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 .
Objections
Applicant is reminded of the proper content of an abstract of the disclosure.
A patent abstract is a concise statement of the technical disclosure of the patent and should include that which is new in the art to which the invention pertains. The abstract should not refer to purported merits or speculative applications of the invention and should not compare the invention with the prior art.
If the patent is of a basic nature, the entire technical disclosure may be new in the art, and the abstract should be directed to the entire disclosure. If the patent is in the nature of an improvement in an old apparatus, process, product, or composition, the abstract should include the technical disclosure of the improvement. The abstract should also mention by way of example any preferred modifications or alternatives.
Where applicable, the abstract should include the following: (1) if a machine or apparatus, its organization and operation; (2) if an article, its method of making; (3) if a chemical compound, its identity and use; (4) if a mixture, its ingredients; (5) if a process, the steps.
Extensive mechanical and design details of an apparatus should not be included in the abstract. The abstract should be in narrative form and generally limited to a single paragraph within the range of 50 to 150 words in length.
See MPEP § 608.01(b) for guidelines for the preparation of patent abstracts.
The abstract of the disclosure is objected to because the abstract has more than one paragraph. A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
The disclosure is objected to because of the following informalities: Formula 1 in paragraphs 7, 9, 37, and the acrylate structure at the top of page 11, the nitrogen atom is missing an H or an R group. It is interpreted by the Examiner that both nitrogen atoms are connected to an H atom.
Appropriate correction is required.
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.
Claim 1 is 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.
For claim 1, the nitrogen atom is missing an H or R group. It is interpreted by the Examiner that both nitrogen atoms are connected to an H atom.
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) 1-2, 4, 6-9 are rejected under 35 U.S.C. 103 as being unpatentable over EP 4,124,331 A1, as interpreted by the US equivalent 12,296,031 B2, (Bielec et al.), further in view of WO 2016/159219 A1, as interpreted by the US equivalent 10,470,980 B2 (Yoshinaga et al.).
Bielec et al. disclose a curable methacrylate-based dental filling composite using a urethane containing dimethacrylate compound. The disclosed composition comprises of a urethane containing methacrylate monomer, in combination with acrylates which do not contain urethane, inorganic filler, chain transfer agent and initiators, see column 4, lines 13-20.
Bielec et al. teach that the dental composition contains urethane containing methacrylate in a range preferably between 10 to 25% by weight, which can be used alone or in combination with other urethane containing dimethacrylate, see column 6, lines 39-41 (meets Applicants’ range in claim 1, (A) from 14 to 36% by mass). Dimethacrylates which do not contain the urethane functionality range from 10-35% by weight, see in column 7, lines 1-3 (meets the Applicants’ range in claim 1, (B) from of 2-12%). It is further disclosed that the composition contains inorganic filler, used in a range from 20-80% in weight, found in column 11, lines 14-15 (meets Applicants’ range in claim 1, (C) from 60-80%). The disclosed initiator range is from 0.01 to 2%, see column 13, lines 51-52, (meets Applicants’ range in claim 1, (D) from 0.1-0.5%) while the chain transfer agent is 0-8% by weight, column 8, lines 42-43 (meets Applicants’ range in claim 1, (E) from 0.1-0.5%).
Bielec et al. teach a composition comprised of a bifunctional urethane methacrylate monomer, a bifunctional methacrylate monomer not containing a urethane group, inorganic filler, thermal polymerization initiator, and chain transfer agent, and their ranges which overlap with those of claim 1. It has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. Case law holds that differences in concentrations do not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating criticality for the claimed ranges. "Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation", In re Aller, 105 USPQ 233.
Bielec et al. does not teach the claimed methacrylate structure found in Formula one. Bielec et al. teach a derivative structure as they refer to as V380, column 5, lines 11-23, which contain a dimethyl group in between the NH group and the phenyl group.
Yoshinaga et al. teach polymerizable monomers useful for dental material compositions, see column 7, lines 11-13. One of the polymerizable monomers is the bifunctional urethane methacrylate monomer of claim 1 represented in Formula 1, see columns 93-94, structure 18d.
Yoshinaga et al. further teaches a curable composition comprised of the urethane containing monomer such as 18d, column 10, [18], a methacrylate monomer, column 10, [19], an polymerization initiator, column 11, [21], and an inorganic filler, column 12, [34]. It is further disclosed that the dental composition can be used in any application without limitation with typical examples including dental prosthetic materials, column 37, lines 26-34. Yoshinaga et al. do not teach chain transfer agents used in the composition.
Yoshinaga et al. further teach R groups connected to the nitrogen of the urethane can be either a methyl group or a hydrogen atom column 8, lines 8-26. This includes the monomer of Formula 1 in claim 1, as well as the monomer V380. The fact that these two monomers are used in the alternative, it suggests that their functional equivalent in such dental material composition.
It is prima facie obvious to substitute equivalents, motivated by the reasonable expectation that the respective species will behave in a comparable manner or give comparable results in comparable circumstances. The express suggestion to substitute one equivalent for another need not be present to render the substitution obvious. Since one of ordinary skill in the art would expect these two diacrylate monomers to function in an equivalent or comparable manner, it would have been obvious to use one in place of the other with the expectation of obtaining useful and predictable results. In re Font, 213 USPQ 532, see MPEP 2144.06 II.
For claim 2, given the ratio claimed between the monomer claimed in formula 1 and the methacrylate not containing the urethane group, 90:10 to 70:30, which overlaps with the percentages of the two monomers disclosed by Bielec et al., for urethane containing methacrylate 10-25% by weight, column 6 lines 39-41 and methacrylates not containing urethane functionality 10-35%, column 7, lines 1-3. The ratio can be converted to percentage and does overlap with the disclosed amounts of the two monomers. Case law holds that differences in concentrations do not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating criticality for the claimed ranges. "Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation", In re Aller, 105 USPQ 233.
For claim 4, Bielec et al. teaches that urethane containing dimethacrylates can be polymerized with other methacrylates which do not have to contain the urethane bond, column 6 lines 50-65.
For claim 6, Bielec et al. teaches that urethane containing dimethacrylates can be polymerized with other methacrylates which do not have to contain the urethane bond, column 6 lines 50-65.
For claim 7, Bielec et al. teaches that urethane containing dimethacrylates can be polymerized with other methacrylates which do not have to contain the urethane bond, column 6 lines 50-65.
For claim 8, Bielec et al. teaches that urethane containing dimethacrylates can be polymerized with other methacrylates which do not have to contain the urethane bond, column 6 lines 50-65.
For claim 9, see Bielec et al. column 12, line 51 and further column 20, line 56, which teaches that the dental composite is made by curing the composition.
Claims 3 and 5 are rejected under 35 U.S.C. 103 as being unpatentable over EP 4,124,331 A1, as interpreted by the US equivalent 12,296,031, (Bielec et. al.), further in view of WO 2016/159219 A1, as interpreted by the US equivalent 10,470,980 B2 (Yoshinaga et al.) as applied to claims 1 and 2 above, and further in view of US 11,311,350, Hosokawa et al.
Regarding claims 3 and 5: Bielec et al. teach a curable composition using the components and the ranges of claims 1 and 2, as noted above. Bielec et al. also teach that the chain transfer agents are monomers which control chain growth during the polymerization, results in a reduction of the shrinkage force and is beneficial for the edge tightness, column 8, lines 36-41, and are used to reduce polymerization shrinkage stress, column 2 lines 23-27.
Bielec et al. does not teach the urethane methacrylate monomer represented by Formula 1 in claim 1, and that the chain transfer agent can be a terpenoid compound.
Yoshinaga et al. teach the claimed urethane methacrylate monomer represented by Formula 1 in claim 1, as noted above.
Yoshinaga et al. does not teach chain transfer agents of claims 1, 3 and 5.
Hosokawa et al. discloses a similar type of curable resin for dental cutting and machining, where the composition is made of a polymerizable monomer, inorganic filler, a polymerization initiator, see the abstract. Hosokawa et al. teaches that in heating polymerization or curing of the polymerizable monomer, it is preferable that the composition for the resin contains a chain transfer agent, see column 14, lines 62-67 and column 15, lines 1-3. The chain transfer agent helps control the polymerization and curing, leading to a more uniform polymerization and curing, which is required to prevent cracks and chipping, column 14 lines 62-67 and column 15 lines 1-3. It is further disclosed that terpenoid compounds are preferable for the curing of the composition, with examples being limonene, myrcene, a-terpinene, d-terpinene, g-terpinene, terpinolene, amongst others, column 15 lines 3-10.
MPEP 2144.07 teaches the selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945). It would be obvious for one of ordinary skill at the effective date of filing to combine the teachings of Hosokawa et al. and Bielec et al. because the chain transfer agent reduces the shrinkage force, helps edge tightness and leads to a more uniform polymerization which prevents cracks and chipping of the product.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to VLADIMIR VLADIMIROVICH ZOTOV whose telephone number is (571)272-0627. The examiner can normally be reached 8-5.
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/V.V.Z./Examiner, Art Unit 1765
/MARGARET G MOORE/Primary Examiner, Art Unit 1765
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