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 .
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.
Claim Status
Claims 1-10 are pending and are examined on the merits in this prosecution.
CLAIM REJECTIONS
Indefiniteness Rejection
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.
Claims 8-10 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.
Claim 8 recites the term “such as” in the third line. The phrase "such as" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Claim 9 recites the trademark/trade name “Tinuvin P (Tinuvin P)”. Where a trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph. See Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982). The claim scope is uncertain since the trademark or trade name cannot be used properly to identify any particular material or product. A trademark or trade name is used to identify a source of goods, and not the goods themselves. Thus, a trademark or trade name does not identify or describe the goods associated with the trademark or trade name. In the present case, the trademark/ trade name is used to identify/describe Tinuvin P® and, accordingly, the identification/ description is indefinite. The examiner suggests amending the claim to read “2-(2H-benzotriazol-2-yl)-p-cresol”, the chemical name for Tinuvin P®.
Claim 10 recites the term “a diluent (solvent)” in the fourth line. The presence of the parenthetical term “solvent” renders the claim indefinite because it is unclear whether the diluent is limited to a liquid.
Anticipation Rejection
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.
1) Claims 1-3, 5-8, and 10 are rejected under 35 U.S.C.§ 102(a)(1) as being anticipated by Chen (“Synthesis of core-shell structured ZnO@m-SiO2 with excellent reinforcing effect and antimicrobial activity for dental resin composites,” Dental Materials 34 (2018) 1846-1855).
Chen teaches the reinforcing effect and the antimicrobial activity of the core-mesoporous shell structured ZnO@m-SiO2, which possesses the micromechanical resin matrix/filler interlocking in dental resin composites, and further teaches the effect of filler compositions on their physical-mechanical properties (Abstract; Title). Chen teaches the shell is comprised of mesoporous silicon dioxide (silica) and the core is comprised of zinc oxide (Abstract). Chen teaches:
The reason [the composition is an effective antibacterial] may be attributed to that ZnO particle had the excellent antibacterial activity and the mesoporous shell of m-SiO2 may offer good channels for the release of Zn2+.
This teaching reads on claims 1-3.
Claim 5 is in the form of a product-by-process claim. As set forth in MPEP 2113,
[E]ven 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.
Since the product recited in claim 1 appears to be the same as the product produced by the methods set forth in claim 5, claim 5 is anticipated.
For claims 6-8, Chen teaches the composition comprising the resin matrix is a “common formulation (Bis-GMA/TEGDMA, 49.5/49.5, wt/wt) with photo-initiators (CQ/4-EDMAB, 0.2/0.8, wt/wt),” where “Bis-GMA” is glycerolate dimethacrylate, a methacrylate as recited in claim 7, “TEGDMA” is tri(ethyleneglycol) dimethacrylate, a second methacrylate as recited in claim 7; “CQ” is the initiator camphorquinone recited in claim 8; and “4-EDMAB” is ethyl-4-dimethylaminobenzoate. See pg 1847, “2.1. Materials” and pg 1848, 2.2.3. “Preparation of dental resin composites”.
For claim 10, Chen teaches including silicon dioxide nanoparticles, which can act as a thickener (pg 1849, Table 1).
Chen does not teach the presence of a pigment or dye in the composition.
Obviousness Rejection
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
1) Claim 4 is rejected under 35 U.S.C.§ 103 as being unpatentable over Chen (cited above).
Chen does not anticipate the particle size of the nanoparticles within the claimed range. However, Chen teaches a particle size of the prepared ZnO@m-SiO2 is 100-400 nm, overlapping the claimed range. Because the claimed range overlaps with the range disclosed by the prior art, a prima facie case of obviousness exists.
2) Claim 9 is rejected under 35 U.S.C.§ 103 as being unpatentable over Chen (cited above), in view of Jia (US 2003/0212194 A1).
The teachings of Chen are discussed above.
Chen does not teach a composition comprising a light stabilizer.
Jia teaches the missing element of Chen.
Jia teaches dental restorative compositions that comprise Bis-GMA, and may preferably contain TEGDMA (pg 1, [0007]; pg 2, [0013]). Jia teaches that the composition comprises a particulate such as silicon dioxide, used for viscosity adjustment, and these silicas have an average particle size of about 0.001 to about 0.07 microns (1-70 nm) (pg 2, [0015]).
For the limitation of claim 9, Jia teaches (pg 3):
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As such, Jia teaches Tinuvin P® as a light stabilizer in a dental resin composition.
The skilled artisan would have expected success in adding Tinuvin P® to the resin composition comprising nanoparticles, as taught by Jia, because Jia teaches ultraviolet light absorbers such as Tinuvin P® “are particularly desirable in the visible light polymerizable compositions in order to avoid discoloration of the resin from any incident ultraviolet light. The skilled artisan would have added Tinuvin P®, as taught by Jia, to the composition of Chen because Jia teaches that the addition of ultraviolet light absorbers would provide protection from discoloration of the Chen composition.
CONCLUSION
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL P COHEN whose telephone number is (571)270-7402. The examiner can normally be reached on M-Th 8:30-5:30; F 9-4.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Frederick Krass can be reached on (571)272-0580. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL P COHEN/Primary Examiner, Art Unit 1612