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 § 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 3-4, 8-9 and 16 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.
Regarding claims 3 and 4, each of these claims (that have been amended to recite dependency only from claim 1) recite more than one R group that is not further defined, rendering the claims indefinite.
Regarding claim 8, at line 1, the recitation of "the at least one Type I" lacks antecedent basis. Also, at line 2, the recitation of "is selected from the group consisting of selected from the group consisting" renders the claim unclear.
Regarding claim 10, at line 1, the recitation of "the at least one Type II" lacks antecedent basis.
Regarding claim 16, at line 3, "the at least one tertiary or quaternary ammonium salt" lacks antecedent basis.
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, 5-13, 15-17 and 19-21 are rejected under 35 U.S.C. 103 as being unpatentable over Moser et al., WO 2019/152187 (hereafter Moser) in view of Pressley, US 2008/0023131 (hereafter Pressley).
Regarding claims 1 and 2, Moser teaches a system comprising a composition (Abstract and page 1, line 25 to page 2, line 22 describing a redox initiator system combined with polymerizable component monomers or oligomers to form a polymerizable composition, the system of Moser including a photolabile reducing agent wherein upon exposure to actinic radiation, such as UV, the photolabile compound photolyzes, generating the reducing agent and initiating the redox-initiated polymerization).
The composition of Moser includes:
at least one free-radically polymerizable compound (page 8, lines 2-7 teaching the inclusion of at least one polymerizable component monomer, such as vinyl monomers, and (meth)acryloyl monomers (including acrylate esters, amides and acids to produce (meth)acrylate homo- and copolymers));
at least one organic photoactivatable reducing agent precursor (page 2, line 24 to page 4, line 32 teaching a photolabile reducing agent (i.e., photoactivatable reducing agent precursor) of the following formula (that is recited in claim 2):
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Wherein R1, R2 and R3 are each independently H, C1-28 hydrocarbyl; and RPhoto is a photolabile group, i.e., a photoremovable group);
at least one reducible transition metal compound comprising at least one of cobalt, copper, iron, manganese, nickel, or vanadium (page 4, lines 4-13 teaching the inclusion of transition metal compounds that may include Cu, Fe, Cr, Ni, Mn, Co and V);
at least one organic peroxide (page 6, line 29 to page 7, line 6 teaching suitable oxidizing agents that include peroxides such as benzoyl peroxide and hydroperoxides such as cumyl hydroperoxide, to-butyl hydroperoxide and amyl hydroperoxide).
Regarding the recitation in the preamble of claim 1 that the composition is "photopolymerizable" and the recitation in the body of the claim of "at least one photoinitiator, wherein the at least one photoinitiator does not comprise an organic peroxide," Moser teaches a variety of photoinitiators, that are not organic peroxides, that are useful as photolabile groups RPhoto of the photolabile reducing agent of the redox initiator system of Moser (page 3, lines 26-32). However, Moser is silent as to a separate photoinitiator element of the composition, that results in a "photopolymerizable composition" understood to be required by claim 1.
Pressley teaches adhesive compositions, in particular two-part adhesives compositions (Abstract). Principal components of embodiments of Pressley include at least one free radical-polymerizable monomer, a free-radical polymerization initiator comprising a redox initiation system, and a photoinitiator (para [0043]). A monomer according to Pressley may be methyl methacrylate (claim 6). A redox initiator system of Pressley may be based on organic hydroperoxides and transition metals (para [0047]). Photoinitiators according to Pressley include a variety of species that do not include organic peroxides (see paras [0053]-[0056]), such as alpha-hydroxyketone (claim 3) and 2-hydroxy-2-methyl-1 phenyl-1-propanone (claim 4). Photoinitiators according to Pressley are described as promoting the reactivity of the olefinically unsaturated species (para [0053]). Pressley states that surprisingly, the redox initiation system does not interfere with the photoinitiator (para [0042]). Pressley teaches its adhesive is advantageous as it does not require additional heat to initiate cure (paras [0010]) and [0042]). Pressley teaches that its photoinitiator is selected depending upon a number of factors, including compatibility with other constituents of the adhesive composition and the desired wavelength of activating radiation (para [0056]).
It would have been obvious to one of ordinary skill in the art at the time of effective filing of the claims of the invention to modify the composition is Moser to incorporate a photoinitiator as taught by Pressley into the composition of Moser, for the advantages taught in Pressley, including further promoting reactivity of the free-radically polymerizable compound without the need for additional heat and the ability to control the reaction by selecting the photoinitiator based on a desired wavelength of activating radiation.
Regarding claim 3, see page 26, Example 2 of Moser that teaches the preparation of an embodiment of the recited formula.
Regarding claim 5, Moser teaches ortho-nitrobenzyl groups at page 3, line 28.
Regarding claim 6, Moser teaches a (meth)acryl monomer at page 8, lines 1-5, thus teaching a monomer that includes (meth)acryl groups. Moser also identifies acrylate esters (page 8, line 4), thus teaching the presence of (meth)acryl groups.
Regarding claims 7 and 8, Pressley teaches Type I photoinitiators including benzoin ethers, benzyl ketals and acetophenones (para [0053]).
Regarding claims 9 and 10, Pressley teaches Type II photoinitiators including benzophenone (para [0109] Table describing the B side of the composition of Example 5a; see note at bottom of the table).
Regarding claim 11, Moser teaches the inclusion of copper acetate in a formulation (page 25, Table 2) and that materials according to Moser may include copper naphthenate (page 23).
Regarding claims 12 and 13, Moser teaches the inclusion of quaternary ammonium salts defined by the formula recited in claim 13 (page 7, lines 19-34).
Regarding claim 15, Moser describes a "two-part" embodiment wherein the transition metal complex, photolabile reducing agent and polymerizable monomer component is in a first mixture and the oxidant, i.e., organic peroxide, is in a second mixture (page 20, lines 28-30), thus teaching the recited "none of the at least one reducible transition metal compound is present in Part A, and wherein none of the at least one organic peroxide is present in Part B."
Regarding claim 16, Moser teaches examples wherein a "base resin," i.e., Part B, includes an acrylic monomer, a transition metal salt, and an ammonium halide salt, i.e., at least one quaternary ammonium salt (page 30, lines 6-9) and an "accelerator formulation," i.e., Part A, includes peroxide (page 31, lines 1-3), thus teaching the recited "wherein none of the at least one tertiary or quaternary ammonium salt is present in Part A, and wherein none of the at least one organic peroxide is present in Part B."
Regarding claims 17 and 20, Moser teaches its polymerizable composition may be disposed between two substrates (claim 31), understood as teaching a method of bonding first and second substrates. In a method according to Moser, a "two-part" system is prepared, the two parts are combined, and the resulting mixture is coated on a substrate, followed by exposure to actinic radiation (page 20, lines 23-30), understood to result in "at least partial curing." Pressley teaches a method of applying its polymerizable composition and a photoinitiator between two substrates, allowing the adhesive to at least partially cure, followed by illumination (i.e., exposure to actinic radiation) (claim 24), thus a combined Moser/Pressley teaches a partial curing performed due to the presence of the photoinitiator.
Regarding claim 19, Moser teaches its polymerizable composition may be coated on a variety of substrates, including a flexible tape backing (page 21, lines 18-24; claim 30), such coating step understood as performing the recitation of "sealing a substrate." In a method according to Moser, a "two-part" system is prepared, the two parts are combined, and the resulting mixture is coated on a substrate, followed by exposure to actinic radiation (page 20, lines 23-30), understood to result in "at least partial curing."
Regarding claim 21, Moser teaches its composition may be a pressure sensitive adhesive (page 1, line 34 to page 2, line 6), understood as a property exhibited at room temperature, i.e., 25°C. Pressley teaches adhesives that are tacky prior to subjecting to electromagnetic energy and tack-free after curing by electromagnetic energy (para [0040]; claims 26 and 27). In view of the teachings of Moser/Pressley, it would have been obvious to one of ordinary skill in the art at the time of effective filing of the claims of the invention to predictably only partially cure the adhesive of Moser/Pressley by actinic radiation in order to maintain a pressure-sensitive adhesive (as taught by Moser) with some tack. It has been held that the combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results. MPEP 2141 discussing KSR International Co. v. Teleflex Inc., 550 U.S. 398, 415-416, 82 USPQ2d 1385, 1395 (2007).
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Moser in view of Pressley as applied to claim 1, and further in view of Townsend et al., US 2018/0312613 (hereafter Townsend).
Moser/Pressley is silent as to the use of the compound represented by the formula set forth in claim 4. Moser is directed to photolabile barbiturate compounds (Title), while the compound of claim 4 is understood to be a derivative of ascorbic acid.
Townsend teaches polymerizable compounds comprising a redox initiator system that includes a photolabile reducing agent, the composition of Townsend being useful for dental compositions (Abstract). Townsend teaches its redox initiator system provides an oxidizing agent, a photolabile reducing agent, and a transition metal complex that participates in a redox cycle (para [0004]), Townsend stating that its system creates an "on demand" redox-initiated cure that meets the challenge of an optimal balance between stability and reactivity (paras [0002]-[0004]). An example of Townsend includes the preparation of nitrobenzyl-protected Ascorbic Acid (see paras [0243]-[0245]). The structure set forth in para [0244]) teaching a compound according to the formula recited in claim 4.
It would have been obvious to one of ordinary skill in the art at the time of effective filing of the claims of the invention to modify the composition of Moser/Pressley to further include an organic photoactivatable reducing agent precursor according to Townsend as described in para [0244]) for the advantages taught in Townsend, including a formulation suitable for dental compositions, such formulation providing an optimal balance between stability and reactivity.
Allowable Subject Matter
Claim 14 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
Moser in view of Pressley is silent as to inclusion of the ammonium salt represented by the formula recited in claim 14.
Takei et al., US 2010/0087613, teaches a two-part redox-curing composition useful for application to a tooth or bone as well as tooth crown material (Abstract). The composition of Takei may include an oxidizing agent and a radical monomer (para [0017]). Examples of oxidizing agent include organic peroxide and metal salts of cobalt, iron or copper (para [0044]). The radical monomer component may include a (meth)acryl group (paras [0051]-[0056]). The composition of Takei may be a dual cure type composition that includes a photopolymerization initiator, such as a ketal or acyl phosphine oxide, wherein polymerization is started through irradiation with light (para [0069]).
Takei does not teach the inclusion of an organic photoactivatable reducing agent precursor. A preferred reducing agent according to Takei is an aliphatic or aromatic amine (para [0066]). Takei teaches a preference for using a tertiary aliphatic amine and identifies triethylamine as an example (para [0067]). Triethylamine has the formula N(CH3CH3)3. However, Takei is silent as to the tertiary amine being in the form of an ammonium salt thereof wherein X- represents F, CL, Br or I that is required by claim 14. The other art of record does not provide this deficiency.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CYNTHIA L SCHALLER whose telephone number is (408)918-7619. The examiner can normally be reached Monday-Friday 8 - 4:30.
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/CYNTHIA L SCHALLER/Primary Examiner, Art Unit 1746