DETAILED ACTION
Claims 1-7 are currently pending and under examination.
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 .
Priority
The instant application is a national stage entry of PCT/JP2022/031830, filed 08/24/2022, which claims priority to JP2021-162412, filed 09/30/2021. Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
Applicant’s Informational Disclosure Statement, filed on 03/28/2024 and 01/09/2026 has been considered. Please refer to Applicant's copy of the 1449 submitted herein.
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.
Claim 2 and 7 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.
Claims 2 and 7 lack antecedent basis in reciting the limitation "the lanthanoid fluoride powder”. Base claims 1 and 6 recite “at least one lanthanoid fluoride powder” which encompasses multiple lanthanoid fluoride powders, (emphasis added). However, claims 2 and 7, respectively, recite “the lanthanoid fluoride powder”; thereby, it is unclear whether just one, more than one, or all of the lanthanoid fluoride powders must be selected from “lanthanum fluoride powder, cerium fluoride powder, praseodymium fluoride powder, or neodymium fluoride powder” (emphasis added).
Amending claims 2 and 7 to recite “wherein the at least one lanthanoid fluoride powder”, would overcome this rejection.
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 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(s) 1-4 and 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over DE3840769.
Regarding claims 1-3, the limitation of a dental composition comprising an acidic component and at least one lanthanoid fluoride powder selected from the group consisting of fluoride powders of lanthanoids having an atomic number of 66 or less is met by the ‘769 publication teaching the ceramic system comprising lanthanum fluoride [0009] with a grain diameter of less than 10 um [0012], thus reading on powder. The ‘769 publication teaching polycarboxylic acids are taught as added to the composition [0012].
Regarding claim 4, the limitation of wherein the dental composition is in the form of a paste is met by the ‘769 publication teaching the composition in the form of a slurry [0039], which reads on paste as there is no definition in the instant specification.
Regarding claim 6, the limitation of a composition teaches a dental compristion including a first agent and a second agent, wherein the first agent contains an acidic component and at least one lanthanoid fluoride powder selected from the group consisting of fluoride powders of lanthanoids having an atomic number of 66 or less is met by the ‘769 publication teaching the ceramic system comprising lanthanum fluoride [0009] with a grain diameter of less than 10 um [0012], thus reading on powder. The ‘769 publication teaching polycarboxylic acids are taught as added to the composition [0012]. The compristion includes additional ingredients thus a second agent (example 3, binder, [0039]).
It must be remembered that “[w]hen a patent simply arranges old elements with each performing the same function it had been known to perform and yields no more than one would expect from such an arrangement, the combination is obvious”. KSR v. Teleflex, 127 S,Ct. 1727, 1740 (2007)(quoting Sakraida v. A.G. Pro, 425 U.S. 273, 282 (1976)). “[W]hen the question is whether a patent claiming the combination of elements of prior art is obvious”, the relevant question is “whether the improvement is more than the predictable use of prior art elements according to their established functions.” (Id.). Addressing the issue of obviousness, the Supreme Court noted that the analysis under 35 USC 103 “need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR v. Teleflex, 127 S.Ct. 1727, 1741 (2007). The Court emphasized that “[a] person of ordinary skill is… a person of ordinary creativity, not an automaton.” Id. at 1742.
Consistent with this reasoning, it would have been obvious to have selected various combinations of disclosed ingredients (for example a slurry comprising LaF, polycarboxylic acids and quartz) from within the prior art disclosure of the ‘769 publication, to arrive at the instantly claimed dental composition “yielding no more than one would have expected from such an arrangement”.
Claim(s) 1-7 is/are rejected under 35 U.S.C. 103 as being unpatentable over JP 2011-207806 in view of DE 3840769.
Regarding claims 1-3 and 5, the limitation of a dental composition comprising an acidic component and at least one lanthanoid fluoride powder selected from the group consisting of fluoride powders of lanthanoids having an atomic number of 66 or less is met by the ‘806 publication teaching dental curable compositions comprising radically polymerizable methacrylate compound and a filler used for dental treatments [0002]. The composition is taught to include diemethacrylate and aluminosilicate glass powder [0010]. Inclusion of non-glass fillers having radiopacity is blended in order to impart the radiopacity required for dental materials to the dental hardenable compositions [0018]. Non-glass fillers are taught to include lanthanum fluoride [0019]. The composition is taught to include a methacrylate compound having an acid group [0022] wherein the instant specific teaches polycarboxylic acids include poly(meth)acrylic acid) [0013].
Regarding claim 4, the limitation of wherein the dental compristion is in the form of a paste is met by the ‘806 publication teaching a paste [0033].
Regarding claim 6, the limitation of a dental composition including a first agent and a second agent wherein the first agent contains an acidic component and at least one lanthanoid fluoride powder selected from the group consisting of fluoride powders of lanthanoids having an atomic number of 66 or less is met by the ‘806 publication teaching dental curable compositions comprising radically polymerizable methacrylate compound and a filler used for dental treatments [0002]. The composition is taught to include diemethacrylate and aluminosilicate glass powder [0010]. Inclusion of non-glass fillers having radiopacity is blended in order to impart the radiopacity required for dental materials to the dental hardenable compositions [0018]. Non-glass fillers are taught to include lanthanum fluoride [0019]. The composition is taught to include a methacrylate compound having an acid group [0022] wherein the instant specific teaches polycarboxylic acids include poly(meth)acrylic acid) [0013]. It is noted the instant claims require a first agent and a second agent, wherein a mixture comprising the first and second agents reads on the claim limitations.
Regarding claim 7, the limitation of a dental compristion wherein the lanthanoid fluoride powder is lanthanum fluoride powder, the first agent further contains a polyacrylic acid and the second acid contains aluminosilicate glass and a (meth)acrylate is met by the ‘806 publication teaching dental curable compositions comprising radically polymerizable methacrylate compound and a filler used for dental treatments [0002]. The composition is taught to include diemethacrylate and aluminosilicate glass powder [0010]. Inclusion of non-glass fillers having radiopacity is blended in order to impart the radiopacity required for dental materials to the dental hardenable compositions [0018]. Non-glass fillers are taught to include lanthanum fluoride [0019]. The composition is taught to include a methacrylate compound having an acid group [0022] wherein the instant specific teaches polycarboxylic acids include poly(meth)acrylic acid) [0013]. It is noted the instant claims require a first agent and a second agent, wherein a mixture comprising the first and second agents reads on the claim limitations.
The ‘806 publication does not specifically teach the at least one lanthanoid fluoride is in powder form (claim 1).
The ‘769 publication teaching the ceramic system comprising lanthanum fluoride [0009] with a grain diameter of less than 10 um [0012], thus reading on powder. The ‘769 publication teaching polycarboxylic acids are taught as added to the composition [0012]. The composition is taught to be dental material ([0004], [0014]).
It would have been prima facie obvious to one of ordinary skill in the art before the filing date of the claimed invention to use known particle sizes of lanthanum fluoride as taught by the ‘769 publication for the lanthanum fluoride taught by the ‘806 publication because both the ‘769 publication and the ‘806 publication are taught to be used in dental applications. It would have been obvious to one of ordinary skill in the art before the filing date of the claimed invention to use lanthanum fluoride in powder form as the ‘806 publication teaches silicate filler to be in powder form and lanthanum fluoride to be a filler, thus making it obvious to add the lanthanum filler in powder form. One of ordinary skill in the art before the filing date of the claimed invention would have a reasonable expectation of success as the ‘769 publication teaches known particle sizes of lanthanum fluoride to be added to dental compositions.
Conclusion
No claims are allowed.
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/LYNDSEY M BECKHARDT/ Examiner, Art Unit 1613