DETAILED ACTION
Pending Claims
Claims 1-15 and 18-26 are pending.
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 .
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim Rejections - 35 USC § 112, 2nd paragraph (b)
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.
Claims 1-15 and 18-26 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 claims 1-15 and 18-26, claim 1 is drawn to a dental material comprising: A) a monomer component, and optionally B) a filler component. Claim 1 states: wherein i) the diketone is present at greater than or equal to 0.2% by weight in the total composition. Claim 3 states: wherein i) the diketone is present at greater than or equal to 0.4% by weight in the total composition of the dental material of 100% by weight. It is unclear if “the total composition” is referring the “dental material” or the “A) monomer component” thereof. For the purpose of the prior art search, these amounts have been interpreted as based on the total A) monomer component. Claims 2, 4-15, and 18-26 are rejected because they are dependent from claim 1.
Further regarding claim 7, claim 7 recites the limitation "the i) acidic monoesters" in the dental material according to claim 1. There is insufficient antecedent basis for this limitation in the claim. This claim has been interpreted as limiting component c) of claim 1.
Further regarding claim 7, the claim states: comprises at least one phosphoric acid of the general formulae I, Ia, Ib and/or II or mixtures of at least two of the monoesters selected from formulae I, Ia, Ib and II. It then goes on to state: wherein formulas I, Ia, Ib and II at least one residue or two residues selected from R1, R2 and R3 correspond to a group of formula III or IIIa. These compounds correspond to monoesters, diesters, and polyesters, which are inconsistent with the previously cited “phosphoric acid” and “monoesters”. Accordingly, it is unclear which of these limitations control the scope of the claim. For the purpose of the prior art search, the claim has been interpreted as: wherein c) comprises at least one compound of the formulae I, Ia, Ib and II.
Further regarding claim 7, the claim mentions formulas VIb and VIIb. However, the claim fails to present chemical formulas identified as VIb and VIIb. Accordingly, it is unclear what “formulas VIb and VIIb” are referring to.
Further regarding claim 7, formulas VIIIa and VIIIb appear to be missing an oxygen atom attached to the interior double bond. Accordingly, formulas VIIIa and VIIIb have been interpreted as:
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.
Further regarding claim 11, claim 11 attempts to further limit component b) of claim 1 with a material selected from: (i) and (ii) and/or (iii). This alternative limitation is improper causing the scope of the claim to be unclear. Specifically, it is unclear if the claim is limited any of (i), (ii), (iii), and combinations thereof; or if it is limited to {(i) and (ii)}, {(i) and (iii)}, {(i) and (ii) and (iii)}, and {(iii)}. For the purpose of the prior art search, the claim has been interpreted to require one or more of all the materials presented in (i), (ii), and (iii).
Further regarding claims 13 and 24, claim 13 states: wherein at least one hydrophilic alkylene oxide-based di-functional (meth)acrylate-based crosslinker is selected from Polyethylene glycol di(meth)acrylate and/or polypropylene glycol di(meth)acrylate or mixtures thereof, selected from pentapropylene glycol dimethacrylate, pentapropylene glycol diacrylate, hexapropylene glycol dimethacrylate, hexapropylene glycol diacrylate, octapropylene glycol dimethacrylate, octapropylene glycol diacrylate, nonapropylene glycol dimethacrylate, nonapropylene glycol diacrylate, decapropylene glycol dimethacrylate, decapropylene glycol diacrylate, undecapropylene glycol dimethacrylate, undecapropylene glycol diacrylate, dodecapropylene glycol dimethacrylate, dodecapropylene glycol diacrylate, and mixtures of at least two of the aforementioned di(meth)acrylates. It is unclear if the list of polypropylene glycol di(meth)acrylates listed after “selected from”: (a) fully controls the scope of the claim, overriding the previous “and/or” “or mixtures thereof” limitations; (b) limits all polypropylene glycol di(meth)acrylates in the claim; or (c) limits all polypropylene glycol di(meth)acrylates in mixtures including polypropylene glycol di(meth)acrylates. Claim 24 is rejected because it fails to alleviate this issue.
Claim 13 has been interpreted as: wherein at least one hydrophilic alkylene oxide-based di-functional (meth)acrylate-based crosslinker is selected from polyethylene glycol di(meth)acrylate, polypropylene glycol di(meth)acrylate, and mixtures thereof, wherein the polypropylene glycol di(meth)acrylate is selected from the group consisting of pentapropylene glycol dimethacrylate, pentapropylene glycol diacrylate, hexapropylene glycol dimethacrylate, hexapropylene glycol diacrylate, octapropylene glycol dimethacrylate, octapropylene glycol diacrylate, nonapropylene glycol dimethacrylate, nonapropylene glycol diacrylate, decapropylene glycol dimethacrylate, decapropylene glycol diacrylate, undecapropylene glycol dimethacrylate, undecapropylene glycol diacrylate, dodecapropylene glycol dimethacrylate, and dodecapropylene glycol diacrylate.
Further regarding claim 18, similar to claim 11, claim 18 features: an initial limitation for “b)” including both “and/or” and “or”; a second limitation for “a)” including “or”, “and/or”, and “and mixtures of”; and a second limitation for “b)” including “or” and “and mixtures of”. The scope of the claim is unclear due to these improper alternative limitations. For the purpose of the prior art search, the claim has been interpreted to require one or more of all the materials presented in the second limitation of “a)” and optionally one or more of all the materials present in the second limitation of “b)”.
Further regarding claim 19, claim 19 states: wherein e) the diketone of the at least one initiator and/or the at least one initiator system comprises 1,7,7-trimethyl-bicyclo-[2.2.1]-hepta-2,3-dione (champherquinone), phenylpropanedione and at least one co-initiator comprising a tert-amine 2-n- butoxyethyl-4-(dimethylamino)benzoate. It is unclear if the claim requires:
{1,7,7-trimethyl-bicyclo-[2.2.1]-hepta-2,3-dione (champherquinone) AND phenylpropanedione} and at least one co-initiator comprising a tert-amine 2-n- butoxyethyl-4-(dimethylamino)benzoate; or
{1,7,7-trimethyl-bicyclo-[2.2.1]-hepta-2,3-dione (champherquinone) OR phenylpropanedione} and at least one co-initiator comprising a tert-amine 2-n- butoxyethyl-4-(dimethylamino)benzoate.
For the purpose of the prior art search, the claim has been interpreted to require: {1,7,7-trimethyl-bicyclo-[2.2.1]-hepta-2,3-dione (champherquinone) OR phenylpropanedione} and at least one co-initiator comprising a tert-amine 2-n- butoxyethyl-4-(dimethylamino)benzoate.
Further regarding claim 20, claim 20 states: c) i) 4 to 20% by weight of at least one acidic monoester of at least one phosphoric acid of the general formulae I, Ia, Ib and/or II, 2-(meth)acryloyloxyethylphenylic acid phosphate and/or 10-(meth)acryloyloxydecylic acid phosphate, and ii) 1 to 10% by weight of at least one carboxylic acid functionalized and/or carboxylic acid anhydride functionalized (meth)acrylate monomer, and or a mixture of i) and ii). The “and” before “ii)” indicates that both “i)” and “ii)” are required. However, the “and or a mixture of i) and ii)” raises the possibility that both “i)” and “ii)” are actually not required. Accordingly, the scope of the claim is unclear.
Claim Rejections - 35 USC § 112, 4th paragraph (d)
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.
Claims 2, 5, 8, 14, 20, and 24 are 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.
Regarding claim 2, independent claim 1 includes components a), b), c), d), and g) in part A). Component c) is: at least one olefinic acid ester of a phosphoric acid and/or at least one olefinic acid ester of a thiophosphoric acid. Claim 2 attempts to further limit claim 1 where c) is: a mixture of acidic monomers comprising i) at least one olefinic acid ester of a phosphoric acid and/or at least one olefinic acidic ester of a thiophosphoric acid, in combination with ii) at least one olefinic carboxylic acid and/or at least one olefinic carboxylic acid anhydride. This is an improper shift in scope that fails to properly further limit claim 1.
Regarding claim 5, independent claim 1 includes components a), b), c), d), and g) in part A). Component c) is: at least one olefinic acid ester of a phosphoric acid and/or at least one olefinic acid ester of a thiophosphoric acid. Claim 5 attempts to further limit claim 1 where c) is: 5 to 30% by weight of a mixture of acidic monomers comprising i) at least one olefinic acid ester of a phosphoric acid and/or at least one olefinic acidic ester of a thiophosphoric acid, in combination with ii) at least one olefinic carboxylic acid and/or at least one olefinic carboxylic acid anhydride. This is an improper shift in scope that fails to properly further limit claim 1. Furthermore, claim 5 appears to no longer require component g).
Regarding claim 8, independent claim 1 includes components a), b), c), d), and g) in part A). Component c) is: at least one olefinic acid ester of a phosphoric acid and/or at least one olefinic acid ester of a thiophosphoric acid. Claim 8 attempts to further limit claim 1 where c) is: i) 4 to 20% by weight of acidic monoester of at least one phosphoric acid of the general formulae I, Ia, Ib and/or II, 2-(meth)acryloyloxyethylphenylic acid phosphate, and/or 10-(meth)acryloyloxydecyl acid phosphate, and ii) 2 to 10% by weight of 4-(methacryloyloxyethyl)trimellitic anhydride (4-META) and/or 4-methacryloyloxyethyltrimellitic acid (4-MET). This is an improper shift in scope that fails to properly further limit claim 1. Furthermore, claim 8 appears to no longer require component g).
Regarding claim 14, independent claim 1 includes components a), b), c), d), and g) in part A). Component c) is: at least one olefinic acid ester of a phosphoric acid and/or at least one olefinic acid ester of a thiophosphoric acid. Claim 14 attempts to further limit claim 1 where c) is: mixture of acidic monomers i) at least one acidic monoester of at least one phosphoric acid of the general formulae I, Ia, Ib and/or II, 2-(meth)acryloyloxyethylphenylic acid phosphate and/or 10-(meth)acryloyloxydecylic acid phosphate, and (ii) 4-methacryloyloxyethyltrimellitic acid (4-MET) and/or its anhydride (4-META). This is an improper shift in scope that fails to properly further limit claim 1.
Regarding claim 20, independent claim 1 includes components a), b), c), d), and g) in part A). Component c) is: at least one olefinic acid ester of a phosphoric acid and/or at least one olefinic acid ester of a thiophosphoric acid. Claim 20 attempts to further limit claim 1 where c) is: i) 4 to 20% by weight of at least one acidic monoester of at least one phosphoric acid of the general formulae I, Ia, Ib and/or II, 2-(meth)acryloyloxyethylphenylic acid phosphate and/or 10-(meth)acryloyloxydecylic acid phosphate, and ii) 1 to 10% by weight of at least one carboxylic acid functionalized and/or carboxylic acid anhydride functionalized (meth)acrylate monomer, and or a mixture of i) and ii). This is an improper shift in scope that fails to properly further limit claim 1. Furthermore, claim 20 appears to no longer require component g).
Regarding claim 24, claim 13 states recites a specific list of polypropylene glycol di(meth)acrylates. Claims 24 attempts to further limit claim 13 with: which comprises at least one hydrophilic alkylene oxide-based di-functional (meth)acrylate-based crosslinker, selected from polyethylene glycol di(meth)acrylate and/or polypropylene glycol di(meth)acrylate or mixtures thereof with at least five ethylene glycol or propylene glycol groups. This improperly broadens the scope of claim 13.
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.
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 1, 4, 6, 7, 9-13, 15, 18, 21-23, 25, and 26 are rejected under 35 U.S.C. 103 as being unpatentable over Hecht et al. (US 2006/0004122 A1).
Regarding claims 1, 4, 6, 9-13, 18, 21-23, and 26, Hecht et al. disclose: (1) a self-adhesive, radiation curable, polymerizable dental material (Abstract; paragraphs 0024-0029; Example 1 in paragraphs 0080-0089) comprising
A) a monomer component (Example 1: paragraphs 0084-0089) comprising
(1 & 11-13) b) at least one hydrophilic alkylene oxide-based di-functional (meth)acrylate-based crosslinker, which i) does not comprise urethane (meth)acrylate and/or ii) does not comprise aromatic residues, or a mixture of at least two of these crosslinkers, wherein in each case independently one (meth)acrylate is selected from methacrylate and acrylate (Example 1: paragraph 0086; see also paragraph 0047),
(1 & 4) c) at least one olefinic acid ester of a phosphoric acid and/or at least one olefinic acid ester of a thiophosphoric acid (Example 1: paragraph 0084; see also paragraphs 0040-0044),
(1) d) at least one initiator and/or initiator system each having an absorption maximum of 420 to 550 nm and comprising i) diketone (Example 1: paragraph 0088; see also paragraph 0059) and at least one ii) co-initiator selected from a tert-amine and a 1,2-methylenedioxybenzene (Example 1: paragraphs 0087; see also paragraph 0059); and
(1) g) disubstituted 4,4'-di(oxabenzene)dialkylmethane of the formula IX
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(IX)
with R1, R2, R5 and R6 in Formula IX each independently selected from H or C1 to C4-alkyl, and with R3 and R4 each linear and divalent C1 to C4 alkylene with n = 2 to 15 and m = 2 to 15 (Example 1: paragraph 0085; see also paragraph 0048); and optionally
B) a filler component comprising
(1 & 18) at least one dental glass or mixtures of dental glasses (Example 1: paragraphs 0081-0082; see also paragraphs 0051-0057), wherein the total composition of the dental material is 100% by weight; wherein
i) diketone and ii) co-initiator are present at a molar ratio of ii) : i) of greater than or equal to 1.1 (Example 1: paragraphs 0087-0088), wherein i) the diketone is present at greater than or equal to 0.2% by weight in the total A) monomer component (Example 1: paragraph 0088);
(6) wherein A) the monomer component and B) the filler component are present in the dental material in a mass ratio of 100 : 0 to 60 : 40, and wherein the total composition of the dental material is 100% by weight (Example 1: paragraph 0080: 1 : 3.8 converts to 20.8 : 79.2);
(9) which comprises A) the monomer component in admixture with B) the filler component, and wherein A) the monomer component and B) the filler component are present in the mass ratio of 59 : 41 to 20 : 80, and wherein the total composition of the dental material is 100% by weigh (Example 1: paragraph 0080: 1 : 3.8 converts to 20.8 : 79.2);
(21) polymerized dental material obtainable by polymerizing a dental material (paragraphs 0068, 0079 & 0132);
(22) a method comprising sealing fissures in enamel and/or dentin using a self-adhesive, radiation-curable material, or producing a radiation-cured, self-adhesive bond to a substrate using the self-adhesive, radiation-curable dental material (paragraphs 0068, 0079 & 0132); and (26) which comprises producing a radiation-cured, self-adhesive bond to a substrate using the self-adhesive, radiation-curable dental material, wherein the substrate comprises a metallic substrate, a ceramic substrate, a polymeric molding, and/or a hybrid material (paragraphs 0068, 0079 & 0132).
Note: The following is a calculation of the molar ratio of ii) : i) in the exemplary embodiment of Hecht et al.:
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The exemplary embodiment of Hecht et al. features a combination of triethylene glycol dimethacrylate (corresponding to claimed component b) and propoxylated bisphenol A dimethacrylate (corresponding to claimed component g) as their reactive component featuring one or more ethylenically unsaturated compounds without an acid-functional group (see Example 1: paragraphs 0085-0086; see also paragraphs 0026 & 0045-0050). This exemplary embodiment fails to disclose the use of (1, 10 & 23) a) at least one at least difunctional urethane (meth)acrylate, wherein in each case independently urethane (meth)acrylate is selected from urethane methacrylate and urethane acrylate (including 1,6-Bis(methacryloxy-2-ethoxycarbonylamino)-2,4,4-trimethylhexane (UDMA)). However, the general teachings of Hecht et al. disclose that their reactive component featuring one or more ethylenically unsaturated compounds without an acid-functional group can also include urethane(meth)acrylates, including UDMA (see paragraph 0050).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to formulate the exemplary embodiment of Hecht et al. with at least one at least difunctional urethane (meth)acrylate because: (a) the exemplary embodiment of Hecht et al. features a combination of triethylene glycol dimethacrylate (corresponding to claimed component b) and propoxylated bisphenol A dimethacrylate (corresponding to claimed component g) as their reactive component featuring one or more ethylenically unsaturated compounds without an acid-functional group; and (b) the general teachings of Hecht et al. disclose that their reactive component featuring one or more ethylenically unsaturated compounds without an acid-functional group can also include urethane(meth)acrylates, including UDMA.
Regarding claim 7, the teachings of Hecht et al. are as set forth above and incorporated herein. The exemplary embodiment of Hecht et al. features hydroxyethyl methacrylate phosphate (corresponding to claimed component c) as their reactive component featuring one or more ethylenically unsaturated compounds with P-OH group(s) (see Example 1: paragraph 0084; see also paragraphs 0025 & 0040-0044). This exemplary embodiment fails to disclose the use of (7) c) at least one compound of the formulae I, Ia, Ib and II (see claim for structures). However, the general teachings of Hecht et al. disclose that phosphoric esters of glyceryl di(meth)acrylate, pentaerythrityl tri(meth)acrylate and bisphenol-A glycidyl (meth)acrylate are equally suitable ethylenically unsaturated compounds with P-OH group(s) (see paragraph 0042). In light of this, it has been found that combining or substituting equivalents known for the same purpose is prima facie obvious – see MPEP 2144.06.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to formulate the exemplary embodiment of Hecht et al. with at least one compound of the formulae I, Ia, Ib and II (see claim for structures) because: (a) the exemplary embodiment of Hecht et al. features hydroxyethyl methacrylate phosphate (corresponding to claimed component c) as their reactive component featuring one or more ethylenically unsaturated compounds with P-OH group(s); (b) the general teachings of Hecht et al. disclose that phosphoric esters of glyceryl di(meth)acrylate, pentaerythrityl tri(meth)acrylate and bisphenol-A glycidyl (meth)acrylate are equally suitable ethylenically unsaturated compounds with P-OH group(s); and (c) it has been found that combining or substituting equivalents known for the same purpose is prima facie obvious.
Regarding claim 15, the teachings of Hecht et al. are as set forth above and incorporated herein. The exemplary embodiment of Hecht et al. features triethylene glycol dimethacrylate (corresponding to claimed component b) as part of their reactive component featuring one or more ethylenically unsaturated compounds without an acid-functional group (see Example 1: paragraph 0086; see also paragraphs 0026 & 0045-0050). Theis exemplary embodiment fails to disclose: (15) b) at least two different hydrophilic alkylene oxide-based di-functional (meth)acrylate-based crosslinkers selected from {i) and ii)} or {i) and iii)} or {i), ii) and iii)}:
i) 1,2-ethanediol dimethacrylate, diethylene glycol dimethacrylate (DEGMA), triethylene glycol dimethacrylate (TEGDMA), tetraethylene glycol dimethacrylate, propylene glycol dimethacrylate, dipropylene glycol dimethacrylate, tripropylene glycol dimethacrylate, 1,2-ethanediol diacrylate, diethylene glycol diacrylate, triethylene glycol diacrylate, tetraethylene glycol diacrylate, propylene glycol diacrylate, dipropylene glycol diacrylate, tripropylene glycol diacrylate, and/or tetrapropylene glycol diacrylate;
(ii) polyethylene glycol di(meth)acrylate and/or polypropylene glycol di(meth)acrylate or mixtures thereof with at least five ethylene glycol or propylene glycol groups; and
iii) 1,3-butylene glycol dimethacrylate, hexanediol dimethacrylate, octanediol dimethacrylate, decanediol dimethacrylate, dodecanediol dimethacrylate.
However, the general teachings of Hecht et al. disclose that hexanediol dimethacrylate and dodecanediol dimethacrylate are equally suitable (mono-, di- or higher-) alcohol-based (meth) acrylates for their reactive component featuring one or more ethylenically unsaturated compounds without an acid-functional group (see paragraph 0047). In light of this, it has been found that combining or substituting equivalents known for the same purpose is prima facie obvious – see MPEP 2144.06.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to formulate the exemplary embodiment of Hecht et al. with at least two different hydrophilic alkylene oxide-based di-functional (meth)acrylate-based crosslinkers selected from {i) and ii)} or {i) and iii)} or {i), ii) and iii)} because: (a) the exemplary embodiment of Hecht et al. features triethylene glycol dimethacrylate (corresponding to claimed component b) as part of their reactive component featuring one or more ethylenically unsaturated compounds without an acid-functional group; (b) the general teachings of Hecht et al. disclose that hexanediol dimethacrylate and dodecanediol dimethacrylate are equally suitable (mono-, di- or higher-) alcohol-based (meth)acrylates for their reactive component featuring one or more ethylenically unsaturated compounds without an acid-functional group; and (c) it has been found that combining or substituting equivalents known for the same purpose is prima facie obvious.
Regarding claim 25, the teachings of Hecht et al. are as set forth above and incorporated herein. Hecht et al. fail to explicitly disclose a material: (25) which has a shear bond strength to dentin of greater than or equal to 10 MPa and/or a shear bond strength to enamel of greater than or equal to 12 MPa. However, the skilled artisan would have expected the teachings of Hecht et al. to obviously embrace embodiments capable of satisfying this property because the teachings of Hecht et al. obviously satisfy all of the material/chemical limitations (and amounts thereof) of the claimed invention.
Therefore, the skilled artisan would have expected the teachings of Hecht et al. to obviously embrace embodiments capable of satisfying the instantly claimed shear bond strength property because the teachings of Hecht et al. obviously satisfy all of the material/chemical limitations (and amounts thereof) of the claimed invention.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Hecht et al. (US 2006/0004122 A1) in view of Hohmann et al. (US 2021/0353508 A1 or WO 2020/058464 A1). Note: all citations of Hohmann et al. are directed to the equivalent US publication.
Regarding claim 3, the teachings of Hecht et al. are as set forth above and incorporated herein. The exemplary embodiment of Hecht et al. fails to disclose: (3) a molar ratio of ii) : i) of greater than or equal to 1.15. Rather, the exemplary embodiment discloses a molar ratio of approximately 1.12. However, it has been found that a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close – see MPEP 2144.05.
Therefore, the teachings of Hecht et al. would have obviously satisfied the instantly claimed molar ratio (greater than or equal to 1.15) because: (a) the exemplary embodiment of Hecht et al. has a molar ratio of approximately 1.12; and (b) it has been found that a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close.
The exemplary embodiment of Hecht et al. fails to disclose: (3) wherein i) the diketone is present at greater than or equal to 0.4% by weight in the total A) monomer component of 100% by weight. Rather, the exemplary embodiment of Hecht et al. discloses an amount of 0.2% by weight.
Hohmann discloses a related composition (see Abstract; paragraphs 0001-0012) suitable for use in dental applications (see paragraph 0013). The composition of Hohman features a similar photoinitiator combination of i) and ii) (see paragraph 0081). Furthermore, Hohmann demonstrates that the photoinitiator can be present in an amount of up to 10% by weight (see paragraph 0044).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to formulate the exemplary embodiment of Hecht et al. with the instantly claimed amount of i) (greater than or equal to 0.4% by weight) because: (a) the exemplary embodiment of Hecht et al. discloses an amount of 0.2% by weight; (b) Hohmann discloses a related composition suitable for use in dental applications; (c) the composition of Hohman features a similar photoinitiator combination of i) and ii); and (d) Hohmann further demonstrates that the photoinitiator can be present in an amount of up to 10% by weight.
Claim 19 is rejected under 35 U.S.C. 103 as being unpatentable over Hecht et al. (US 2006/0004122 A1) in view of Yoshinaga et al. (US 2017/0174621 A1).
Regarding claim 19, the teachings of Hecht et al. are as set forth above and incorporated herein. The exemplary embodiment of Hecht et al. features a combination of camphorquinone (Bicyclo[2.2.1]heptane-2,3-dione, 1,7,7-trimethyl-, (1S)-) and dimethylaminoethyl benzoate (see Example: paragraphs 0087-0088). Accordingly, the exemplary embodiment fails to disclose: (19) at least one co-initiator comprising a tert-amine 2-n-butoxyethyl-4-(dimethylamino) benzoate.
Yoshinaga et al. disclose a related composition suitable for use in dental applications (see Abstract; paragraphs 0012-0027). Yoshinaga et al. also contemplate the use of a ketone initiator with a tertiary amine co-initiator (see paragraph 0162). Yoshinaga et al. demonstrate that the dimethylaminoethyl benzoate of Hecht et al. and 2-n-butoxyethyl-4-(dimethylamino) benzoate are recognized in the art as equally suitable co-initiators for diketone initiators (see paragraph 0163). In light of this, it has been found that combining or substituting equivalents known for the same purpose is prima facie obvious – see MPEP 2144.06.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to formulate the exemplary embodiment of Hecht et al. with a 2-n-butoxyethyl-4-(dimethylamino) benzoate co-initiator because: (a) the exemplary embodiment of Hecht et al. features a combination of camphorquinine (initiator) and dimethylaminoethyl benzoate (co-initiator); (b) Yoshinaga et al. disclose a related composition suitable for use in dental applications; (c) Yoshinaga et al. also contemplate the use of a ketone initiator with a tertiary amine co-initiator and demonstrate that the dimethylaminoethyl benzoate of Hecht et al. and 2-n-butoxyethyl-4-(dimethylamino) benzoate are recognized in the art as equally suitable co-initiators for diketone initiators; and (d) it has been found that combining or substituting equivalents known for the same purpose is prima facie obvious.
International Search Report
The international search report cited five X-references. These references have been considered.
Communication
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL J FEELY whose telephone number is (571)272-1086. The examiner can normally be reached Monday-Friday 8am-5pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Randy Gulakowski can be reached at (571)272-1302. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/MICHAEL J FEELY/Primary Examiner, Art Unit 1766
June 7, 2026
Prosecution Insights