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 .
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.
Claim(s) 1-16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Cinader et al. (US Serial No. 2013/0280669).
Regarding claims 1-8; Cinader et al. teaches a hardenable dental compositions which can be hardened (e.g. polymerized by conventional photopolymerizing and/or chemical polymerization techniques) comprising ethylenically unsaturated compounds such as 2,2-bis[4-(2-hydroxy-3-ethacryloxypropoxy)phenyl]propane (bisGMA, vinyl ether) [0087], styrene (solvent) [0086], a photobleachable dye, such as Eosin Y (photosensitizer) [0150], and benzoyl peroxide initiators [0129]. Cinader et al. teaches the hardenable dental composition can be hardened by exposure to UV or visible light [0162].
Although Cinader et al. does not explicitly disclose a “first composition” and a “second composition” it is the Examiner’s position that the claim merely requires a mixture of a vinyl ester monomer, photosensitizer, and peroxide, which is taught by Cinader et al. Furthermore, the selection of any order of mixing ingredients is a prima facie case of obviousness in the absence of new or unexpected results. See In re Burhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946) and In re Gibson, 39 F.2d 975, 5 USPQ 230 (CCPA 1930), see MPEP §2144.04.
Cinader et al. teaches all of the above required components, however fails to explicitly disclose each in a preferred embodiment. 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. See Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.); MPEP §2123. Cinader et al. does not specifically disclose an embodiment containing bisGMA, benzoyl peroxide, and Eosin Y. However, at the time of invention a person of ordinary skill in the art would have found it obvious to prepare a composition containing bisGMA, benzoyl peroxide, and Eosin Y based on the invention of Cinader et al., and would have been motivated to do so since Cinader et al. suggests that the composition can contain bisGMA, benzoyl peroxide, and Eosin Y. Additionally, “It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art.” In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) (citations omitted) [see MPEP 2144.06].
Regarding claim 9; Cinader et al. teaches using an ORTHOLUX brand LED curing light [0178-0179], however does not explicitly teach wherein the actinic ray has an intensity between 10W and 40W. The experimental modification of this prior art in order to ascertain optimum operating conditions fails to render applicants’ claims patentable in the absence of unexpected results. See In re Aller, 105 USPQ 233; see MPEP §2144.05. At the time of the invention a person having ordinary skill in the art would have found it obvious to optimize the intensity of the light intensity and would have been motivated to do so based on the thickness of the composition in order to achieve excellent polymerization and curability at a desired rate.
Regarding claims 10-11; Cinader et al. teaches the photobleachable dye (e.g. Eosin Y/photosensitizer) is preferably employed in an amount of from 0.002% by weight to 1% by weight [0148]. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. See In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990), see MPEP §2144.05.
Regarding claims 12-13; Cinader et al. teaches the content of peroxide in the composition is 0.10 to 5 wt% [0133]. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. See In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990), see MPEP §2144.05.
Regarding claim 14; Cinader et al. does not teach a temperature at which irradiation occurs, thus one of ordinary skill in the art would presume ambient temperature (25°C) [0178-0179].
Regarding claims 15-16; Cinader et al. teaches the composition further comprises glass fiber [0035].
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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JESSICA M ROSWELL/Primary Examiner, Art Unit 1767
Prosecution Insights