reDETAILED 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 .
Claim Objections
Claims 1 and 5 are objected to because of the following reasons:
In step (II) of claim 1 it says “reacting the copolymer A0 obtained in step (I)”, although it is clear that a copolymer is formed in step (I), the term A0 does not have clear antecedence in reference to the formed copolymer. It should instead say “copolymer A0 was obtained in step (I), A0 is then reacted in…”.
In step (II) of claim 5 it says “reacting the resulting polymer B0”, although it is clear that a copolymer is formed in step (I), the term B0 does not have clear antecedence in reference to the formed copolymer. It should instead say “copolymer B0 was obtained in step (I), B0 is then reacted in…”.
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 2, 6-12 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 2, claim 1, where MG is a monomer with a polymerizable (meth)acrylate group and MF is an OH group-containing (meth)acrylate, renders the scope of claim 2 indefinite since monomer MF (containing an -OH) can also be monomer MG (having a radically polymerizable (meth)acrylate) as in the case of 2-hydroxyethyl (meth)acrylate or 2-hydroxypropyl (meth)acrylate. Since these monomers can be both MG and MF, there are compositions consistent with claims 1 and 2 that can comprise both 80% and greater than 80% MG if the composition is 80% 2-hydroxyethyl (meth)acrylate as component MG and 20% 2-hydroxypropyl (meth)acrylate as component MF.
Regarding claim 6, claim 5, where MG is a monomer with a polymerizable (meth)acrylate group and MF is an OH group-containing (meth)acrylate, renders the scope of claim 6 indefinite since monomer MF (containing an -OH) can also be monomer MG (having a radically polymerizable (meth)acrylate) as in the case of 2-hydroxyethyl (meth)acrylate or 2-hydroxypropyl (meth)acrylate. Since these monomers can be both MG and MF, there are compositions consistent with claims 5 and 6 that can comprise both 80% and greater than 80% MG if the composition is 80% 2-hydroxyethyl (meth)acrylate as component MG and 20% 2-hydroxypropyl (meth)acrylate as component MF. Additionally, claim 6 recites the limitation “the copolymer B0 has the following composition” in page 2, line 33. There is insufficient antecedent basis for this limitation in the claim. For examination purposes, claim 6 will be interpreted as depending on claim 5 which provides antecedent basis for “copolymer B-0”.
Claim 7 is rejected as depending on claim 6. Additionally, claim 7 recites “the mixture of copolymers AP and BP” in page 3, line 8. There is insufficient antecedent basis for this limitation in the claim.
Claim 8 recites the limitation "the copolymer BP" in page 4, line 5. There is insufficient antecedent basis for this limitation in the claim.
Claim 9 recites the limitation "the corresponding acrylates" in page 4, line 5. There is insufficient antecedent basis for this limitation in the claim.
Claim 10 recites the limitation "BP or the mixture of AP and BP" in page 4, line 34. There is insufficient antecedent basis for this limitation in the claim. Additionally, page 5, line 8 recites “higher molecular weight ether group-containing amines”. It is unclear what is meant by “higher molecular weight”, rendering the scope of the claim indefinite.
Claim 11 recites the limitation "the… base mixture" in page 5, line 11. There is insufficient antecedent basis for this limitation in the claim.
Claim 12 recites the limitation "the copolymer... B" in page 5, line 16. There is insufficient antecedent basis for this limitation in the claim.
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.
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 1-10 and 13-15 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Moszner (US 20170020791 A1).
Regarding claim 1 and 5, Moszner teaches a dental material comprising a copolymer obtained by a copolymerization of:
2-[4-(dimethoxyphosphoryl)-2-oxa-butyl]-acrylic acid ethyl ester (DMPAME) (acting as monomer MG); and
2-hydroxyethyl methacrylate (HEMA) (acting as monomer MF).
The product is then reacted with 2-isocyanatoethyl methacrylate (IEMA) (monomer MP of claim 1) to produce the step b terpolymer below, which is analogous to BP of claim 5 or the neutralized copolymer AP of claim 1.
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Step b terpolymer
The methyl groups on the terpolymer (as signified with the green arrows) are then deprotected using TMSBr and methanol in step c, to produce the terpolymer below, which is analogous to copolymer AP before neutralization where the phosphonic acid methacrylate is monomer MH and HEMA is monomers MG and MF of claim 1 (Example 1).
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Step c terpolymer
Moszner also teaches a copolymer formed by first reacting HEMA with a phosphonic acid, then reacting this product with IEMA to form a copolymer. This copolymer then has its phosphonic acid groups “released” (i.e. neutralized) in a reaction with TMSBr and methanol (paragraph [0032]). A person of ordinary skill in the art would have found it obvious to apply the teaching in Moszner where the phosphonic acid groups are neutralized as a final reaction step and apply this to the step c terpolymer above, resulting in a copolymer identical to the claimed neutralized copolymer AP.
It is noted that claims 1 and 5 are product-by-process claims and therefore “even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” See In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985).
Alternatively, in the event any differences can be shown for the product of the product-by-process claims of the instant application, as opposed to the product taught by Moszner, such differences would have been obvious to one of ordinary skill in the art as a routine modification of the product in the absence of a showing of unexpected results.
Regarding claim 2, Moszner teaches the step c terpolymer (shown above) having the composition:
30 mol.% IEMA (a monomer with a polymerizable (meth)acrylate MG), which is equivalent to 31.5 wt.% of the terpolymer;
61 mol.% HEMA (monomer MF), which is equivalent to 54 wt.% of the terpolymer; and
9 mol.% 2-[4-(dihydroxyphosphoryl)-2-oxa-butyl]-acrylic acid ethyl ester (monomer MH), which is equivalent to 14.5 wt.% of the terpolymer.
(Paragraph [0092]).
Regarding claims 3, Moszner teaches a process of obtaining a terpolymer (equivalent to copolymer AP, which comprises of monomers MG, MH, and MF, as referenced above) where step a is the copolymerization of monomers occurring in a water-ethanol mixture then the product is then dialyzed in pure ethanol (Example 1, step a; paragraphs [0087] and [0088]).
Regarding claim 4, the composition of the step b terpolymer (which is equivalent to copolymer BP) has a different composition than that of the step c terpolymer (which is equivalent to copolymer AP) in that the terpolymer of step c has a phosphonic acid group and the terpolymer of step b does not.
Regarding claim 6, Moszner teaches a copolymer (Example 1, step a copolymer) comprising:
91 mol.% HEMA (as MG and MF), which is equivalent to 83.2 wt.% of the copolymer.
9 mol.% DMPAME (as MG), which is equivalent to 16.8 wt.%
(Paragraph [0088]).
As referenced above in paragraph 3, claim 6 is being interpreted as depending on claim 5. Claim 5, step (I) a recites “one or more monomers MG”. DMPAME and HEMA in the Example 1, step a copolymer can read onto claim 6 as 30 to 85% by weight of MG (as DMPAME and HEMA) and 5 to 55% by weight of MF (as HEMA). Additionally, monomer MCS is optional as per claim 5.
Regarding claim 7, Moszner teaches the terpolymers that are analogous to copolymers AP and B-P, and neutralizing the acidic monomer of the as referenced above in paragraph 5. Moszner further teaches a two-mixture dual-curing dental material containing the constituents of the dental material (i.e. the terpolymers that are analogous to AP and BP) (paragraph [0053]).
Regarding claim 8, Moszner teaches the terpolymers analogous to copolymers AP- and BP as referenced above, the terpolymers comprising 30 mol.% of IEMA (MP) and 61 mol.% HEMA (MF). This is equivalent to 49 mol% of the OH groups of HEMA being reacted with IEMA (Example 1, steps b and c; paragraphs [0090] and [0092]).
Regarding claim 9, Moszner teaches the terpolymer analogous to AP (not neutralized) as referenced above consisting of HEMA (as monomers MG and MF), 2-[4-(dihydroxyphosphoryl)-2-oxa-butyl]-acrylic acid ethyl ester (as monomer MH), and IEMA (as monomer MP). The examiner notes that claim 9 recites “the monomer(s) MG is (are) selected from …; and/or”. The examiner takes this to mean that monomer MG is not limited to the listed monomers on page 4, lines 1-6, but extends to all proceeding monomers in the claim that contain a polymerizable (meth)acrylate group. Moszner further teaches preferred monofunctional (meth)acrylates including n-butyl methacrylate, preferred phosphoric acid monomers including 10-(meth)acryloyloxydecyl dihydrogen phosphate, and preferred acid monomers including 10-(meth)acryloyloxydecylmalonic acid (paragraphs [0040], [0046] and [0048]).
Regarding claim 10, as referenced above in paragraph 5, Moszner teaches “releasing” (i.e. neutralizing) a phosphonic acid group in a copolymer by reacting the phosphonic acid with TMSBr and methanol (paragraph [0032]). This differs from the claimed bases used for neutralizing copolymers AP or BP in that the Moszner does not teach the claimed bases. However, the claimed bases and their use to neutralize acidic groups were known in the art. A person of ordinary skill in the art as of the effective filing date of the instant application would have found it obvious to have substituted the TMSBr and methanol for any of the known claimed bases and the resulting neutralization would have been predictable.
Regarding claim 13, Moszner teaches the terpolymers as mentioned above, and a dental material comprising 2-20 wt.% of at least one polymer (in reference to the terpolymers) and preferably 0-50 wt.% solvent (dispersion medium) (paragraphs [0060] and [0066]).
Regarding claims 14 and 15, Moszner teaches the terpolymers as referenced above and dental material for therapeutic use to repair damaged teeth (paragraph [0083], and non-therapeutic use to repair dental restorations (paragraph [0084]).
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.
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Moszner (US 20170020791 A1) in view of Shoaf (Solution and emulsion polymerization with partially neutralized methacrylic acid).
Regarding claim 11, Moszner teaches neutralizing the acidic monomer component of the terpolymer referenced above (paragraph [0032]). However, Moszner is silent as to the amount of methanol (acting as a base) used to neutralize the phosphonic acid group.
Shaof teaches partial neutralization through the use of sodium hydroxide of acidic monomers as a result-effective variable on the rate and extent of radical polymerization (abstract, experimental on p.1246). Shaof further teaches ratios of base used (moles base/moles acid) from 0.25-0.50, which is equivalent to 25-50 mol.% (figure 20, p.1255).
It would have been obvious to one of ordinary skill in the art as of the effective filing date of the instant application to apply the teaching from Shaof that the amount of base added to the radically polymerized mixture impacts the rate of polymerization to the dental material of Moszner and would, through routine experimentation, arrive at an amount of base in the claimed range.
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Moszner (US 20170020791 A1) in view of Pizzi (Handbook of Adhesive Technology).
Regarding Claim 12, Moszner teaches the Example 1, step c terpolymer (analogous to AP) with a number average molecular weight measured by gel-permeation chromatography of 44,500-143,000 g/mol (paragraph [0092]). Moszner does not disclose a terpolymer with a maximum number average molecular weight of less than 60,000 g/mol.
Pizzi teaches that molecular weight is a result-effective variable for adhesive bonding strength (page 295).
It would have been obvious to one of ordinary skill in the art to apply the teaching from Pizzi to the dental material composition of Moszner in the course of routine experimentation to optimize the average molecular weight of the terpolymer (copolymer) in the pursuit of improved bonding strength and would have arrived at the claimed range.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Mitamura (US 20200291157 A1) teaches a two-part dental adhesive.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KOLTON JONES whose telephone number is (571)272-9802. The examiner can normally be reached Generally Monday-Friday 8:00 am - 5:00 pm EST.
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/KOLTON JONES/Examiner, Art Unit 1763
/JOSEPH S DEL SOLE/Supervisory Patent Examiner, Art Unit 1763
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