DETAILED ACTION
Election/Restrictions
Applicant’s election of claims 1-6 in the reply filed on 08/21/2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
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.
Claims 4 and 6 are 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.
Claim 4 recites “a weight ratio of the polishing composition is set to 0.4 or higher, representing a dry weight of the porous base member (A) alone as 1”. The limitation “representing a dry weight of the porous base member (A) alone as 1” renders claim indefinite, because it is unclear whether a weight ratio is referring to a ratio of the polishing composition to the porous base member or a ratio of the polishing composition to the polishing instrument, wherein the porous base member (A) alone is 1. It is noted, that for the purpose of claim interpretation, the examiner will treat “a weight ratio” as referring to a ratio of the polishing composition to the porous base member.
Regarding claim 6, the phrase "bullet-like" renders the claim indefinite because the claim includes elements not actually disclosed (those encompassed by the term “like"), thereby rendering the scope of the claim unascertainable. See MPEP § 2173.05(d).
Claim Rejections - 35 USC § 102
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 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.
Claims 1 and 3 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Franke et al. (US 10888973 B2), hereinafter referred to as FRANKE.
Regarding claim 1, FRANKE teaches a dental polishing instrument (Col. 8, lines 52-53: a dental polishing tool) comprising:
a porous base member (A) (Fig. 2 and Col. 8, lines 55-56: dental bur 200 comprises abrasive particles 205 secured in porous metal bond); and
a polishing composition that contains abrasive grains (B) and a water-soluble binder (C) (Col. 6, lines 55-61: the liquid binder precursor material may include a polymer; examples of suitable polymers may include polyvinyl pyrrolidones, polyvinyl caprolactams, polyvinyl alcohols, polyacrylamides, poly(2-ethyl-2-oxazoline) (PEOX), polyvinyl butyrate, copolymers of methyl vinyl ether and maleic anhydride, certain copolymers of acrylic acid and/or hydroxyethyl acrylate, methyl cellulose), and that is held by the porous base member (Fig. 2 and Col. 8, lines 55-56: dental bur 200 comprises abrasive particles 205 secured in porous metal bond).
Regarding claim 3, FRANKE teaches the dental polishing instrument according to claim 1, wherein the water-soluble binder (C) is at least one selected from the group consisting of polyvinylalcohol, polyvinylpyrrolidone, polyacrylate, polyethylene glycol, alginate, pullulan, carrageenan, hydroxyethyl cellulose, and methyl cellulose (Col. 6, lines 55-61: examples of suitable polymers may include polyvinyl pyrrolidones, polyvinyl caprolactams, polyvinyl alcohols, polyacrylamides, poly(2-ethyl-2-oxazoline) (PEOX), polyvinyl butyrate, copolymers of methyl vinyl ether and maleic anhydride, certain copolymers of acrylic acid and/or hydroxyethyl acrylate, methyl cellulose).
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.
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 1-2 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over Takahashi et al. (US 7785106 B2), hereinafter referred to as TAKAHASHI, in view of Tseng et al. (EP 0600004 B1), hereinafter referred to as TSENG.
Regarding claim 1, TAKAHASHI teaches a dental polishing instrument (see TAKAHASHI at Col. 1, lines 26-28: a prophy chip for cleaning, polishing and burnishing teeth without requiring a polishing paste) comprising:
a porous base member (A) (see TAKAHASHI at Col. 1, lines 34-35: hydrophilic grindstone sponge); and
a polishing composition that contains abrasive grains (B) and that is held by the porous base member (see TAKAHASHI at Col. 1, lines 34-37: a hydrophilic grindstone sponge containing a polishing agent such as aluminum oxide).
While TAKAHASHI discloses that the hydrophilic sponge of the invention comprises at least one water soluble agent such as a polishing agent, a foaming agent, a medicament for inhibiting or preventing periodontal diseases or dental caries, or a coating agent (see TAKAHASHI at Col. 2, lines 13-17), TAKAHASHI is silent with respect to the polishing composition containing a water-soluble binder.
However, the use of sustained-release matrices for dental applications is known in the art, as evidenced from the disclosure of TSENG describing an oral brush comprising a layer being a sustained-release matrix comprising a water-insoluble support resin, a water-soluble polymer, and anti-microbial agent (see TSENG at lines 24-27, p. 2). TSENG discloses that the preferred polymers for the support resin include polystyrene, polyurethane ethylene vinyl acetate, polyethylene, styrene/rubber; and that the preferred water-soluble polymers are starches, hydroxyethyl and hydroxypropyl celluloses, and gelatins (see TSENG at lines 57-58, p. 2 – lines 7-8, p. 3).
Both TAKAHASHI and TSENG disclose tools for dental applications. According to MPEP § 2144.06(I), "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). Therefore, it would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to have modified the composition of TAKAHASHI by including the water-soluble polymer on a support, e.g., to form a sustained-release matrix, as disclosed by TSENG based on teachings of TAKAHASHI describing that the hydrophilic sponge of the invention comprises at least one water soluble agent such as a polishing agent or a coating agent (see TAKAHASHI at Col. 2, lines 13-17).
Regarding claim 2, TAKAHASHI as modified by TSENG teaches the dental polishing instrument according to claim 1, wherein the abrasive grains are released from the porous base member when the polishing composition is brought into contact with water or a liquid containing alcohol (see TAKAHASHI at Col. 2, lines 13-15: the hydrophilic sponge of the invention comprises at least one water soluble agent such as a polishing agent; and TSENG at lines 3-4, p. 3: a water-soluble substance is a substance that is sufficiently soluble in water that it will dissolve out of the matrix during contact with water).
Regarding claim 6, TAKAHASHI as modified by TSENG teaches the dental polishing instrument according to claim 1, wherein the porous base member has any one of a bullet-like shape, a spindle shape, a cylindrical shape, a conical shape, a paraboloid shape, and a cup shape (see TAKAHASHI at Col. 1, lines 31-34: a prophy chip is provided, mounted on the top of a dental rotary instrument, comprising a hollow cup-shaped core of canopy (semispherical) type, cylindrical type, cup type, cone type, inverted cone type or disk type).
Allowable Subject Matter
Claim 4 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Claim 5 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
FRANKE and TAKAHASHI do not disclose a dental polishing instrument, wherein 40% hardness of the porous base member (A), resultant of applying a compressive load to the porous base member (A) alone in accordance with JIS K 6400-2 hardness A method, is within a range of 3 N to 18 N, as set forth in claim 5. Furthermore, FRANKE, TAKAHASHI and TSENG fail to provide any reasons or suggestions to one of ordinary skill in the art to further modify FRANKE or TAKAHASHI so that the disclosed dental instruments would be equivalent to the claimed dental polishing instrument comprising 40% hardness of the porous base member (A) within a range of 3 N to 18 N.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANASTASIA KUVAYSKAYA whose telephone number is (703)756-5437. The examiner can normally be reached Monday-Thursday 7:00am-5:00pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Amber Orlando can be reached at 571-270-3149. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANASTASIA A. KUVAYSKAYA/Examiner, Art Unit 1731
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