Detailed Office Action
Applicant’s amendments and arguments dated 3/26/2026 have been entered and fully considered. Claims 1, 3, 5, 7, 9-11, and 13 are amended. Claims 2, 4, 6, 8, and 12 are cancelled. Claims 1, 3, 5, 7, 9-11, and 13 remain pending.
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 .
Response to Amendments and Arguments
Applicant's amendments have overcome all but one claim objection previously set forth in the non-final office action of 12/29/2025. This objection is reiterated in this office action (see below).
Applicant’s detailed descriptions of the instant specification and instant examples are noted and appreciated (see arguments of 3/26/2026, pages 13-16).
Applicants arguments regarding the primary reference of SUN are not persuasive and are addressed below in the order that they appear in the arguments of 3/26/2026 (see pages 17-18).
Applicant states that Sun's Example 15 fails to satisfy all the recited features of instant claim 1. Specifically, the major monomer of the (meth)acrylic based polymerizable monomer component (A) of Sun's curable composition for the tooth side layer of the denture base was the oligomer of Example 1 described therein (Table I), whereas the (meth)acrylic based polymerizable monomer component (B) of Sun's prosthetic tooth composition did not contain that oligomer (Table II), let alone containing the oligomer in a content of “50% by mass or more based on 100% by mass of the (meth)acrylic based
polymerizable monomer component (B)" as requested in the instant claim 1.
The Examiner did not rely on the specific example 15 to reject instant claim 1. The Examiner relied on the teaching of the whole disclosure of SUN to reject claim 1. SUN teaches that both the denture base and the prosthetic tooth are (meth)acrylic based {[0012]}. Although this teaching is in the background section, it also applies to the SUN’s invention. SUN emphasizes the use of these compounds {[0095]}.
Regarding using the same monomer for compositions A and B, SUN teaches that same material can be used during 3D printing that applies to both the denture base and the prosthetic tooth {[0076]}. Therefore, and since SUN discloses that these material are (meth)acrylic based, it is well within the skill of an artisan to have chosen the same monomer for both compositions A and B.
Regarding monomer (a-1) being a major monomer and as shown by applicant’s calculation in Table I, indeed SUN discloses that the highest percentage of the composition belongs to a-1.
Regarding the numerical content of the monomer, the Examiner did not rely on the primary reference of SUN for this limitation and as such this argument is moot.
Applicant states that Sun merely teaches in [0095] an extensive list of various suitable polymerizable compounds. Sun does not provide one skilled in the art with any guidance to reach Applicant's instantly claimed invention in that Sun is silent as to particular compounds that are the (meth)acrylic based polymerizable monomer (m) as a major monomer in the curable composition for a denture base, which are polyfunctional (meth)acrylic based polymerizable monomers and are also used in the composition for a prosthetic tooth in a specific content; and Sun is silent as to particular compounds that are monofunctional (meth)acrylic based polymerizable monomer having an aromatic ring. It is clear that Sun does not recognize, and thus, does not teach or even suggest, the significance of having the same (meth)acrylic based polymerizable monomer (m), which is contained in the (meth)acrylic based polymerizable monomer component (A) of the curable denture base composition as the major monomer, in the (meth)acrylic based polymerizable monomer component (B) of the prosthetic tooth composition.
The Examiner respectfully disagrees. As mentioned above, SUN clearly teaches that both the denture base and the prosthetic tooth are (meth)acrylic base and can be the same monomer in both compositions. The list in [0095] provides an artisan with options for this monomer. It is well within the skill of an artisan to have chosen a specific (meth)acryl based monomer and have used it in both compositions A and B. The Examiner notes that instant specification itself, in various paragraphs, provides a large and detailed list of various monomers and other compounds that can be used in the instant invention.
Regarding polyfunctional and monofunctional monomer, the Examiner correctly rejected these limitations in previous claims 2, 4, and 6 that are now cancelled and incorporated in instant claim 1. Their rejections are outlined below.
Claim Objections
Claim 9 is objected to because of the following informalities: in line 4 replace “a denture base” with “the denture base”. This limitation is already recited in line 2 of claim 1. Appropriate correction 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.
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, 3, 5, 7, 9-10, and 13 are rejected under 35 U.S.C. 103 as being unpatentable over SUN (US-2019/0053883), hereinafter SUN, in view of LEE (US-2018/0049954), hereinafter LEE. Note that the italicized text below are the instant claims.
Regarding claim 1, SUN discloses A plate denture production kit for stereolithography {[abstract] note that rapid prototyping is stereolithography, note the printable polymerizable material constitute the kit} comprising
a curable composition for a denture base (I) containing a photopolymerization initiator and a (meth)acrylic based polymerizable monomer component (A) containing a (meth)acrylic based polymerizable monomer (m), which is a polyfunctional (meth)acrylic based polymerizable monomer (a-1), as a major monomer {[0012] note denture bases are methacrylate-based, [0095] note the monomer m, note “their combination” that constitute component A, [0099] note the light polymerization initiators thus curable, [0098] note denture base and artificial tooth as two separate compositions, [0102]/[0105] note fillers and pigment that belong to curable composition, [0095] note di or poly},
and a monofunctional (meth)acrylic based polymerizable monomer (a-2), which is a (meth)acrylate ester based polymerizable monomer having an aromatic ring {[0095] note mono, note phenyl phenol that is aromatic};
and a composition for a prosthetic tooth (II) containing a (meth)acrylic based polymerizable monomer component (B) containing the same (meth)acrylic based polymerizable monomer (m) as contained in the (meth)acrylic based polymerizable monomer component (A) of the curable composition for the denture base (I) {[0098] note denture base and artificial tooth as two separate compositions, [0102]/[0105] note fillers and pigment that belong to the composition, [0012] note denture tooth or prosthetic tooth are methacrylate-based, [0095] note the monomer m, note “their combination” that constitute component B}.
SUN, however, is silent on the content of monomer m in the component B.
In the same field of endeavor that is related to stereo lithographical compositions for denture and prosthetic tooth, LEE discloses having 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(B) {[0018] note second composition is 50-75 wt%}.
More importantly, LEE discloses that viscosity of the composition (important for 3D printing) can be adjusted by controlling the ratio of one of the monomers {[0017]}. Additionally, LEE discloses that the ratio of each component in the composition can be adjusted to obtain a desirable composition for manufacturing or 3D printing {[0027]}. Therefore, LEE recognizes the fraction or the content of monomer m as a result-effective variable.
It is well established that determination of optimum values of result-effective variables (in this case the content of monomer m on appropriate 3D printing manufacturing) is within the skill of one practicing in the art {see MPEP 2144.05 (ll)(B)}.
At the effective filing date of the instant invention, it would have been obvious to one of ordinary skill in the art to have incorporated the result-effective teachings of LEE in the composition of SUN and have optimized the monomer m content which is a result-effective variable through routine experimentation to have determined the appropriate monomer content that produces an optimum manufacturing conditions. In certain cases, such content would be similar to the claimed ratios.
Regarding claim 3, SUN discloses wherein the polyfunctional (meth)acrylic based polymerizable monomer (a-1) is at least one kind selected from the group consisting of a urethanated (meth)acrylate ester compound and an aromatic compound based (meth)acrylate ester compound having no urethane bond {[0095] note poly-urethane dimethyacrylate, also note phenyl phenol that is aromatic}.
Regarding claim 5, SUN discloses wherein the (meth)acrylic based polymerizable monomer component (B) contains a monofunctional (meth)acrylic based polymerizable monomer (a-2), which is the same as or different from the monofunctional (meth)acrylic based polymerizable monomer (a-2)contained in the (meth)acrylic based polymerizable monomer component (A) {[0095] note mono, [0076] note the teaching that the materials of different portions or denture base and prosthetic tooth can be the same or different}.
Regarding claim 7 limitation of “wherein the curable composition for the denture base (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)”, see the result-effective discussion under claim 1 and based on the combination of SUN and LEE.
Regarding claim 9 limitation of “wherein the curable composition for the denture base (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 for the denture base (I)”, see the result-effective discussion under claim 1 and based on the combination of SUN and LEE.
Regarding claim 10 limitation of “wherein the composition for a prosthetic tooth (II) contains the (meth)acrylic based polymerizable monomer component (B) in an amount of 40% by mass or more based on 100% by mass of the composition for a prosthetic tooth (II)”, see the result-effective discussion under claim 1 and based on the combination of SUN and LEE.
Regarding claim 13, SUN discloses wherein the monofunctional (meth)acrylic based polymerizable monomer (a-2) contained in the (meth)acrylic based polymerizable monomer component (B) is a (meth)acrylic based polymerizable monomer having an aromatic ring {[0095] note mono, note phenyl phenol that is aromatic}.
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over the combination of SUN and LEE as applied to claim 1 above, and further in view of OKUMURA (US-2019/0388198), hereinafter OKUMURA.
Regarding claim 11, combination of SUN and LEE discloses all the limitations of claim 1 as discussed above. This combination, however, is silent on an adhesive composition.
In the same filed of endeavor that is related to compositions for denture base and artificial tooth, OKUMURA discloses further comprising 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 (meth)acrylic based polymerizable monomer component (A) of the curable composition for the denture base (I) {[0125] note the adhesive for adhering the artificial teeth to the denture base, [0126], [0127] note methyl methacrylate that is the same polymerizable monomer}.
At the effective filing date of the instant invention, it would have been obvious to one of ordinary skill in the art to have incorporated the teachings of OKUMURA in the combination composition of SUN and LEE and have used the adhesive of OKUMURA to attach the prosthetic tooth of the combination above to its denture base.
As disclosed by OKUMURA, this adhering step is needed to attach the artificial tooth to the denture base {[0125]} and therefore, it is also needed for the combination composition of SUN and LEE, since this combination similarly produces a prosthetic tooth and a dentures base that eventually have to be attached together.
Regarding the last limitation of claim 11 reciting “having a content of the (meth)acrylic based polymerizable monomer (m) of 20% by mass or more based on 100% by mass of the (meth)acrylic based polymerizable monomer component (C)”, see the result-effective discussion under claim 1 and based on the combination of SUN and LEE.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to S. BEHROOZ GHORISHI whose telephone number is (571)272-1373. The examiner can normally be reached Mon-(alt Fri) 7:30-5:00.
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, Abbas Rashid can be reached at 571-270-7457. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/S. BEHROOZ GHORISHI/Primary Examiner, Art Unit 1748
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