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 Election/Restrictions
Applicant's timely election with traverse of Group I, claims 1, 5, 6, and 36-38, in the reply filed 05/22/2026 is acknowledged.
The traversal is on the ground(s) that the prior art Kormann (US 2008/0149883 A1) fails to disclose the technical feature in the present claim 1 as “the coolant is capable of being used in dentistry”. Applicant argues that the disclosed antifreeze composition of Kormann is not capable of being used in dentistry due to its toxicity, and thus Kormann cannot anticipate or render obvious the present claims (p. 6).
In response, Applicant’s argument is not persuasive. The term “the coolant is capable of being used in dentistry” does not mean that the coolant needs to be nontoxic.
The limitations “for cooling a device for use in dentistry” and “capable of being used in dentistry” are an intended use/result and do not add structural difference, thus the intended use/result is extended little patentable weight. See MPEP § 2112.02. Groups I, II and III lack unity of invention because even though the inventions of these groups require the technical feature of a coolant comprising glycerine, this technical feature is not a special technical feature as it does not make a contribution over the prior art Nativ (US 2019/0117220 A1) and Nicol (WO2020191449A1). Nativ teaches a coolant comprising a mixture of water with glycerol (claim 10, [0059]). Nicol teaches that a coolant composition comprises a coolant and water, wherein the coolant includes glycerol ([00020]).
Thereby the restriction requirement is still deemed proper and is therefore made FINAL.
Claims 1, 5, 6, 15, 18, 21, 22, 24, 29, and 32-40 are currently pending. Claims 15, 18, 21, 22, 24, 29, 32-35, and 39-40 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected inventions, there being no allowable generic or linking claim.
Therefore, claims 1, 5, 6, and 36-38 are currently under examination.
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 6 is 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 6, the phrase "preferably" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d). For the purpose of the compact prosecution, this limitation in claim 6 is interpreted as “The coolant according to claim 5, comprising at least 10 wt% water”.
Appropriate correction is required.
Claim Rejections - 35 USC § 102
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.
1. Claims 1, 5, and 36-38 are rejected under 35 U.S.C. 102(a)(1)/102(a)(2) as being anticipated by Nativ (US 2019/0117220 A1, hereinafter Nativ).
Regarding claims 1 and 5, the limitations “for cooling a device for use in dentistry” and “capable of being used in dentistry” are an intended use/result and do not add structural difference, thus the intended use/result is extended little patentable weight. See MPEP § 2112.02.
The instant invention discloses that glycerine is propane-1,2,3-triol, and is also known as glycerin or glycerol (instant US [0076]).
Nativ teaches a coolant comprising a mixture of water with glycerol (claim 10, [0059]).
Regarding claim 36-38, Nativ teaches that the coolant comprises a mixture of water with glycerol, wherein the glycerol is in an amount of between 90% and 98.3% by weight in the coolant ([0059]), which falls within the claimed ranges of “at least 50 wt% glycerine”, “at least 60 wt% glycerine”, and “at least 70 wt% glycerine”.
2. Claims 1 and 5 are rejected under 35 U.S.C. 102(a)(1)/102(a)(2) as being anticipated by Nicol (WO2020191449A1, hereinafter Nicol).
Regarding claims 1 and 5, the limitations “for cooling a device for use in dentistry” and “capable of being used in dentistry” are an intended use/result and do not add structural difference, thus the intended use/result is extended little patentable weight. See MPEP § 2112.02.
The instant invention discloses that glycerine is propane-1,2,3-triol, and is also known as glycerin or glycerol (instant US [0076]).
Nicol teaches that a coolant composition comprises a coolant and water, wherein the coolant includes glycerol ([00020]).
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.
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.
3. Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Nativ (US 2019/0117220 A1, hereinafter Nativ) as applied to claims 1, 5, and 36-38 above.
The disclosure of Nativ is relied upon as set forth above.
Regarding claim 6, Nativ teaches that the coolant comprises a mixture of water with glycerol, wherein the glycerol is in an amount of between 90% and 98.3% by weight in the coolant ([0059]). Thus, the water is in an amount of between 1.7% and 10% by weight in the coolant of Nativ, which overlaps with the claimed range of “at least 10 wt% water”.
Nativ does not teach the claimed coolant at once under the meaning of anticipation.
However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have selected the overlapping portion of the ranges disclosed by the reference because selection of overlapping portion of ranges has been held to be a prima facie case of obviousness. See MPEP § 2144.05.I. Therefore, the invention as a whole would be obvious to a person of ordinary skill in the art.
4. Claims 6 and 36-38 are rejected under 35 U.S.C. 103 as being unpatentable over Nicol (WO2020191449A1, hereinafter Nicol) as applied to claims 1 and 5 above.
The disclosure of Nicol is relied upon as set forth above.
Regarding claims 6 and 36-38, Nicol teaches that a coolant composition comprises a coolant and water, wherein the coolant includes glycerol, the water is in an amount of from 0% to 100% by weight ([00020]), which overlaps with the claimed range of “at least 10 wt% water”.
Thus, the glycerol can be in an amount of from 0% to 100% by weight in the coolant composition of Nicol, which overlaps with the claimed ranges of “at least 50 wt% glycerine”, “at least 60 wt% glycerine”, and “at least 70 wt% glycerine”.
Nicol does not teach the claimed coolant at once under the meaning of anticipation.
However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have selected the overlapping portion of the ranges disclosed by the reference because selection of overlapping portion of ranges has been held to be a prima facie case of obviousness. See MPEP § 2144.05.I. Therefore, the invention as a whole would be obvious to a person of ordinary skill in the art.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JIAJIA JANIE CAI whose telephone number is 571-270-0951. The examiner can normally be reached Monday-Friday 8:30 am - 5:00 pm.
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, Angela Brown-Pettigrew can be reached on 571-272-2817. 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.
/JIAJIA JANIE CAI/Examiner, Art Unit 1761
/ANGELA C BROWN-PETTIGREW/Supervisory Patent Examiner, Art Unit 1761
Prosecution Insights