DETAILED ACTION
Claim Rejections - 35 USC § 112
Claims 1 to 3, 6 and 8 to 21 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.
It is unclear what is embraced and/or excluded by the language “substantially
free” as the term “substantially” has no specific or defined meaning.
Claims 1 to 3, 6 and 8 to 21 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with 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.
There is no support for the exclusionary language regarding the inhibitors and silane found in the last two lines of claim 1, in claim 15 or the “free of” language in claim 21. As noted in MPEP 2173.05(i), if alternative elements are positively recited in the specification, they may be explicitly excluded in the claims. In the absence of positive recitation this the newly added language is considered to be new matter.
Claim Rejections - 35 USC § 103/Response to Traversals
Claims 1 to 3, 6, 8 to 10 are rejected under 35 U.S.C. 103 as being obvious over Irmer et al. 2008/0033071 in view of Boardman et al. 4,916,169.
This rejection is maintained from the previous office action.
Irmer et al. teach a composition that can be used as dental impression material. See paragraph 230.
Paragraphs 22 and on teach components meeting claimed (i).
Paragraphs 82 and on teach components meeting claimed (ii).
Paragraphs 135 and on teach components meeting claimed (iii).
Paragraphs 172 and on teach components meeting claimed (iv).
Paragraphs 184 and on teach components meeting amended claimed (v) as this paragraph specifically refers to tetravinyl tetramethyl cyclosiloxanes as useful inhibitors.
Paragraph 239 teaches the addition of a photo sensitizer.
Regarding the newly added requirement of “substantially free…” note that none of these inhibitors are required and the skilled artisan would have found a composition without such inhibitors obvious over the teachings in Irmer et al. of a cyclosiloxane inhibitor.
This differs from that claimed in that Irmer et al. do not teach specific amounts as claimed or the specific photosensitizer as now found in claim 1.
Paragraphs 205 to 210 teach various ranges for each component corresponding to (i) to (iv) which overlap to a significant degree with the claimed ranges. For instance, when 100 parts of each of a)-c) (as defined by Irmer et al.) are used this will result in a composition falling within the claimed ranges. This is one example of many possibilities that would result in amounts falling within the claimed range. From this it is clear what the skilled artisan would have found the claimed composition having components in the claimed amount to have been well within the teaching and routine experimentation of Irmer et al. Note that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art.
With regard to the photosensitizer, Irmer et al. generally teach the presence of sensitizers for light activation, i.e. photo sensitizers. This fails to specifically teach one as claimed.
Boardman et al. teach a silicone composition that is photo curable and contains sensitizers for light activation. See column 4, line 24 and on. This includes 2-isopropyl thioxanthone (column 5, line 22) as a known photosensitizer.
One having ordinary skill in the art would have been motivated by the teachings in Boardman et al. to select such a known photosensitizer for use in the composition of Irmer et al., with the expectation of obtaining useful and predictable results. Note that it is prima facie obvious to add a known ingredient to a known composition for its known function. It would have been within the skill of the ordinary artisan to adjust the amount of photosensitizer in the composition to fall with an operable and useful range such that the skilled artisan would have found an amount within the claimed range to have been obvious and/or within routine experimentation and optimization.
For claim 2 note that this is met by the teaching in paragraph 172 and on.
For claim 3 see paragraph 196 which teaches the addition of a hot air stabilizer.
For claim 6 note that paragraph 60 teaches a preferred number of siloxy units of from 100 to 1500 which lays completely within the claimed molecular weight range for (i) in this claim. See also Example 3 which includes a siloxane having a viscosity of 10 Pa.s which represents a siloxane having a higher viscosity and thus will be within the claimed molecular weight range.
For claim 8 see again Example 3 as well as the other working examples.
For claim 9, paragraph 176 refers to Karstedt’s catalysts as being useful in pre-paring the catalysts in Irmer et al. such that this appears to meet the claimed limitation. One can consider the catalyst to be a Karstedt’s catalyst, albeit one that undergoes modification that is embraced by the open claim language.
For claim 10 see paragraph 178 which teaches amounts that fall within this range as well as the working examples which show amounts within this range.
For this rejection, applicants’ traversal has been considered but it not deemed persuasive of unobviousness. It is argued that Irmer et al. do not teach component (V) as now claimed. This argument is not persuasive, nor is it understood. The previous rejection drew attention to this teaching in Irmer et al. (as was previously found in claim 6). Again, paragraph 184 specifically refers to tetravinyl tetramethyl cyclosiloxanes as useful inhibitors that meet claimed (v). This cyclic vinyl group containing polymethylsil-oxane has a molecular weight of 344. This fully meets the newly added requirement in claim 1, component (v).
Claims 1 to 3, 6, 8 to 21 are rejected under 35 U.S.C. 103 as being obvious over Irmer et al. 2008/0033071 in view of Frances 6,747,071.
The teachings in Irmer et al. were noted above and will be repeated below as
they apply to these claims.
Irmer et al. teach a composition that can be used as dental impression material. See paragraph 230.
Paragraphs 22 and on teach components meeting claimed (i).
Paragraphs 82 and on teach components meeting claimed (ii).
Paragraphs 135 and on teach components meeting claimed (iii).
Paragraphs 172 and on teach components meeting claimed (iv).
Paragraphs 184 and on teach components meeting claimed (v) as this paragraph specifically refers to tetravinyl tetramethyl cyclosiloxanes as useful inhibitors. Note that this siloxane is used in addition to, not in place of, the component a) found in Irmer et al. This addresses the “wherein… is different…” language found in newly added claim 12.
Paragraph 239 teaches the addition of a photo sensitizer.
This differs from that claimed in that Irmer et al. do not teach specific amounts as claimed or the specific photosensitizer as now found in claim 1.
Paragraphs 205 to 210 teach various ranges for each component corresponding to (i) to (iv) which overlap to a significant degree with the claimed ranges. For instance, when 100 parts of each of a)-c) (as defined by Irmer et al.) are used this will result in a composition falling within the claimed ranges. This is one example of many possibilities that would result in amounts falling within the claimed range. From this it is clear what the skilled artisan would have found the claimed composition having components in the claimed amount to have been well within the teaching and routine experimentation of Irmer et al. Note that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art.
With regard to the photosensitizer, Irmer et al. generally teach the presence of sensitizers for light activation, i.e. photo sensitizers. This fails to specifically teach one as claimed. More specifically Irmer et al. prefers one whose wavelength is within the range of 200 to 500 nm.
Frances teaches a photo curable silicone composition that contains sensitizers for light activation. See column 15, lines 10 to 40. This includes 1-chloro-4-propoxy-thioxanthone, also known as 1-chloro-4-propxy -9H-thioxanthen-9-one (column 5, line 22) as a known photosensitizer. This activates at UV light between 200 to 500.
One having ordinary skill in the art would have been motivated by the teachings in Frances to select such a known photosensitizer for use in the composition of Irmer et al., with the expectation of obtaining useful and predictable results. Note that it is prima facie obvious to add a known ingredient to a known composition for its known function. It would have been within the skill of the ordinary artisan to adjust the amount of photosensitizer in the composition to fall with an operable and useful range such that the skilled artisan would have found an amount within the claimed range to have been obvious and/or within routine experimentation and optimization.
For claim 2 note that this is met by the teaching in paragraph 172 and on.
For claim 3 see paragraph 196 which teaches the addition of a hot air stabilizer.
For claim 6 note that paragraph 60 teaches a preferred number of siloxy units of from 100 to 1500 which lays completely within the claimed molecular weight range for (i) in this claim. See also Example 3 which includes a siloxane having a viscosity of 10 Pa.s which represents a siloxane having a higher viscosity and thus will be within the claimed molecular weight range.
For claim 8 see again Example 3 as well as the other working examples.
For claim 9, paragraph 176 refers to Karstedt’s catalysts as being useful in pre-paring the catalysts in Irmer et al. such that this appears to meet the claimed limitation. One can consider the catalyst to be a Karstedt’s catalyst, albeit one that undergoes modification that is embraced by the open claim language.
For claim 10 see paragraph 178 which teaches amounts that fall within this range as well as the working examples which show amounts within this range.
For claims 11 and 12, note that this specific photosensitizer is found in Frances.
For claims 12 to 16 and 18 to 21, note that these limitations are addressed in the preceding rejection over Irmer et al. found above.
For claim 17 note that the specific silicas found in Irmer et al., paragraphs 137 and 139, are polymodal.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARGARET MOORE whose telephone number is (571)272-1090. The examiner can normally be reached on Monday to Friday, 10 am to 5 pm. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Heidi Kelly, can be reached at 571-270-1831.
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Mgm
2/11/26
/MARGARET G MOORE/Primary Examiner, Art Unit 1765