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 .
Claim Rejections - 35 USC § 102
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 1-5 and 7-11 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Herring (WO 2021/101801 A1 - of record).
Regarding claims 1-5 and 7-11, Herring teaches a method of producing a denture, comprising producing a partial denture base by bottom-up or top-down stereolithography additive manufacturing from a dual cure resin, with the dual cure resin comprising a light polymerizable component and a heat polymerizable component, with the denture base including at least one tooth socket; wherein the resin may comprise photoinitiators; wherein, prior to or during the inserting step, the at least one tooth socket comprises the dual cure resin in uncured form, wherein said uncured dual cure resin is added to the socket(s) and/or is retained dual cure resin in uncured or partially cured form therein; (b) inserting an acrylic artificial tooth into each at least one tooth socket to produce an assembled intermediate product; and then (c) baking said assembled intermediate product for a time sufficient to cure said heat polymerizable component in said denture base and retained dual cure resin, bond said tooth into each at least one socket with said retained dual cure resin, and produce said flexible partial denture (adhering a denture base that is a stereolithographic article of a curable composition (I) containing a (meth)acrylic based polymerizable monomer component (A) containing a (meth)acrylic based polymerizable monomer (m) as a major monomer, and a photopolymerization initiator, and a prosthetic tooth containing an acrylic based resin (II), with an adhesive composition containing a composition (III) containing a (meth)acrylic based polymerizable monomer component (C) containing the same (meth)acrylic based polymerizable monomer (m) as contained in the curable composition (I); wherein the (meth)acrylic based polymerizable monomer (m) is a polyfunctional (meth)acrylic based polymerizable monomer (a-1); wherein the polyfunctional (meth)acrylic based polymerizable monomer (a-1) is a urethanated (meth)acrylate ester compound; wherein the (meth)acrylic based polymerizable monomer component (A) contains a monofunctional (meth)acrylic based polymerizable monomer (a-2); wherein the (meth)acrylic based polymerizable monomer component (C) contains a monofunctional (meth)acrylic based polymerizable monomer (a-2); wherein the curable composition (I) has a content of the (meth)acrylic based polymerizable monomer (m) of 50% by mass or more based on 100% by mass of the (meth)acrylic based polymerizable monomer component (A); wherein the composition (III) has a content of the (meth)acrylic based polymerizable monomer (m) of 50% by mass or more based on 100% by mass of the (meth)acrylic based polymerizable monomer component (C); wherein the curable composition (I) contains the (meth)acrylic based polymerizable monomer component (A) in an amount of 40% by mass or more based on 100% by mass of the curable composition (I); wherein the composition (III) contains the (meth)acrylic based polymerizable monomer component (C) in an amount of 40% by mass or more based on 100% by mass of the composition (III); and wherein the method comprises the following steps (1) and (2) in this order: step (1): a step of coating the adhesive composition on at least one selected from the denture base and the prosthetic tooth, and step (2): a step of adhering the denture base and the prosthetic tooth via the adhesive composition under pressure) (Page 6-9, claims 1 and 4, and Example 2: ABPU and UDMA as urethane polyfunctional methacrylate monomers; IBOMA as a monofunctional (meth)acrylic based polymerizable monomer; and TPO as a photo initiator).
Regarding claim 12, as applied to claim 1, Herring teaches a method wherein the denture base with inserted artificial teeth and uncured resin in the sockets is subjected to a "flood" UV cure to polymerize the resin, optionally prior to the baking step (irradiating the adhesive composition with an active energy light ray, so that the adhesive composition is cured to adhere the denture base and the prosthetic tooth) (Page 6).
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
Claims 6 and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Herring (WO 2021/101801 A1 - of record), as applied to claims 4 and 5, respectively, and in view of Sugihara (US 2023/0030249 A1).
Regarding claims 6 and 13, as applied to claims 4 and 5, respectively, Herring does not explicitly teach a method of producing a denture wherein the monofunctional (meth)acrylic based polymerizable monomer (a-2) is a (meth)acrylate ester based polymerizable monomer having an aromatic ring.
However, reasonably pertinent to the particular problem with which the applicant was concerned (adhesive compositions comprising a monomer having an aromatic ring; see MPEP 2141.01(a)), Sugihara teaches a known resin material containing 20 to 90% by mass of a monomer having an aromatic ring structure, wherein an amount of the monomer having the aromatic ring structure is adjusted to within the aforementioned range is preferable from the viewpoints of the improvement effect in the adhesion (¶0152).
One of ordinary skill in the art before the effective filing date of the invention would have found it obvious to substitute the material taught by Herring with the monomer having an aromatic ring structure taught by Sugihara since the selection of a known material, which is based upon its suitability for the intended use, is within the ambit of one of ordinary skill in the art. MPEP 2144.07.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP §§ 706.02(l)(1) - 706.02(l)(3) for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-13 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-11 and 13 of copending Application No. 18/692400 (reference application) in view of Herring (WO 2021/101801 A1 - of record). Although the claims at issue are not identical, they are not patentably distinct from each other. This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Regarding claim 1-13, the limitations recited in claims 1-11 and 13 of the reference application disclose a similar method.
The reference application does not explicitly disclose a method comprising adhering a denture base and prosthetic tooth with an adhesive composition, wherein the method comprises the following steps (1) and (2) in this order: step (1): a step of coating the adhesive composition on at least one selected from the denture base and the prosthetic tooth, and step (2): a step of adhering the denture base and the prosthetic tooth via the adhesive composition under pressure; nor wherein the method comprises irradiating the adhesive composition with an active energy light ray, so that the adhesive composition is cured to adhere the denture base and the prosthetic tooth.
Herring teaches the known technique of adhering a denture base and prosthetic tooth with an adhesive composition, wherein the method comprises the following steps (1) and (2) in this order: step (1): a step of coating the adhesive composition on at least one selected from the denture base and the prosthetic tooth, and step (2): a step of adhering the denture base and the prosthetic tooth via the adhesive composition under pressure; nor wherein the method comprises irradiating the adhesive composition with an active energy light ray, so that the adhesive composition is cured to adhere the denture base and the prosthetic tooth (Page 6-9, claims 1 and 4, and Example 2: ABPU and UDMA as urethane polyfunctional methacrylate monomers; IBOMA as a monofunctional (meth)acrylic based polymerizable monomer; and TPO as a photo initiator).
One of ordinary skill in the art before the effective filing date of the invention would have found it obvious to modify the disclosure of claims 1-11 and 13 disclosed in the reference application by applying the known technique disclosed in Herring with predictable results. MPEP 2143(D).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Parkar (US 2019/0374309 A1) teaches a method of producing a denture wherein the filled mold was placed between two glass plates and cured in a broad spectrum UV chamber (Dymax Light Curing Systems Model 2000 Flood) for 5 minutes (¶0254).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JaMel M Nelson whose telephone number is (571)272-8174. The examiner can normally be reached 9:00 a.m. to 5:00 p.m..
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, Galen Hauth can be reached on (571) 270-5516. 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.
/JAMEL M NELSON/Primary Examiner, Art Unit 1743
Prosecution Insights