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.
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.
Claim(s) 9-10 and 12-13 are rejected under 35 U.S.C. 103 as being unpatentable over Kishi et al. (KR 20190039187).
Regarding claim 9, Kishi et al. teaches a two-component dental adhesive composition comprising a first component and a second component separately packaged (paragraph [0009]); wherein the first component comprises (A) the acid group-containing polymerizable monomer and (B) the sulfur atom-containing polymerizable monomer, and the second component comprises (C) the silane coupling agent, (D) the borate compound, and (E) water (paragraph [0009]); the mixing ratio of (A) the acidic group-containing polymerizable monomer to 100 parts by mass of the total polymerizable monomer is 5 parts by mass to 30 parts by mass (paragraph [0010]); and the remainder is a sulfur atom-containing polymerizable monomer (B) and/or another polymerizable monomer (G) which do not contain an acidic group (paragraphs [0088], [01030], [0144], and [0148]); (G) other polymerizable monomers may be added to both the first agent and the second agent (paragraph [0147]), 0.1 to 100 parts by mass of the coating reinforcing agent such as silica particles may be added to both the agent and the second agent (paragraphs [0165]-[0167]), 0.1 to 30 parts by mass of silane coupling agent may be used, including γ-methacryloxypropyl triisopropoxysilane may be used alone (paragraphs [0105] and [0112]), i.e. 100% of the silane coupling agent, wherein methacryloxypropyl corresponds to the radically polymerizable group, and triisopropoxy corresponds to the branched alkoxy group, and in a case where the dental adhesive composition contains components other than the acidic group-containing polymerizable monomer, the acidic group-free polymerizable monomer, the silica filler, and the silane coupling material, the components are contained in the first agent and/or the second agent.
Regarding claim 10, Kishi et al. teaches further comprising water in the second agent (paragraph [0124]). Given that Kishi et al. teaches water in an amount of 5 to 50 parts by mass per 100 polymerization reactive component (paragraph [0125]) and silane coupling agent in an amount of 0.1 to 30 parts by mass per 100 total polymerizable monomer (paragraph [0113]),
Regarding claims 12 and 13, Kishi et al. teaches two-paste type dental cement comprising the two-component dental adhesive composition (paragraphs [0133] and [0203]).
Response to Arguments
Applicant's arguments filed 06/04/2026 have been fully considered but they are not persuasive.
Applicant amended claims to overcome 35 US 112(b) rejection of record.
Applicant argues that a person of ordinary skill in the art would not be motivated to highly fill the composition of Kishi in a way that results in a functional failure having an adhesive strength of 0. In fact, Applicant submits that the general knowledge in the art actually teaches away from such a modification for the reasons discussed above.
However, the fact remains that the amount of silica disclosed by Kishi overlaps that presently claimed.
Applicant argues that the assertion in the Action that a skilled artisan would apply a high filling to Kishi is based on the impermissible use of hindsight gleaned from Applicant's own disclosure.
However, in response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
Applicant argues that the specific structure of this a-branched silane has criticality for realizing preservation stability in a paste state. Achieving such preservation stability of a highly filled paste for the first time through this specific structure is an effect beyond the expectation of a person of ordinary skill in the art (i.e., unexpected results) that could not have been predicted from the conventional liquid system of Kishi.
However, Kishi teaches the branched alkoxy group and, therefore, it would be reasonable to expect the same result in the composition of Kishi.
Applicant argues that a person of ordinary skill in the art would not have had any reason to modify the Kishi composition to arrive at the claimed invention.
However, the Office action of record is not modifying Kishi. Rather, Kishi explicitly discloses components (A), (B) and (C) in amounts as presently claimed.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 CHENG HUANG whose telephone number is (571)270-7387. The examiner can normally be reached on Monday-Thursday from 7 AM to 5 PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Callie Shosho, can be reached at 571-272-1123. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CHENG YUAN HUANG/Primary Examiner, Art Unit 1787
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