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 .
Rejections
Double Patenting
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-28 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11857651 Florez et al. Although the claims at issue are not identical, they are not patentably distinct from each other because, although the instant claims and the copending claims differ somewhat in scope, they overlap to the extent that one practicing the patented claimed inventions would practice the instantly claimed inventions and vice versa. It is clear from the patented, column 1, lines 40-67 and column 11, lines 1-16 and the instant specification, paragraphs [0048]-[0051] that 100% of the patented claimed N-doped TiO2 NPs are in the anatase crystalline phase because they are both made by the same process and the same process necessarily makes the same products. See MPEP 2112 and 2113. The instantly claimed inventions are therefore obvious from the patented claims.
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 1-28 are rejected under 35 U.S.C. 103 as being unpatentable over US Pat. Application Publication No. 2012/0172485 Sun et al. in view of US Pat. Application Publication No. 2011/0124492 Loukine et al.
Sun discloses a dental composition containing modified TiO2 nanoparticles and a curable resin material which comprises a polymer precursor material which is photocurable according to the instant claim 4. See the entire document, including the abstract and paragraphs [0003], [0006], [0018], [0040], and [0067]. It is clear from Sun, paragraph [0039] that 100% of the N-doped TiO2 nanoparticles are in an anatase crystalline phase. It is noted that the instant claim language does not require the entirety of each crystalline particle to be anatase crystalline phase. The instant claim language therefore allows some of each particle to have crystalline phases other than anatase. The particles of Sun therefore fall within the scope of the instant claim 1. The TiO2 nanoparticles necessarily have antibacterial activity without irradiation. See Sun, paragraph [0019].
Sun does not disclose the instantly claimed doped TiO2 nanoparticles.
Loukine teaches that doping TiO2 nanoparticles with nitrogen, silver, and fluorine (paragraph [0056]) gives photocatalysis in the visible light range, as is desired by Sun, paragraph [0067].
It would have been obvious to one of ordinary skill in the art to make the dental compositions of Sun using the doped TiO2 nanoparticles of Loukine because they would have been expected to give photocatalysis in the visible light range as is desired by Sun.
Loukine, paragraph [0056], teaches that one or more of their dopants can be used in the TiO2 nanoparticles. TiO2 nanoparticles having the combinations of dopants of the instant claim 2 are not disclosed specifically.
It would have been obvious to one of ordinary skill in the art to make the dental compositions of Sun using the doped TiO2 nanoparticles of Loukine having the combination of dopants of the instant claim 2 because they would have been expected to give photocatalysis in the visible light range as is desired by Sun.
The amounts of Sun, paragraph [0042], falls within the scope of the instant claims 3 and 13.
Sun, paragraphs [0003], [0006], [0018], [0040], and [0067], falls within the scope of the instant claims 5 and 6.
Sun, paragraphs [0009], [0035], and [0043], falls within the scope of the instant claims 7 and 8.
Sun, paragraph [0043], falls within the scope of the instant claim 9.
Sun, paragraph [0048], falls within the scope of the instant claim 10.
Sun, paragraph [0048], falls within the scope of the instant claim 11.
The above discussed dental compositions, when hardened fall within the scope of the instant claims 14-19.
The uses of Sun of the above discussed dental compositions as adhesives and sealants necessitates that the compositions be applied to the dental surface and cured which falls within the scope of the instant claims 20-27.
The instant claims 12 and 28 depend from claims which are rejected in the above prior art rejection. Claims 12 and 28 are not rejected over prior art because the closest prior art does not suggest the limitations therein and does not provide proper rationale for modifying the disclosed inventions into those of the instant claims 12 and 28.
Conclusion
7. Any inquiry concerning this communication or earlier communications from the examiner should be directed to PATRICK D NILAND whose telephone number is (571)272-1121. The examiner can normally be reached on Monday to Friday from 10 to 5.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Robert S Jones, can be reached at telephone number 571-270-7733. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/PATRICK D NILAND/Primary Examiner, Art Unit 1762
