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 .
Response to Amendment
The Examiner acknowledges the remarks filed on 10/22/25. Claims 1 and 3-17 are pending.
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.
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) 1 and 3-17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Fontein USPA_20160128909_A1.
1. Regarding Claims 1, 3-17, Fontein discloses a polymerizable composition (Abstract) comprising:
(i) 33.55% by weight/4.11 % by weight of barium silicate glass (1.5 μm/0.7 μm) and 24.66% by weight of nanoscale SiO2 (40 nm);
(ii) 2.95% by weight of urethane dimethacrylate (UDMA), 7,7,9-trimethyl-4,13-dioxo-5,12-diazahexadecane-l,16-dioxydimethacrylate, corresponding to formula I where Rl,2: CH3; R5,6; C2 alkylene group; A: N; B: O; RS: C9 hydrocarbyl group; and (ii) 10.27% by weight of free-radically curable disiloxane; and a free-radically curable polysiloxane;
(iii) 3.05% by weight of bis-GMA (acrylate/ether-based difunctional monomer) and 3.62% by weight of DDM (acrylate-based difunctional monomer);
(iv) 0.65% by weight of TPO initiator/photopolymerizer and 1.93% by weight/0.05% by weight of additives/stabilizers; which is referred to as composite paste (paragraphs [0218-0232] and [0249]-[0258]; Example 5; Table 5).
Fontein also discloses a disiloxane “24” according to the invention which comprises a urethane acrylate having a
bifunctional thiolurethane group and at least one olefinic group, hence the following structure (paragraph [0111]):
PNG
media_image1.png
106
458
media_image1.png
Greyscale
and which therefore falls under the subject matter of the present set of claims; since the disiloxane 24 described is explicitly disclosed as an equivalent alternative (paragraph [0101]). The use of two urethane acrylates together for the same purpose is logical and natural:
“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).
Fontein discloses molded dental parts produced on the basis of different manufacturing processes, including DLP, 3D printing and SLS (paragraphs [0212]-[0217]).
Response to Arguments
Applicant's arguments filed 10/22/25 have been fully considered but they are not persuasive.
Applicants state: “However, the second urethane of presently claimed formula V is defined as urethane of formula V in that R¹⁴ is defined, whereby R¹⁴ comprises the radicals R⁷, which are also defined. It follows that the thiol urethanes of formula V according to the presently claimed polymerizable composition have either central quaternary carbon atoms with three to four ester groups of formula Vla to Vlc or tri- or tetra-functional thiols, each of which comprises a thiol urethane group, a further urethane group and an ester group as R⁷. Thus, claim 1 does not comprise any thiolurethane with a disiloxane unit.”
The Examiner respectfully submits that a plain reading of instant Claim 1 indicates that it is NOT defined and restricted to the aforementioned radicals only. Rather, R14, as mentioned in dependent Claim 2, can be any radical consistent with formula V, which includes a disiloxane backbone. The remainder of the arguments continue to argue against the use of disolixane backbones, but as stated, the formulas as they currently stand in independent claim 1 does allow for a disiloxane backbone.
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 TAHSEEN KHAN whose telephone number is (571)270-1140. The examiner can normally be reached Mondays-Saturdays 08:00AM-10:00PM.
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, Frank Vineis can be reached at 5712701547. 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.
/TAHSEEN KHAN/Primary Examiner, Art Unit 1781 March 7, 2026