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 .
The Office Action is in response to the application filed 02/15/2024.
Claim Analysis
Summary of Claim 1:
A free-radically polymerizable composition for 3D printing of dental crowns, bridges, prosthetic teeth or full prostheses comprising:
A) a total amount of free-radically polymerizable (meth)acrylic compounds in an amount of 50% to 89% by weight,
B) a total amount of inorganic fillers in an amount of 10% to 49% by weight, and
C) a total amount of photoinitiators in an amount of 0.1% to 5% by weight, in each case based on the total mass of the polymerizable composition, inorganic fillers comprises - a first
wherein the total amount (B) of inorganic fillers comprises
A first sub-amount of (B1) of dental glass, and
A second sub-amount of (B2) of pyrogenic silica,
And wherein the mass ratio of B1 to B2 is in the range from 10:1 to 1:1.
Response to Amendment
The Amendment filed 02/15/2024 has been entered. Claims 1-15 and 17-21 remain pending in the application. Claim 16 was canceled. Claims 1-15 were amended and support for amendments are found in the original claims and Specification. Claims 17-21 are newly added support is found in the original claims and Specification.
Claim Objections
Claims 1 and 10 are objected to because of the following informalities:
Claim 1 recites “A) a total amount of free-radically polymerizable (meth)acrylic compounds in an amount of 50% to 89% by weight” (emphasis added) which is redundant. Applicant is suggested to rephrase Claim 1 A) to “free-radically polymerizable (meth)acrylic compounds in an amount of 50% to 89% by weight”. Similarly, Claim 1 B) and Claim 1 C) recite “a total amount of” and the Applicant is advised to get rid of the redundancies.
Claim 1 recites “a first sub-amount of (B1) of dental glass” (emphasis added) which is redundant. Applicant is suggested to rephrase to “(B1) dental glass”. Claim 1 also similarly recites “a second sub-amount of (B2) of pyrogenic silica” (emphasis added), and Claim 10 recites “a first sub-amount of (A1)”, “a second sub-amount of (A2)”, and “a third sub-amount of (A3)”. Applicant is advised to get rid of the redundancies.
Appropriate correction is required.
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.
Claims 4, 9 and 19 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 pre-AIA the applicant regards as the invention.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, Claim 4 recites the broad recitation “the group consisting of barium silicate glasses, barium aluminum silicate glasses, barium borosilicate glasses, barium boroaluminum silicate glasses, barium borofluoroaluminum silicate glasses, strontium silicate glasses, strontium aluminum silicate glasses, strontium borosilicate glasses, strontium boroaluminum silicate glasses, strontium borofluoroaluminum silicate glasses and zirconium silicate glasses”, and the claim also recites “preferably selected from the group consisting of barium aluminum silicate glasses, barium borosilicate glasses and barium boroaluminum silicate glasses, and/or - is organically surface-modified”. which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claim 9 recites “B2 is structure-modified and/or compressed and post-milled”. However, it is unclear if the list should be read as (A and/or B) and C, or A and/or (B and C), wherein C is required in the former but not the latter. The instant Specification simply repeats the claim language. For the purposes of examination, the claim will be interpreted as A and/or (B and C).
Claim 19 is rejected for being dependent on a rejected base claim.
Claim Rejections - 35 USC § 102
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, 9-10, 12, 15, and 17 are rejected under 35 U.S.C. 102(a)(1) and/or (a)(2) as being anticipated by Duan et al. (CN113717330A; cited in the IDS submitted on 09/05/2024; English translation incorporated herein; hereafter as “Duan”).
Regarding Claims 1-2, Duan teaches a photothermal curable resin composition for the 3D printing of dental crown bridges [Claims 1, 10], which corresponds with the composition for 3D printing of dental crowns, bridges, prosthetic teeth or full prostheses of Claim 1, comprising:
56 parts by weight of dimethacrylate prepolymer and monomers [Example 1; Claims 1-2], which is equivalent to 57 wt. % total prepolymer and monomer (
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33 parts by weight of barium glass powder [Example 1; Claims 1-2], corresponding to (B1) dental glass of Claim 1;
8.5 parts by weight of fumed silica [Example 1; Claims 1-2], corresponding to (B2) pyrogenic silica of Claim 1;
The sum of the barium glass powder and fumed silica being 41.5 parts by weight, which is equivalent to 42 % by weight (
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0.35 parts by weight of phenyl bis(2,4,6-trimethylbenzoyl)phosphine oxide [Example 1; Claims 1-2], which is equivalent to 0.35 % by weight (
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Wherein the ratio of barium glass powder to fumed silica is 3.9:1 (
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Regarding Claim 3, Duan further teaches:
56 parts by weight of dimethacrylate prepolymer and monomers [Example 1], which is equivalent to 57 wt. % total prepolymer and monomer (
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A combined amount of fumed silica and barium glass powder of 0.02-80 parts by weight [Claims 1-2], which is equivalent to 0.17-59% by weight, which corresponds with B) in an amount of 10% to 40% by weight of Claim 3;
0.35 parts by weight of phenyl bis(2,4,6-trimethylbenzoyl)phosphine oxide [Example 1], which is equivalent to 0.2 % by weight (
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Regarding Claims 4-6 and 9, Duan further teaches:
A glass powder with particle sizes of 0.6-0.8 µm [Claim 3], thereby reading on wherein the dental glass B1 - has an average particle size in the range from 0.4 to 5 µm of Claim 4;
A fumed silica particle size of 10-30 nm [Claim 3], corresponding to wherein the pyrogenic silica B2 has a primary particle size in the range from 5 to 25 nm of Claim 5;
Wherein the fumed silica is oleophilic treated fumed silica [¶ 0026], corresponding to wherein the pyrogenic silica B2 is organically surface-modified of Claim 6; and thereby reading on wherein the pyrogenic silica B2 is structure-modified of Claim 9;
Regarding Claims 10, 12 and 15, Duan further teaches:
ethyoxybisphenol A dimethacrylate [Claims 1-2], corresponding to a first sub-amount (A1) of difunctional, aromatic (meth)acrylate of Claim 10, and ], thereby reading on A1 is ethoxylated bisphenol A di(meth)acrylate of Claim 12;
dimethacrylate urethane [Example 1], which corresponds with a second sub-amount (A2) of difunctional (meth)acrylates which comprise one or more urethane groups of Claim 10;
hydroxypropyl methacrylate [Claim 2], which corresponds with a third sub-amount (A3) of monofunctional (meth)acrylates of Claim 10; and
3D printing of the photothermal curable resin composition to produce a dental crown bridge [Claim 10], thereby reading on the dental crown and bridge produced by 3D printing of a free-radically polymerizable composition of Claim 15.
Regarding Claim 17, Duan further teaches:
33 parts by weight of barium glass powder [Example 1; Claims 1-2], which is equivalent to 33 % by weight (
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8.5 parts by weight of fumed silica [Example 1; Claims 1-2], which is equivalent to 8.6 % by weight (
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In light of the above, the cited claims are rendered anticipated by Duan.
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 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 8, 13-14 and 20-21 are rejected are under 35 U.S.C. 102(a)(1) and/or (a)(2) as being anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Duan et al. (CN113717330A; cited in the IDS submitted on 09/05/2024; English translation incorporated herein; hereafter as “Duan”).
Duan teaches the free-radically polymerizable composition for 3D printing of dental crowns comprising methacrylic compounds, inorganic fillers, and photoinitiators of Claim 1 as set forth above and incorporated herein by reference.
However, Duan does not explicitly teach the tamped density of Claim 8, viscosity of Claims 13 and 20, and the quotient tan δ of the loss modulus G" and the storage modulus G' under oscillating shear stress of the composition of Claims 14 and 21.
Duan teaches the same polymerizable composition for 3D printing of dental crowns as required by the instant claim as set forth in the rejection above. Therefore, polymerizable composition of Duan would inherently result in the same tamped density, viscosity and quotient tan δ as required by the instant claims if the polymerizable composition of Duan was subjected to the same mechanical testing. Case law has held that claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977). The courts have stated that a chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 15 USPQ2d 1655, (Fed. Cir. 1990). See also In re Best, 562 F.2d 1252, 195 USPQ 430, (CCPA 1977). "Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established." Further, if it is the applicant's position that this would not be the case, evidence would need to be provided to support the applicant's position. In the alternative that the above disclosure is insufficient to anticipate the above listed claims, it would have nonetheless been obvious to the skilled artisan to produce the claimed polymerizable composition, as the reference teaches each of the claimed ingredients (polymerizable methacrylic compounds, inorganic fillers, and photoinitiators) for the same utility (to produce a photo-curable composition for 3D printing) and for the same purpose (to produce dental crowns).
Claim Rejections - 35 USC § 103
Claims 7, 11, and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Duan et al. (CN113717330A; cited in the IDS submitted on 09/05/2024; English translation incorporated herein; hereafter as “Duan”).
Duan teaches the free-radically polymerizable composition for 3D printing of dental crowns comprising methacrylic compounds, inorganic fillers, and photoinitiators of Claim 1 as set forth above and incorporated herein by reference.
Regarding Claim 7, Duan does not explicitly teach wherein the pyrogenic silica B2 has a BET surface area in the range from 100 to 300 m2/g.
Nevertheless, Duan further teaches the specific surface area of fumed silica is much larger than that of barium glass powder which increases the viscosity and makes it difficult to form on a 3D printer [¶ 0117]. Therefore, the surface area should be optimized to reach the desired viscosity via a routine optimization to make the polymerizable composition suitable for 3D printing. The case law has held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). See MPEP 2144.05. Thus, it would have been obvious to one having ordinary skill in the art at the time of the invention was made to adjust the surface area for the intended application via a routine optimization, thereby obtaining the present invention.
Regarding Claim 11, Duan further teaches:
50-60 parts by weight of prepolymer, such as ethyoxybisphenol A dimethacrylate [Claims 1-2], which is equivalent to 26-92% by weight, corresponding to A1) in an amount of 20% to 60% by weight of Claim 11;
17 parts by weight of dimethacrylate urethane [Example 1], which is equivalent to 17% by weight, which corresponds with A2) in an amount of 10% to 40% by weight of Claim 11; and
5-50 parts by weight of monomer, such as hydroxypropyl methacrylate [Claim 2], which is equivalent to 3.2-50% by weight, which overlaps with A3) in an amount of 1% to 10% by weight of Claim 11.
Regarding Claim 18, Duan further teaches:
55-110 parts by weight of methacrylate prepolymer and monomer [Claim 1], which is equivalent to 38-99% by weight, which overlaps A) in an amount of 67% to 84% by weight of Claim 18;
0.02-80 parts by weight of fumed silica and glass powder [Claim 1], which is equivalent to 0.008-59% by weight, which overlaps B) in an amount of 15% to 30% by weight of Claim 18; and
0.01-5 parts by weight of photoinitiator [Claim 1], which is equivalent to 0.005-8.1% by weight, which overlaps C) in an amount of 0.5% to 3% by weight of Claim 18.
However, Duan does not explicitly teach A3) in an amount of 1% to 10% by weight of Claim 11, A) in an amount of 67% to 84% by weight of Claim 18, B) in an amount of 15% to 30% by weight of Claim 18, and C) in an amount of 0.5% to 3% by weight of Claim 18.
Nevertheless, one of ordinary skill in the art at the time the invention was made would have considered the invention to have been obvious because the ranges taught by Duan for the amount of A3) (3.2-50%), A) (38-99%), B) (0.008-59%), and C) (0.005-8.1%) overlap the instantly claimed ranges (1-10%, 67-84%, 15-30%, and 0.5-3%, respectively) and is therefore considered to establish a prima facie case of obviousness. It would have been obvious to one of ordinary skill in the art to select any portion of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in the prior art reference, MPEP 2144.05.
Claim 19 is rejected under 35 U.S.C. 103 as being unpatentable over Duan et al. (CN113717330A; cited in the IDS submitted on 09/05/2024; English translation incorporated herein; hereafter as “Duan”) in view of Herrmann et al. (US 11,534,264 B2; hereafter as “Herrmann”).
Duan teaches the free-radically polymerizable composition for 3D printing of dental crowns comprising methacrylic compounds, inorganic fillers, and photoinitiators of Claim 1 as set forth above and incorporated herein by reference.
Duan further teaches surface treatment of the fumed silica [¶ 0026].
However, Duan does not explicitly teach wherein the dental glass B1 is organically surface- modified with 3-methacryloxypropyl(trimethoxy)silane of Claim 19.
Nevertheless, Herrmann teaches a dental composite crown comprising nanofillers [Claim 1], urethane meth(acrylate) and meth(acrylate) resin [Claim 1], fumed silica [Col. 12, Lines 48-55], photoinitiators [Col. 28, Lines 16-31], fluoroalumino-silicate glass [Col. 26, Lines 18-23], and further comprising surface modifying agents such as ɣ-methacryloxypropyltrimethoxysilane [Col. 12, Lines 56-65], which corresponds with the 3-methacryloxypropyl(trimethoxy)silane of Claim 19.
Herrmann offers the motivation that filler particles treated with surface modifying agents such as ɣ-methacryloxypropyltrimethoxysilane can polymerize with the surrounding resin [Col. 12, Lines 56-65].
Duan and Herrmann are considered to be analogous art as the claimed invention, as all are in the same field of methods of preparing compositions comprising methacrylates, filler, fumed silica, and photoinitiators, to produce dental crowns and bridges .
Therefore, it would be obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the ɣ-methacryloxypropyltrimethoxysilane of Herrmann with the curable resin composition of Duan, with the motivation to polymerize the filler with the surround resin, thereby arriving at the claimed invention.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DORIS LING whose telephone number is (571)270-3961. The examiner can normally be reached Monday-Friday, 8:30am-5:00pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, ARRIE LANEE REUTHER can be reached on (571)270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DORIS LING/Examiner, Art Unit 1764
/ROBERT C BOYLE/Primary Examiner, Art Unit 1764
