DETAILED ACTION
An Office Action was mailed 06/16/2026. Applicant filed a Response on 07/07/2026.
Claims 1-8 are pending. Claims 6-8 are withdrawn from consideration.
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 I, claims 1-5, in the reply filed on 07/07/2026 is acknowledged.
Claims 6-8 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 07/07/2026.
Claim Objections
Claim 1 is objected to because of the following informalities:
Claim 1, line 3, it is suggested to amend the term “the inorganic particles” to “the polyvalent metallic element-including inorganic particles” in order to ensure proper antecedent basis in the claims. Appropriate correction is required.
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 1-4 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ishihara et al, WO 2015/152129A1 (Ishihara).
Ishihara was cited in the IDS filed 03/04/2024. The Examiner has provided a machine translation of Ishihara with the Restriction mailed 06/16/2026. The citation of the prior art below refers to the machine translation.
Regarding claims 1-4, Ishihara discloses a dental composition comprising fluoroalumino silicate glass particles, calcium phosphate particles (polyvalent metallic element-including inorganic particles), ethylenediamine tetraacetic acid or a salt thereof (a chelating agent), polyalkenoic acid and water (Ishihara; page 2, lines 49-51). Applicant’s specification at page 4, lines 4-9, discloses that Ca+2 is a polyvalent metallic element.
Because ethylenediaminetetraacetic acid or a salt thereof is present in the system, ethylenediaminetetraacetic acid or a salt thereof is more reactive than polyalkenoic acid with the calcium phosphate particles. By chelating the ions, the reaction time of the polyalkenoic acid and the calcium phosphate particles are delayed, and sufficient operation time can be secured. In addition, ethylenediaminetetraacetic acid or a salt thereof chelates calcium ions (i.e., treating the inorganic particles with a chelating agent) and is thought to contribute to a crosslinking reaction, so that it eventually promotes curing and accelerates the curing time in the oral cavity (i.e., a dental filling material) (Ishihara; page 4, lines 10-16).
Sodium EDTA hydrate was used as an aqueous solution (i.e., a solution including a chelating agent of claim 1) (Ishihara; see for example page12, lines 42-45; and page 14, lines 5-15).
The dental curable compositions are used as a filling material (Ishihara; page 9, lines 32-34).
Ishihara exemplifies treating tetracalcium phosphate particles (i.e., polyvalent metallic element-including inorganic particles) with commercially available sodium edetate hydrate dissolved in water (i.e., a solution of the aminopolycarboxylate acid salt of claim 2, and the ethylene diamine tetraacetic acid sodium salt of claim 3). The particles are further heat-treated as claimed (claim 4) (Ishihara; page 14, lines 1-17).
Ishihara, therefore, discloses methods for producing a dental filling material as claimed.
Claims 1-4 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Lueck et al, DE 102008028306A1 (Lueck).
Lueck was cited in the IDS filed 09/05/2025. The Examiner has provided a machine translation of Lueck with this Office Action. The citation of the prior art below refers to the machine translation.
Regarding claims 1-3, Lueck discloses a polymerizable dental material with nanodiamonds (i.e., inorganic particles) that is toxicologically safe (Lueck; [0010]). The polymerizable dental material has a redox initiator system and nanodiamonds, and has better storage stability (Lueck; [0011]).
It is recognized that nanodiamond has a high proportion of potentially toxic substances, in particular heavy metals such as lead, tin and barium, as well as a high proportion of transition metal ions such as iron, chromium, manganese, copper and nickel, which are suitable co-initiators in the redox initiator system (i.e., polyvalent metallic element-including inorganic particles) (Lueck; [0014]). The toxicologically concerning substances can be reduced to safe levels, and the co-initiator transition metal ions can be depleted from the nanodiamonds before processing in the dental material so they are no longer present as unwanted co-initiators (Lueck; [0015] and [0020]).
Selective removal of the ions can be obtained by using an aminopolycarboxylic complexing agent which forms stable chelate complexes with the multivalent ions. Such chelating agents include disodium ethylenediaminetetraacetic acid (i.e., the aminopolycarboxylic acid salt of claim 2, and the EDTA salt of claim 3) (Lueck; [0024]).
The dental composition may be a filling material as claimed (Lueck; [0053]).
In Example 4, Lueck exemplifies treating nanodiamond powder with a solution of EDTA disodium salt dihydrate in order to chelate the transition metal ions (Lueck; [0065-0067]). See also Example 5 (Lueck; [0068-0070]).
Lueck therefore anticipates methods for producing a filling material as claimed.
Regarding claim 4, Lueck is relied upon as disclosing the limitations of claim 1 as discussed above. Lueck discloses in a preferred embodiment, the method further comprises at least one thermal treatment of the nanodiamonds (i.e., a thermal treatment step as claimed).
A reference disclosure can anticipate a claim when the reference describes the limitations but "'d[oes] not expressly spell out' the limitations as arranged or combined as in the claim, if a person of skill in the art, reading the reference, would ‘at once envisage’ the claimed arrangement or combination." Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d 1376, 1381, 114 USPQ2d 1250, 1254 (Fed. Cir. 2015) (quoting In re Petering, 301 F.2d 676, 681(CCPA 1962)). See MPEP 2131.02.III.
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.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Lueck.
Regarding claim 5, Lueck is relied upon as disclosing the limitations of claim 1 as discussed above, wherein the dental material includes inorganic nanodiamond particles comprising polyvalent metallic elements, and wherein selective removal of the multivalent metal ions can be obtained using an aminopolycarboxylic acid complexing agent (Lueck; [0015], [0020] and [0024]).
The dental compositions can contain dentally common fillers in the inorganic phase, including glass powders and silicon dioxide (Lueck; [0049-0050]). The filler can be surface modified, such as by silanization, which can react radically with the monomers and/or have a high affinity for the polymer matrix formed from the monomers (Lueck; [0051]).
Given that Lueck discloses methods of making a dental material that overlap the presently claimed making a dental filling material, including wherein the dental material comprises inorganic fillers that have been surface modified by silanization (i.e., further comprising a silane treatment), it therefore would be obvious to one of ordinary skill in the art to use an inorganic filler which has undergone a silanization step, which is both disclosed by Lueck and encompassed within the scope of the present claims, in order to provide radical reaction with the monomers and/or provide a high affinity for the polymer matrix formed from the monomers, and thereby arrive at the claimed invention.
Examiner note: Giving the claims the broadest reasonable interpretation (BRI), claim 5 does not require that the silane treatment is performed on the polyvalent metallic element-including inorganic particles.
Alternatively, claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Lueck as applied to claim 1 above, and further in view of Kuboe et al, JP 2011015245A (Kuboe).
Regarding claim 5, Lueck is relied upon as disclosing the limitations of claim 1 as discussed above, wherein the dental material includes inorganic nanodiamond particles comprising polyvalent metallic elements as claimed. Lueck teaches that the nanodiamond powder replaces conventional dental glass filler (Lueck [0018]).
Lueck teaches that the dental material can be further enhanced with additives or modifiers to adjust certain properties (Lueck; [0052]).
The nanodiamonds are dispersed in an organic resin matrix including compounds which may contain polymerizable groups, including acidic groups such as carboxylic, phosphoric, phosphonic and sulfonic acids (Lueck; [0027] and [0029]).
Lueck does not explicitly teach a silane treatment step on the nanodiamond particles (i.e., on the polyvalent metallic element-including inorganic particles).
With respect to the difference, Kuboe teaches dental compositions comprising an inorganic particle which has excellent storage stability, even when the composition contains an acidic group-containing polymerization monomer and a polyvalent metal-containing inorganic particle (Kuboe; page 2, lines 45-48). The polyvalent metal-containing inorganic particles are treated in advance with an acid, and then surface-treated with a silane coupling agent (Kuboe; page 2, lines 51-57). By removing the polyvalent metal ions on the surface of the particles in advance with an acid and subsequently coating with a silane coupling agent, the acidic-group containing polymerization monomer is brought to the surface of the particles, suppressing adsorption and increasing adhesiveness (Kuboe; page 3, lines 24-35).
The inorganic particles are mainly composed of silica and a polyvalent metal ion, wherein silica includes silica glass and polyvalent metal ions include barium and iron (Kuboe; page 3, lines 43-50).
The particle surface from which the polyvalent metal has been removed is covered with the silane coupling agent, thereby causing acidic group-containing polymerization. Further, the silane coupling agent improves the compatibility with the polymerizable monomer and has the effect of improving the mechanical strength and water resistance (Kuboe; page 4, lines 1-5).
Acids used for the acid-treatment step include acetic acid, oxalic acid, citric acid and tartaric acid (i.e., chelating agents as claimed) (Kuboe; page 4, lines 9-13).
Kuboe is analogous art as it teaches a method for forming a dental material comprising treating polyvalent metal-containing inorganic particles with a chelating agent and a silane.
In light of the motivation provided by Kuboe to treat polyvalent metal-containing inorganic particles with a silane after treating with a chelating agent, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to treat the chelating agent-treated, polyvalent metal-containing nanodiamond particles of Lueck with a silane as claimed in order to obtain inorganic particles for use in a dental material which have improved compatibility with an acid-containing polymerizable monomer, and improved mechanical strength, water resistance and adhesiveness, and thereby arrive at the claimed invention. Further, because both Lueck and Kuboe are trying to solve the same problem, i.e., removal of polyvalent metal ions from inorganic particles which are used in polymerizable dental materials, those skilled in the art would have had a reasonable expectation of success in performing the silane treatment step of Kuboe on the nanodiamond particles of Lueck, and thereby arrive at the claimed invention.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Craig et al, US 2020/0315924 A1, teaches inorganic dental fillers treated with at least one silane [0006]. The fillers may comprise polyvalent metals [0093].
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/CDL/ Examiner, Art Unit 1732
/PAMELA H WEISS/ Primary Patent Examiner, Art Unit 1732
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