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 .
Election/Restrictions
Applicant’s election of Group I, claims 1-13, in the reply filed on 17 August 2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claims 14-15 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 17 August 2026.
Claim Objections
Claim 11 is objected to because of the following informalities: “FAS” should be spelled out as there is no indication in the claims corresponding to what “FAS” means. 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 6 and 11 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.
Claim 6 contains parenthesis, e.g. “(an addition product of methacrylic acid and bisphenol-A-diglycidyl ether)” and “(an addition product of 2-hydroxyethylmethacrylate- and 2,2,4-drimethylhexamethylene-1,6-diisocyanate)”. Parenthesis and/or brackets in claims should only be used with labels/number from the specification or drawings. It is unclear whether the applicant intends these limitations to be a part of the claim.
Claim 11 recites “the composition of claim 1, comprising a catalyst paste and a base paste…”. It is unclear if composition of claim 1 further comprises a catalyst paste and a base paste (i.e. in addition to the composition of claim 1), or if the catalyst paste and the base paste merely further define the composition of claim 1. For purpose of examination, the Examiner is taking the position that the catalyst paste and base paste further define the composition of claim 1.
Claim Rejections - 35 USC § 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 (i.e., changing from AIA to pre-AIA ) 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1-4 and 6-13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hara et al. (US Serial No. 2021/0189098).
Regarding claims 1 and 6-11; Hara et al. discloses dental curable composition [abs], wherein in a preferred embodiment [0067-0099; Table 1, Ex.12], contains a first paste and a second paste. The first paste contains 3 parts by weight (pbw) Adsorbent 4, 1.5 pbw BTU (N-benzoylthiourea [0082]), 20.0 pbw (7% by weight) UDMA, 30.0 pbw 2.6E, 10 pbw (3.5% by weight) TEGDMA, 10 pbw NPG, 10 pbw (10% by weight) 2-HEMA, 20.0 pbw MDP (7% by weight; 10-methacryloyloxydecyl dihydrogen phosphate [0085]), 200.0 pbw (73% by weight) Filler 2 (silane treated spherical silica [0087]), 0.5 pbw CQ (camphorquinone [0088]). The second paste contains 1.5 pbw (5% by weight) 1.5CHP (cumene hydroperoxide [0083]), 20.0 pbw (66% by weight) UDMA, 30.0 pbw 2.6E, 30 pbw (10% by weight) TEGDMA, 10 pbw NPG, 10 pbw 2-HEMA, 200.0 pbw Filler 1 (silane treated glass filler [0086]), 0.1 pbw EDTA (sodium ethylenediamine tetraacetate [0088]), and 0.3 pbw (0.09% by weight) DMBE [Ex. 12; 0067-0099; Table 1, Ex. 12]. Hara et al. (US ‘098) discloses filling the first and second pastes in a double syringe (1:1 volume ratio) [0089]. Hara et al. (US ‘098) discloses glass fillers include fluoroaluminosilicate glass [0044]; which is substituted for the fillers of the preferred embodiment, e.g. substitute the glass filler GM344923 with fluoroaluminosilicate glass in filler 1 and spherical silica with fluoroaluminosilicate glass in filler 2 [see MPEP 2131.02]. It is prima facie obvious to substitute art-recognized functional equivalents known for the same purpose (See MPEP § 2144.06). A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art, including the non-preferred embodiments. Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.); See MPEP §2123.
The Examiner makes note that the limitations of claim 11 do not explicitly require a kit comprising two separate pastes, thus the totality of the pasts of Hara et al. read on the claim language of instant claim 11.
Regarding claims 2 and 3; Hara et al. teaches 3-methacryloyloxypropyl trimethoxysilane (i.e. 100%) is used to surface modify the glass fillers [0086-0087; 0043-0044].
Regarding claim 4; the Examiner makes note “is obtainable by..” is a product by process limitation. The examiner notes that 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) ); see MPEP §2113.
Regarding claims 12-13: Hara et al. discloses the basic claimed composition [as set forth above with respect to claim 1]; wherein Hara et al. discloses dental cements [0004]. It is noted, however, that the claims are directed to intended use limitations. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim [see MPEP 2111.02].
Claim(s) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hara et al. (US Serial No. 2021/0189098), as applied to claim 1 above, and further in view of Bottcher et al. (US 2021/0161770).
Hara et al. teaches the basic claimed radically polymerizable composition, as set forth above, with respect to claim 1.
Regarding claim 5; Hara et al. teaches it suitable to employ a fluoroaluminosilcate glass filler, however fails to teach the composition as required by the instant claim. Bottcher et al. discloses dental cement compositions [abstract], wherein fluoroaluminosilicate glass A (FAS A) [0145] composition is 32.2 wt% SiO2, 31.6 wt% Al2O3, 24.9 wt% SrO, 5.2 wt% P2O5, 1.7 wt% Na2O, and 7.2 wt% F- (via CaF2 [0110]) [0145]. Hara et al. and Bottcher et al. are analogous art because they are concerned with the same field of endeavor, namely the preparation of dental compositions containing fluoroaluminosilicate glasses. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have employed FAS A, as taught by Bottcher et al. (US ‘770) in the invention of Hecht et al. (US ‘444), and would have been motivated to do so since Bottcher et al. (US ‘770) suggests the FAS A glass composition is suitable for dental cements [abstract; 0109-0110; 0145].
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JESSICA ROSWELL whose telephone number is (571)270-5453. The examiner can normally be reached M-F 8:00 am to 5:00 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Eashoo can be reached at 571-272-1197. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JESSICA M ROSWELL/ Primary Examiner, Art Unit 1767
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