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 without traverse of Group II (claims 6-8) in the reply filed on 09/04/2026 is acknowledged.
Claim Rejections -35 USC § 102/ 35 USC § 103
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.
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 non-obviousness.
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 6 and 7 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over ANICH et al. (U.S. Publication No. 2019/0374442, hereinafter ANICH).
Regarding claim 6, ANICH teaches a hardenable dental resin composition provided as a kit of parts comprising a powder part and a liquid part, mixing the powder and liquid part of the dental composition to obtain a mixture (Abstract; [0033 and 0348-0350]) (which would form a paste when mixed together). The liquid part comprises polymerizable components with an acidic moiety and polymerizable components without an acidic moiety (Abstract; [0018 and 0022-0024]).
The polymerizable component without an acidic moiety [0231-0232] which includes di(meth)acrylates of ethoxylated bisphenol A [0239] (which reads on first polymerizable monomer).
The polymerizable component having an acidic moiety [0219-0239] include 2,2-bis-4(3-methacryloxy-2-hydroxypropoxy)phenylpropane (Bis-GMA), 7,7,9-trimethyl-4,13-dioxo-3,14-dioxa-5,12-diazahexadecane-1,16-dioxy dimethacrylate (UDMA), urethane(meth) acrylates and di(meth)acrylates of bishydroxymethyltricyclo-(5.2.1.02,6) decane) and etc. [0240] (which reads on second component).
The liquid part comprises one or more solvent(s) [0211 and 0214] which adjusts the viscosity and consistency of the composition [0276]. Examples of solvent(s) include alcohols and polyalcohol/polyols (e.g., ethylene glycol and glycerol) and mixtures thereof [0277].
Given ANICH teaches the liquid part comprises solvent(s), the position is the polymerizable component without an acidic moiety (e.g., di(meth)acrylates of ethoxylated bisphenol A [0239]) can comprise the solvent which is insoluble with the polyalcohol/polyols (e.g., ethylene glycol and glycerol).
The composition can be used as a self-adhesive dental resin filling material, self-adhesive dental resin core build up material, self-adhesive dental resin cement material, self-adhesive fissure scaling sealing material, a self-adhesive dental root channel material (Abstract; [0002 and 0355]).
With the claim limitations, “A dental composition obtained by the method of producing the dental composition of claim 1,” the claim limitations is a product by process limitation.
Although ANICH does not disclose method of producing the dental composition of claim 1, it is noted that “[E]ven 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”, In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) . Further, “although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product”, In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir.1983). See MPEP 2113.
Therefore, absent evidence of criticality regarding the presently claimed (process) and given that ANICH meets the requirements of the claimed composition, ANICH clearly meet the requirements of present claims 6-8.
Regarding claim 7, as discussed in paragraphs 8-9, ANICH teaches the dental composition contains the liquid part which comprises polymerizable components with an acidic moiety and polymerizable components without an acidic moiety (Abstract; [0018 and 0022-0024]).
The polymerizable component without an acidic moiety [0231-0232] which includes di(meth)acrylates of ethoxylated bisphenol A [0239] (which reads on first polymerizable monomer). It is well-known that di(meth)acrylates of ethoxylated bisphenol A is liquid at room temperature.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over ANICH et al. (U.S. Publication No. 2019/0374442, hereinafter ANICH) in view of NAKATSUKA et al. (U.S. Patent No. 6,355,704, hereinafter NAKATSUKA).
Regarding claim 8, ANICH substantially teaches the present invention, see paragraphs 8-10 above. More specifically, ANICH teaches a hardenable dental resin composition provided as a kit of parts comprising a powder part and a liquid part, mixing the powder and liquid part of the dental composition to obtain a mixture (Abstract; [0033 and 0348-0350]). The liquid part further comprises additive(s) [0278-0279] including anti-microbials [0286]. The composition can be used as a self-adhesive dental resin filling material, self-adhesive dental resin core build up material, self-adhesive dental resin cement material, self-adhesive fissure scaling sealing material, a self-adhesive dental root channel material (Abstract; [0002 and 0355]).
However, ANICH does not teach wherein the second component further includes a second polymerizable monomer that is a solid, and wherein the second polymerizable monomer is soluble in the solvent.
In the same field of endeavor of bonding composition for dental use, NAKATSUKA teaches an antibacterial bonding composition which comprises (A) an antibacterial primer that comprises an antibacterial polymerizable monomer having an ethylenic unsaturated group and at least one or more cationic groups selected from the group consisting of ammonium bases, pyridinium bases, and phosphonium bases and a volatile solvent and an adhesive composition comprising an acid group having polymerizable monomer (B) (Abstract; Col. 5, line 63 to Col. 6, line 5).
The antibacterial polymerizable monomers include methacryloyloxydodecylpyridium salts, methacryloyloxydecyltriethylammonium salts, methacryloyloxydodecyltrimethylphosphonium salts, and etc. (Col. 6, line 50 to Col. 13, line 63). It is well-known the antibacterial polymerizable monomers are solid at room temperature as claimed.
The volatile solvent in the antibacterial primer has the ability to dissolve the antibacterial polymerizable monomer. The solvent includes water, alcohols (e.g., methanol, ethanol, 2-ethylbutanol isopropanol; ketones; ethers) (Col. 14, line 66 to Col. 15, line 10).
The bonding compositions inhibit the growth of cariogenic bacteria in the bonded area, thereby preventing secondary caries and odontitis around that area, and which can enhance the bonding strength, especially the bonding durability of the restorative dental material, to a tooth (Col. 4, lines 23-31).
Given ANICH teaches the dental composition further comprises anti-microbials [0286], it would have been obvious to a person of ordinary skill to have provided the antibacterial polymerizable monomer of NAKATSUKA with the dental composition of ANICH for the benefit of inhibiting the growth of cariogenic bacteria in the bonded area, thereby preventing secondary caries and odontitis around that area, and which can enhance the bonding strength, especially the bonding durability of the restorative dental material, to a tooth as taught by NAKATSUKA (Col. 4, lines 23-31). It is well settled that it is prima facie obvious to combine two ingredients, each of which is targeted by the prior art to be useful for the same purpose. In re Linder 457 F,2d 506,509, 173 USPQ 356, 359 (CCPA 1972).
Pertinent Art
IMAZATO et al., one of the closest prior art of record, fails to teach a dental composition obtained by the method producing the dental composition of claim 1 wherein the second component includes a solvent in which the first polymerizable monomer is insoluble.
IMAZOTO teaches an antimicrobial adhesive composition for dental use comprises the combining of polymerizable monomers including an antimicrobial monomer, a monomer containing at least one acidic group, and a monomer containing at least one alcoholic hydroxy group, in combination with water (Abstract; Col. 2, lines 38-42). The antimicrobial polymerizable monomer (A) includes monomers having the chemical structures shown in Chemical Formula 1, Chemical Formula 2, and Chemical Formula 3 (Col. 3, line 29 to Col. 5, line 5). The antimicrobial monomer (A) reads on the second component as claimed.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DEVE V HALL whose telephone number is (571)270-7738. The examiner can normally be reached M-F, 9 am-5 pm, EST.
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DEVE V. HALL
Primary Examiner
Art Unit 1763
/DEVE V HALL/Primary Examiner, Art Unit 1763
