.
The original claims and instant Specification do not explicitly and literally provide written support for “A agent and B agent are not mixed with each other in the dental polymerization kit” of Claim 6. Applicant recites in the Remarks submitted on 07/29/2026 that support for the new Claim 6 can be found in ¶ 0014 and 0194 of the instant Specification. However, there is no mention of “A agent and B agent are not mixed with each other” in either of the cited paragraphs.
¶ 0014 discloses “mixing the A agent and the B agent together immediately before the use”. However, the disclosure does not explicitly disclose “A agent and B agent are not mixed with each other in the dental polymerization kit”.
¶ 0194 discloses “A agent and B agent of the dental polymerization kit of each of Examples and Comparative Examples were filled in a light-blocking double-barrel syringe”. However, the disclosure does not explicitly say the A agent and B agent were not mixed prior to being filled in the syringe.
Consequentially, the lack of written support raises doubt as to possession of the claimed invention at the time of filing.
Claim Rejections - 35 USC § 102/103
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 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-6 are rejected are under 35 U.S.C. 102(a)(1) and/or (a)(2) as being anticipated by Kenji et al. (JP 2014/214122A as disclosed in the IDS dated 10/20/2023, English machine translation incorporated herewith; hereafter as “Kenji”) as evidenced by Nanjing Chemical Material Corp. (“3-Methacryloxypropyltrimethoxysilane”, Nanjing Chemical Material Corp., www.njchemm.com; hereafter as “Nanjing”), NOAA (“Cupric Acetate”, CAMEO Chemicals, www.cameochemicals.noaa.gov; hereafter as “NOAA”), and Cayman Chemical (“Product Information: 5-Aminosalicylic acid”, Cayman Chemical Company, hereafter as “Cayman”).
Regarding Claims 1, and 3-4, Kenji teaches a dental polymerization composition as a kit [Claims 1, 6; ¶ 0075], corresponding to the dental polymerization kit of Claim 1. Kenji further teaches:
(meth) acrylic polymerizable monomer, such as [2,2,4-
trimethylhexamethylenebis(2-carbamoyl oxyethyl)]di(meth)acrylate (UDMA) [Claim 6; Table 2; Examples 7-9; ¶ 0078], corresponding to a non-acidic monomer having no acidic group and having an ethylenic unsaturated group of Claim 1, and thereby reading on B agent contains the non-acidic monomer of Claim 4;
a first agent [Claim 6], corresponding to A agent of Claim 1;
wherein said first agent contains a (meth)acrylic polymerizable monomer such as N-(meth)acryloyl-5-aminosalicylic acid [Claim 6; Table 2; Example 9; ¶ 0085], corresponding to A agent containing an acidic substance of Claim 1, and wherein the acidic substance is an acidic monomer having an acidic group and an ethylenic unsaturated group of Claim 3; and
a second agent [Claim 6], corresponding to B agent of Claim 1;
wherein said second agent contains:
a transition metal compound, such as cupric acetate [Claim 6; Table 2; Examples 7-9; ¶ 0050], corresponding to B agent containing a transition metal compound of Claim 1; and
triazinethiol (thione) derivative as a reducing agent [Claim 6; Table 2; Examples 7-9; ¶ 0010], corresponding to B agent containing a reducing agent of Claim 1;
wherein a second agent is in the form of a paste [¶ 0075], thereby reading on B agent being in the form of a paste of Claim 1; and
wherein the second agent comprises approximately 75 wt. % of filler such as 3-methacryloyloxypropyltrimethoxysilane [Table 2; Examples 7-9; ¶ 0088].
NOAA discloses that cupric acetate is soluble in water [NOAA, Page 1].
Cayman discloses that N-(meth)acryloyl-5-aminosalicylic acid is soluble in water [Cayman, ¶ 2].
Nanjing discloses that 3-methacryloyloxypropyltrimethoxysilane is soluble in organic solvents but not soluble in water [Nanjing, ¶ 1].
Since the N-(meth)acryloyl-5-aminosalicylic acid is of Kenji is water soluble, the water soluble transition metal compound (cupric acetate) is considered to be miscible in N-(meth)acryloyl-5-aminosalicylic acid, thereby reading on wherein the transition metal compound is soluble in the acidic substance of Claim 1.
Since the second agent of Kenji primarily comprises 3-methacryloyloxypropyltrimethoxysilane (a water insoluble compound), the cupric acetate (a water soluble transition metal compound) is considered not to be miscible in the second agent, thereby reading on wherein the transition metal compound is solid in the B agent of Claim 1.
Regarding Claim 2, Kenji further teaches the first agent contains peroxide as an oxidizing agent [Claim 6; ¶ 0010], corresponding to wherein the A agent further contains an oxidizing agent of Claim 2.
Regarding Claim 5, Kenji further teaches 0.0001 parts by weight or more per 100 parts by weight of the total amount of (meth)acrylic polymerizable monomer [¶ 0052] corresponding to wherein a ratio of the transition metal compound in the B agent is 0.0001% by mass or more of Claim 5.
Regarding Claim 6, Kenji further teaches the dental polymerization composition is in a two-paste product form with a first paste containing a peroxide (corresponds to A agent containing an acidic substance), and a second paste containing triazinethiol (thione) and a transition metal compound (corresponding to B agent containing a reducing agent and transition metal compound, respectively) [¶ 0075-0076]. Since Kenji explicitly teaches the two separate pastes in the dental polymerization composition and the composition does not require mixing, the two-paste product form of a first paste and a second paste will be interpreted to correspond to wherein the A agent and the B agent are not mixed with each other in the dental polymerization kit of Claim 6.
Response to Arguments
Applicant's arguments filed 07/29/2024 have been fully considered but they are not persuasive.
Applicant argues (1) that Example 9 of Kenji includes a transition metal compound together with an acidic substance and a reducing agent in the paste B which must progress the dissolution of the transition metal compound due to moisture absorption. However, Kenji also teaches broader embodiments, including at least the embodiments cited above [Claims 1, 6; ¶ 0075], wherein the dental polymerization composition is in a two-paste product form (corresponds to the dental polymerization kit), with a first paste containing a peroxide (corresponds to A agent containing an acidic substance), and a second paste containing triazinethiol (thione) and a transition metal compound (corresponding to B agent containing a reducing agent and transition metal compound) [Claim 6; ¶ 0075-0076]. Since Kenji teaches all the claimed elements in a single embodiment, the instant claimed invention is deemed anticipated. While Kenji teaches embodiments that do not anticipate the claimed invention, the prior must be considered in its entirety and, “the prior art’s mere disclosure of more than one alternative does not constitute a teaching away from any of these alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed….” In re Fulton, 391 F.3d 1195, 1201, 73 USPQ2d 1141, 1146 (Fed. Cir. 2004). See MPEP 2141.02(VI). Furthermore, the combination of a transition metal compound with an acidic substance and a reducing agent does not mean the dissolution of the transition metal “must progress” as stated in Applicant’s arguments. For example, the instant Specification discloses that the transition metal compounds were dissolved in the A agent or the B agent due to the moisture absorption from wet air and cured the A agent or the B agent within 24 hours [Instant Specification, ¶ 0192]. This implies that without moisture the transition metal may not dissolve. The transition metal compound can also be prevented from dissolving for a variety of reasons well known in the field including coating the transition metal compound to maintain the solid form, or from the use of a chelating agent, or by adjusting the pH. Furthermore, Kenji even explicitly teaches if monomer contains an acidic group, it is preferable for the acid group-containing monomer be contained in paste A as to not react with the triazinethiol (thione) derivative and transition metal in paste B [¶ 0076] which is the same motivation provided in the instant Specification [instant Specification, ¶ 0011]. Thus, Applicant’s argument is not persuasive.
Applicant argues (2) that Kenji does disclose the idea of the present invention of “blending a transition metal compound into a B agent which is different from the agent containing an acidic substance and also not allowing the transition metal compound to dissolve in the B agent to suppress the reaction between the transition metal compound and the reducing agent in the B agent, thereby suppressing a gradual increase in viscosity of both the A agent and B agent or the gradual curing of them." However, in response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., “the idea of the present invention”) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). Furthermore, ideas are not by themselves patentable. In addition, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). Thus, Applicant’s argument is not persuasive.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Ishino et al. (EP 2108664 A1) teaches a dental material comprising polymerizable monomers such as 2-hydroxyethylmethacrylate [Table 1], transition metals such as copper (II) acetate [¶ 0157], trimethylurea [¶ 0165], 10-methacryloyloxydecyldihydrogenphosphate [Table 1], 2,2-bis[4-(3-(meth)acryloyl oxy-2-hydroxypropoxy)phenyl] propane [Table 1], and silica filler [¶ 0230], wherein a bonding material is stored as two separate liquids and mixed together immediately before use [¶ 0184].
THIS ACTION IS MADE FINAL. 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.
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/DORIS LING/
Examiner, Art Unit 1764
/ARRIE L REUTHER/Supervisory Primary Examiner, Art Unit 1764
