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
Newly submitted claims 25 and 30 are directed to an invention that is independent or distinct from the invention originally claimed for the following reasons: Claim 25 recites a dental etchant devoid of acid etching agents, while the original claims were directed to etchants having an acid etching agent therein. Claim 30 seems to be trying to claim a method step in an apparatus claim, where the original claims were directed to the etchant itself.
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claims 25 and 30 are withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
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.
Claims 9-14, 16, 21-24, 26-29 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Belikov et al. (US 2008/0280260).
Belikov shows a dental etchant ([136], [0236]) comprising a carrier (gel/water-based acid solution); and one or more abrasive materials dispersed in the carrier (solid-state particles 13/4; Fig. 13), the abrasive materials comprising one or more diamond particles, fullerene particles, graphene particles, lonsdaleite particles, or cubic boron nitride particles (diamond particles mentioned in [236]); wherein scrubbing the dental etchant on a tooth structure may remove at least a portion of a dental smear form the tooth structure (since the etchant has the same components as the claim, particulary abrasive materials dispersed therein, scrubbing of such abrasive materials will remove at least a portion of a dental smear). With respect to claim 10, wherein the abrasive materials further comprise at least one or more diamond particles, diamond microparticles, or diamond nanoparticles (Fig. 13 shows additional diamond particles to the first diamond particle of claim 1). With respect to claim 11, wherein the carrier further comprises at least one of a polar solvent and an acid etching agent (citric acid of the water-based acid solution, [[236]). With respect to claims 12 and 16, wherein the acid etching agent further comprises at least one of phosphoric acid and hydrofluoric acid ([116] states phosphoric acids may be substituted for the citric acid in the compositions). With respect to claim 13, wherein the dental etchant comprises from about 30% to about 50% by weight of an acid etching agent ([14] for instance discusses the use of 30-40% phosphoric acid and also establishes the concentration as a results effective variable for degree of etching). With respect to claim 14, wherein the abrasive materials further comprise diamond nanoparticles having an average size of between about 0.5 nm and about 100 nm ([202] discusses 10-50,000 nm sizes, overlapping the range claimed). With respect to claims 21-22, the carrier includes one or more solvents including at least one polar solvent (“water-based” and water is a polar solvent). With respect to claim 23, the etchant can be configured as a mechanical etchant or a chemical etchant (acid and abrasive particles allow this). With respect to claim 24, the etchant comprises between about 30% and about 50% by weight of acid etching agents ([0239] discusses the water-based solution of edible citric acid with a pH of 1.5, which would result in approximately 30% to about 50% by weight of acid etching agents, particularly with the additional components). With respect to claims 26-29, the etchant is configured to abrade and/or etch at least a portion of the tooth mechanically and chemically (solution has both the acid etching agent and abrasive particles as detailed above, which will result in both mechanical and chemical etching/abrading).
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.
Claims 15 is rejected under 35 U.S.C. 103 as being unpatentable over Belikov.
Belikov discloses the device as previously described above, but fails to show specific weight of abrasive materials (diamond particles in the case of Belikov). However, Belikov establishes the amount of particles, and therefore the weight of those in the material, as a results effective variable, particularly in [202] and [235] for altering the color such as when utilized in whitening procedures and also for improving wear resistance of a tooth where greater amounts will result in greater effect. Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify Belikov's particle weight percent to about .1 to 20% in order to achieve their desired effect since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (MPEP 2144.05 II).
Response to Arguments
Applicant's arguments filed have been fully considered but they are not persuasive.
Applicants arguments appear to be based on the claims as amended, which have been addressed above. It is presently unclear what structure is missing from the prior art.
Conclusion
THIS ACTION IS MADE FINAL. 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 MATTHEW NELSON whose telephone number is (571)270-5898. The examiner can normally be reached on Monday-Friday 7:30am-5:00pm EDT.
If attempts to reach the examiner by telephone are unsuccessful, please contact the examiner’s supervisor, Eric Rosen, at (571) 270-7855. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MATTHEW M NELSON/Primary Examiner, Art Unit 3772