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 .
Specification
Applicant is reminded of the proper language and format for an abstract of the disclosure.
The abstract is objected to. The instant abstract recites the phrase “The present invention relates to…” in lines 6 and 7.
The language should be clear and concise and should not repeat information given in the title. It should avoid using phrases which can be implied, such as, “The disclosure concerns,” “The disclosure defined by this invention,” “The disclosure describes,” etc. In addition, the form and legal phraseology often used in patent claims, such as “means” and “said,” should be avoided. See MPEP 608.01(b)(C).
Claim Objections
Claim 3 objected to because the manner in which the subject matter is claimed makes interpretation difficult. The claim recites the general formulae (1) and (2) after the recitation of the limitations pertaining to the polydentate ligand (3) in lines 7-9 of the claim, this has the effect of implying that the structures of general formulae (1) and (2) pertain to the polydentate ligand (3). To improve clarity, the claim can be written as such:
“The paste-form two-pack type dental curable composition according to claim 1, wherein:
the nitrogen atom-containing ligand (D) is at least one compound selected from the group consisting of a compound represented by general formula (1),
R1R2N-X1-NR3R4 (1)
wherein R1 to R4 each independently represent an optionally substituted alkyl group, and X1 represents an optionally substituted divalent aliphatic group;
a compound represented by general formula (2),
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wherein R5, R6, and R7 each independently represent an optionally substituted alkyl group, X2 and X3 each independently represent an optionally substituted divalent aliphatic group that may contain an oxygen atom and/or a nitrogen atom, m and n each independently represent an integer of 1 or more, Y represents an optionally substituted monoalkylamino group or dialkylamino group, and any two or more of R5, R6, R7, and Y may together form a ring, and R6, R7, X2, and X3 may be the same or different when R6, R7, X2, and X3 are plural;
and a polydentate ligand (3) containing a nitrogen-containing heterocyclic ring, and the polydentate ligand (3) is a bidentate or higher dentate ligand compound that comprises a heterocyclic ring containing a five-membered or six-membered ring having a nitrogen atom, and has two or more nitrogen atoms within the molecule.
Appropriate action is required.
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 1-8 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 1-8, in the preamble the claims recite “paste-form two-pack type”, the addition of the word "type" to an otherwise definite expression extends the scope of the expression so as to render it indefinite. See MPEP § 2173.05 (b) III. For examination purposes, the word “type” will be taken as omitted.
Regarding claim 3, the claim impermissibly uses open ended "comprises” language in reference to the polydentate ligand (3) in line 8 of the claim. See MPEP § 2111.03 which states, "The transitional term 'comprising', which is synonymous with 'including,' 'containing,' or 'characterized by,' is inclusive or open-ended and does not exclude additional, un-recited elements or method steps." Accordingly, it is unclear which Markush members (in addition to the ones expressly listed) should be included within the scope of these claims consistent with MPEP § 2173.05(h)(I).
Further regarding claim 3, the claim recites “when R6, R7, X2, and X3 are plural”, it is unclear what is meant by “plural” since the terms R6 and R7 refer to optionally substituted alkyl groups and X2 and X3 refer to optionally substituted divalent aliphatic groups. This renders the scope of the claim indefinite. For examination purposes, this is taken to mean when the groups as mentioned are present in the compound represented by general formula (2).
Claim 4 is further rejected as depending on claim 3 which is rejected as described above.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-4 and 7-8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Murakami (WO 2021049335 A1).
Regarding claim 1, Murakami teaches paste-form two-part dental curable compositions (Table 1, paragraphs [0059-0063] in machine translation provided) comprising:
A first agent (paste 2) comprising:
(A) 10-methacryloyloxydecyl dihydrogen phosphate (MDP) as an acidic-group containing polymerizable monomer;
(B) 2-hydroxy-1,3-dimethacryloxypropane (GDMA) and urethane dimethacrylate (UDMA) as acidic-group free polymerizable monomer;
(C) Cumene hydroperoxide (CHP) as an organic peroxide;
(D) ethylenediaminetetraacetic acid (EDTA) as a nitrogen atom-containing ligand according to structure (1);
(E) silica particles as a filler;
A second agent (paste 1) comprising:
(B) 2-hydroxy-1,3-dimethacryloxypropane (GDMA) and urethane dimethacrylate (UDMA) as acidic-group free polymerizable monomer;
(F) N-benzoyl thiourea as a thiourea compound; and
(E) silica particles as a filler.
Regarding claims 2-4, EDTA mentioned above contains two nitrogen atoms and has the following structure:
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Which, reads on general formula (1) of claim 3 where R1-3 are each CH2COOH substituents, and X1 is a divalent C2 aliphatic group.
Regarding claims 7 and 8, Murakami teaches (in Table 1, example 1) a composition comprising 3 parts by mass of MDP and 0.2 parts by mass of EDTA, which is a mass ratio of 15:1. Instant application paragraph [004] states that the polymerizable monomers containing an acid group confer dental cements with self-adhesive properties and later exemplifies MDP as the preferred acid-group containing monomer. Murakami teaches the composition above as comprising MDP, so it is expected to be self-adhesive.
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.
Claims 5 and 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Murakami in view of Moszner (US 20180318178 A1).
Regarding claims 5 and 6, Murakami applies as described above regarding the composition but fails to teach the ligands of claims 5 and 6.
Moszner teaches a paste-form two-part dental curable composition with high storage stability (abstract, paragraphs [0069-0074]) and further discloses two-part compositions comprising N,N,N′,N″,N″-pentamethyldiethylenetriamine (PMDETA) (Table 2). Moszner further teaches tris[2-(dimethylamino)ethyl]amine (Me6TREN), and N,N-bis(2-dimethylaminoethyl)-N,N'-dimethylethylenediamine (HMTETA) as preferred ligands intended to form complexes with transition metals in the composition (paragraph [0031]).
Murakami and Moszner are analogous to the instant disclosure in that they pertain to paste-form two-part curable dental compositions comprising ligands.
EDTA and PMDETA and their functions were known in the art, so person having ordinary skill in the art as of the effective filing date of the instant application would have found it obvious to substitute the EDTA of Murakami with the PMDETA taught by Moszner and the results would have been predictable.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Moszner (US 20200253834 A1) teaches paste-form two-pack curable dental composition and N,N,N′,N″,N″-pentamethyldiethylenetriamine (PMDETA), tris[2-(dimethylamino)ethyl]amine (Me6TREN), and N,N-bis(2-dimethylaminoethyl)-N,N'-dimethylethylenediamine (HMTETA) as ligands.
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/KOLTON JONES/Examiner, Art Unit 1763
/JOSEPH S DEL SOLE/Supervisory Patent Examiner, Art Unit 1763
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