DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
This application is a national stage entry under 35 U.S.C. §371 of International Application No. PCT/CN2022/104492 filed 7/8/2022.
Acknowledgment is made of applicant's claim for foreign priority under 35 U.S.C. §119(a)-(d) by Application No. CN 202110985937.9 filed 8/26/2021, which papers have been placed of record in the file.
Claims 1-16, 18, 20, 22, 24 are pending.
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 1, 7, 9, 10, 12, 14, 16, 18, 20 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.
Claims 1, 7, 9, 10, 12, 14, 16, 18, 20 recite “~” with regards to amounts. It would not be clear if ~ is intended to indicate “to”, e.g. “50~60 weight parts” as in 50 to 60 weight parts, or if “50~60 weight parts” is intended to be interpreted as about, as in about 50 to about 60 weight parts.
Claims 2-6, 8, 11, 13, 15, 22, 24 are subsumed by this rejection because of their dependence.
Appropriate correction and/or clarification is required.
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.
Claims 1-8, 11-16, 18, 20, 22, 24 are rejected under 35 U.S.C. 103 as being unpatentable over Parkar et al. (US 2020/0362157) in view of Suzuki et al. (US 2020/0392272).
Regarding claim 1: Parker is directed to a photothermal curing ([0035]) resin composition comprising
A prepolymer 50-70 wt% ([0061] [0082])
A monomer 20-70 wt % of a reactant diluent ([0101])
A photoinitiator 0.1-5 wt% ([0103]
A thermal 0.1-5 wt% ([0104])
Fumed silica and glass fillers are disclosed ([0110]), although an amount of filler is not mentioned.
Suzuki is directed to a resin composition for stereolithography comprising a polymerizable monomer, and inorganic particles including fumed silica, a glass powder, and a combination of two or more ([0054] Suzuki), wherein fumed silica of AEROSIL R972 used in the working examples. The content of the inorganic particle(s) is 0.1-5 mass % ([0057] Suzuki). When selecting a combination of fumed silica and glass powder, any amount of fumed silica ang glass powder between 0.1-5 wt% is within the claimed range of 0.01-40 weight parts. One skilled in the art would have been motivated to have selected the amount of fumed silica and glass powder in Parker for color masking as well as consistency of the resin composition for stereolithography ([0057] Suzuki). Therefore, it would have been obvious to one skilled in the art at the time the invention was filed to have selected a combination of fumed silica and glass powder within the scope of claim 1 of the present invention.
Regarding claim 2: Urethane (meth)acrylate oligomer are used in the working examples (Table 1A Parkar).
Regarding claim 3: Hydroxyethyl methacrylate (HEMA) is used in the working examples (Table 1A Parkar).
Regarding claim 4: Dibenzyl peroxide, 2,2,-azobis(isobutyronitrile) are disclosed ([0104] Parkar).
Regarding claim 5: 2,4,6-Trimethyl-benzoyldiphenylphosphine oxide is utilized in the working examples (Table 1A).
Regarding claim 6: AEROSIL R972 ([0097] Suzuki) is disclosed, which is a lipophilic treated fumed silica.
Regarding claim 7: Aerosil R972 fumed silica has a particle size of 16 nm ([0097] Suzuki).
Regarding claim 8: Barium fluoroaluminosilicate glass is disclosed ([0054] Suzuki).
Regarding claim 11: An optional inhibitor is disclosed (abstract Parkar)
Regarding claims 12-16, 18: While amounts of dispersant, catalyst, and antifoaming agent are not mentioned, claim 11 lists catalyst, dispersant, antifoaming agent colorant, and inhibitor in the alternative. Therefore, claims 12-16 are met by Parkar since an inhibitor is disclosed.
Regarding claim 20: The inhibitor is present in an amount of 0.001-1 wt% ([0008] Parkar).
Regarding claim 22: Parkar discloses some or all components are mixed together and heated ([0141]). However, case law holds that selection of any order of mixing ingredients is prima facia obvious. In re Gibson, 39 F.2d 975, 5 USPQ 230 (CCPA 1930) (Selection of any order of mixing ingredients is prima facie obvious.). MPEP 2144.04 (IV)(C). In the present case, it is clear the components can be mixed together in any order so as to obtain the resin composition. In other words, selecting any specific order of mixing ingredients is, by itself, obvious and does not amount to a patentable invention.
Regarding claim 23: Crowns and bridges are made by 3D printing the resin composition.
Claims 9-10 are rejected under 35 U.S.C. 103 as being unpatentable over Parkar and Suzuki as applied to claim 1 above, and further in view of Kodas et al. (US 2004/0134230).
Regarding claim 9: The combination of Parkar and Suzuki does not mention a glass powder with a particle size of 0.6~0.8 um and a glass powder with a particle size of 0.3~0.5 um.
Kodas is directed to a glass powder for dental compositions. The particle size is bimodal with a smaller particle size of 0.5-1 um and a larger particle size of 1-5 um ([0062] Kodas). While the larger particle size is slightly outside the claimed 0.6-0.8 um, a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985). One skilled in the art would have been motivated to have selected the glass powder of Kodas as the glass powder of choice in Parkar and Suzuki for improved wear in mechanical properties of the dental composition ([0062] Kodas). Therefore, it would have been obvious to one skilled in the art at the time the invention was filed to have selected the glass powder of Kodas as the glass powder of choice in Parkar and Suzuki.
Regarding claim 10: Kodas doesn’t mention a specific ratio of the bimodal smaller to larger particle sizes. However when faced with a mixture, one of ordinary skill in the art would be motivated by common sense to select a 1:1 ratio, a ratio that falls within the presently claimed amount, absent evidence of unexpected or surprising results. Case law holds that "[h]aving established that this knowledge was in the art, the examiner could then properly rely... on a conclusion of obviousness, ‘from common knowledge and common sense of the person of ordinary skill in the art within any specific hint or suggestion in a particular reference." In re Bozek, 416 F.2d 1385, 1390, 163 USPQ 545, 549 (CCPA 1969).
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT T BUTCHER whose telephone number is (571)270-3514. The examiner can normally be reached Telework M-F 9-5 Pacific Time Zone.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Lanee Reuther can be reached at (571) 270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ROBERT T BUTCHER/Primary Examiner, Art Unit 1764
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