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 claims 1-11 in the reply filed on 8/14/2026 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)).
Specification
The use of the terms S2006, M570, CM-5, and V380, which are trade names or marks used in commerce, has been noted in this application. The term should be accompanied by the generic terminology; furthermore the term should be capitalized wherever it appears or, where appropriate, include a proper symbol indicating use in commerce such as ™, SM , or ® following the term.
Although the use of trade names and marks used in commerce (i.e., trademarks, service marks, certification marks, and collective marks) are permissible in patent applications, the proprietary nature of the marks should be respected and every effort made to prevent their use in any manner which might adversely affect their validity as commercial marks.
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, 5, 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 4 recites “60:40 to 40:60 wt.-% A blocks and 40:60 to 60:40 wt.-% of the B block”. It is unclear and indefinite what the latter half of these weight ratios is intended to represent. For examination purposes, these limitations have been interpreted as 60 to 40 wt.-% A blocks and 40 to 60 wt.-% of the B block.
Claim 5 recites that “component (a) comprises a non-aromatic alicyclic, bicyclic or tricyclic methacrylate or acrylate” of formula II containing group Q. However, group Q as defined by claim 5 only consists of tricyclic groups. It is therefore unclear and indefinite how component (a) could comprise alicyclic or bicyclic (meth)acrylates given the limitations of claim 5. Dependent claim 6 is similarly rejected by its dependence on indefinite claim 5.
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 11 recites the broad recitation “20 to 60 wt.-%”, and the claim also recites “30 to 55 wt.-% or 33 to 55 wt.-%” which are 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.
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 11 recites the broad recitation “0 to 35 wt.-%” and the claim also recites “0 to 25 wt.-% or 0 to 10 wt.-%” which are 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 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.
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.
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.
Claims 1-3 and 5-11 are rejected under 35 U.S.C. 103 as being unpatentable over Moszner et al (US 20220370300 A1, priority date 5/7/2021).
Regarding claims 1, 10, and 11, Moszner discloses a radically polymerizable composition suitable as a dental material [0002], comprising:
30-70 wt% of at least one aromatic bicyclic or tricyclic mono(meth)acrylate (monofunctional radically polymerizable (meth)acrylate) [0024];
20-60 wt% of at least one urethane di(meth)acrylate telechel (polyfunctional acrylate) [0025];
0-30 wt% of a di(meth)acrylate monomer [0026];
1-12 wt% of at least one ABA or AB block copolymer [0027];
0.1-5.0 wt% of at least one initiator for radical polymerization [0028], which is preferably a photoinitiator [0088];
0-20 wt% of inorganic particulate fillers [0108], which are preferably nanoparticulate or microfine fillers [0098] having a particle size of from 10 to 300 nm [0099]; and
0-15 wt% [0124] of further additives [0116].
A prima facie case of obviousness exists where the claimed ranges overlap or lie inside ranges disclosed by the prior art. See MPEP 2144.05(I).
Regarding claims 2 and 3, Moszner discloses that particular preference is given to ABA triblock copolymers PCL-b-PDMS-b-PCL and PMMA-b-PDMS-b-PMMA having A:B molar ratios of from 0.1 to 5 and having a molar mass from 3 to 25 kDa [0085].
Regarding claims 5 and 6, tricyclodecane (meth)acrylate) and tricyclodecane methyl (meth)acrylate are disclosed as preferred bi- or tricyclic acrylates [0042].
Regarding claim 7, as set forth above with respect to claim 1, Moszner discloses a urethane di(meth)acrylate telechel (polyfunctional polymer) [0025].
Regarding claim 8, Moszner further discloses that the nanoparticulate or microfine fillers include fumed silica or precipitated silica, among others [0098].
Regarding claim 9, Moszner further discloses that certain fillers, such as SiO2 with a small primary particle size (nanoparticulate or microfine silica) having a large surface area of over 100 m2/g have a thixotropic effect and can replace thixotropic additives [0122]. Therefore, it would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to select microfine or nanoparticulate silica fillers having a small primary particle size and a large surface area of over 100 m2/g, motivated by a desire to replace other thixotropic additives in the composition, with a reasonable expectation of success.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Moszner et al (US 20220370300 A1, priority date 5/7/2021) as applied to claim 1 above, and further in view of Suzuki et al (EP 2492289 A1, priority date 10/19/2010, copy attached).
The above rejection of claim 1 in view of Moszner is incorporated herein by reference in its entirety.
Regarding claim 4, Moszner does not particularly disclose the weight ratio of A:B blocks in the ABA triblock copolymer. It is noted by the examiner that Moszner’s disclosure of ABA triblock copolymers having A:B molar ratios of from 0.1 to 5 is presumed to encompass the claimed range of 60:40 to 40:60 wt.-% A blocks and 40:60 to 60:40 wt.-% of the B block.
In the same field of endeavor, Suzuki discloses a polymerizable composition suitable for the preparation of dental prostheses (Abstract), comprising [0011]:
An acrylic block copolymer (a) [0011] which is most preferably an ABA triblock copolymer [0028] containing at least one polymer block A that contains a (meth)acrylic acid ester unit (a (meth)acrylate) and at least one polymer block B that contains an acrylic acid ester unit (an acrylate) [0011],
A polymerizable monomer (b) [0011] which is preferably a (meth)acrylate [0037], which is preferably a combination of a bifunctional (polyfunctional) polymerizable monomer and a monofunctional polymerizable monomer [0047],
A polymerization initiator (c) [0011],
A polymerization accelerator (d) [0014], and
A filler (e) [0014] with a preferable particle size of 0.001-50 µm (1-50,000 nm) [0083].
Suzuki particularly discloses that the content of polymer block A is preferably 1-75 wt%, and the content of polymer block B is preferably 25-99 wt% [0024, 0026]. A prima facie case of obviousness exists where the claimed ranges overlap or lie inside ranges disclosed by the prior art. See MPEP 2144.05(I). Suzuki particularly notes that these wt% ranges for blocks A and B impart appropriate flexibility to the cured product [0024, 0026]. Therefore, it would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to use the contents of A and B polymer blocks disclosed by Suzuki in the radically polymerizable polymer composition disclosed by Moszner, motivated by a desire to impart appropriate flexibility to the cured product, with a reasonable expectation of success.
In the alternative, it is well established that ordinary creativity is presumed on the part of one of ordinary skill in the art. See KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007) (“[a] person of ordinary skill is also a person of ordinary creativity, not an automaton.”). Thus, it would have been prima facie obvious, using no more than ordinary creativity, to vary the amounts of A and B blocks in the ABA triblock copolymer anywhere within the range of 60:40 to 40:60, so long as the desired flexibility is achieved, which thus renders the claimed ratio prima facie obvious. See Ex Parte Jean-Paul Mardon, Jean Senevat, & Daniel Charquet, 101728,237, 2012 WL 1141738, at *2 (2012); In re Boesch, 617 F.2d 272, 276 (CCPA 1980) (“[D]iscovery of an optimum value of a result effective variable...is ordinarily within the skill of the art.”); In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003) (“The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages.”).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1, 2, 3, 4, 5, 6, 7, 10, and 11 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 3, 4, 7, 8, 9, 11, and 12 of U.S. Patent No. 11998621. Although the claims at issue are not identical, they are not patentably distinct from each other because both the instant application and the patented case claim a radically polymerizable dental material which comprises at least one ABA block copolymer which is PCL-b-PDMS-b-PCL or PMMA-b-PDMS-b-PMMA, at least one monofunctional radically polymerizable material which may be tricyclodecane methyl (meth)acrylate, at least one radically polymerizable urethane di(meth)acrylate telechel (polyfunctional (meth)acrylate), additional di(meth)acrylate monomers, fillers, a photoinitiator, and further additives. The patented and instant claims differ slightly in the claimed wt% ranges. A prima facie case of obviousness exists where the claimed ranges overlap or lie inside ranges disclosed by the prior art. See MPEP 2144.05(I). The open language of the instant claims encompasses any additional ingredients of the patented claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Savannah G Phillips whose telephone number is (571)270-0822. The examiner can normally be reached M-Th 8-6 ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joseph Del Sole can be reached at (571)272-1130. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SAVANNAH G. PHILLIPS/Examiner, Art Unit 1763
/JOSEPH S DEL SOLE/Supervisory Patent Examiner, Art Unit 1763
