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 § 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 1-10, 13 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Jin (US 2018/0250201), in view of Kajikawa et al. (WO-2021125246-A1).
Regarding claims 1-4 and 9-10
Jin discloses a curable dental composition that contains: a base paste comprising a polythiol and a (meth)acrylate; and a catalyst paste, wherein the composition contains a photoinitiator (i.e., polymerization initiator) and a filler such as glass filler or nanosilica, indicates that the polyol is pentaerythritol tetrakis(3-mercaptopropionate) (i.e., polyfunctional thiol having 4 secondary mercapto groups per molecule, see instant specification page 17, lines 4-5), indicates that the (meth)acrylate is a urethane based acrylate, a polyacrylate or the like; and indicates that the composition is used as a flowable composite (claims 1, 4-5 and 10-11; paras 0057, 0063).
Although Jin does not disclose the fluorescent agent, Jin does disclose or make obvious the other limitations of the claim. However, Kajikawa discloses that teeth have natural fluorescent and when a non-fluorescent material is used the color tone may be different and discloses adding a fluorescent material such as a 9- to 11- membered benzo-condensed heterocyclic compound (i.e., an organic fluorescent agent) to such compositions (abstract, para 0002). Therefore it would have been prima facie obvious to one of ordinary skill in the art at the time of the invention to add to the teachings of Jin, by including a fluorescent material in the composition, with a reasonable expectation of making a useful dental composition, as suggested by Kajikawa.
Regarding claim 5
Kajikawa discloses that the fluorescent agent is preferably used in an amount of 0.001 parts by mass or more (Fluorescent agent (D)). As the range of the reference overlaps the claimed range, the subject matter as a whole would have been obvious to one having ordinary skill in the art at the time the invention was made to have selected the overlapping portion of the range disclosed by the reference because overlapping ranges have been held to be a prima facie case of obviousness. In re Malagari, 182 U.S.P.Q. 549.
Regarding claim 6
Jin discloses that use of 0.01 mol of the polythiol (Table 1), which makes the ratio of polythiol to fluorescent agent within the claimed range.
Claims 7-8
Jin discloses tri(ethylene glycol) dimethacrylate (i.e., a methacrylic polymerizable monomer) (para 0029).
Regarding claim 13
Jin discloses the use of glass fillers from 10 to 70 wt % of the composition (claim 10). As the amount of filler in the reference overlaps the claimed amount, the subject matter as a whole would have been obvious to one having ordinary skill in the art at the time the invention was made to have selected the overlapping portion of the range disclosed by the reference because overlapping ranges have been held to be a prima facie case of obviousness. In re Malagari, 182 U.S.P.Q. 549.
Regarding claim 17
This is an intended/desired use which does not further define the composition from the prior art to the extent the prior art is also capable of such use.
Claims 11-12 are rejected under 35 U.S.C. 103 as being unpatentable over Jin (US 2018/0250201), in view of Kajikawa et al. (WO-2021125246-A1), as applied to claims 1-10, 13 and 17 above, in view of Ibsen et al. (EP-0315186-B1).
Regarding claims 11-12
Although Jin does not disclose the claimed silica filler, Jin does disclose silica as a filler. However, Ibsen discloses that in similar dental compositions that as a filler hydrophobic silica having a particle size of about 0.01 to 0.04 microns (abstract). Therefore it would have been prima facie obvious to one of ordinary skill in the art to add to the teachings of Jin by using hydrophobic silica particles having a size of 0.01 to 0.04 microns, with a reasonable expectation of success in forming a useful dental composition as suggested by Ibsen.
Claims 14-16 are rejected under 35 U.S.C. 103 as being unpatentable over Jin (US 2018/0250201),in view of Kajikawa et al. (WO-2021125246-A1), as applied to claims 1-10, 13 and 17 above, in view of Vallittu et al. (US 2004/0097627).
Regarding claims 14-16
Jin does not disclose the use of a polysiloxane, but does disclose the use of fillers. However, Vallittu discloses that in dental compositions that polysilsesquioxanes may be used as a nanofiller (claim 5). Therefore it would have been prima facie obvious to one of ordinary skill in the art at the time of the invention to add to the teachings of Jin by including a polysilsesquioxane with a reasonable expectation of success in forming a useful dental composition, as suggested by Vallittu.
Claims 18-19 and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Jin (US 2018/0250201),in view of Kajikawa et al. (WO-2021125246-A1), as applied to claims 1-10, 13 and 17 above, in view of Emoto et al. (JP-2018089312).
Regarding claims 18-19 and 21
Emoto discloses a dental prothesis having a based material such as zirconia and a resin layer and coating the base material with the resin layer having a thickness of 1-500 microns (abstract). Therefore it would have been prima facie obvious to one of ordinary skill in the art to add to the teachings of Jin by using his composition as a resin layer coating a base layer in a dental prothesis with a layer that is 1-500 microns, with a reasonable expectation of success, as suggested by Emoto.
Conclusion
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JAMES E. MCDONOUGH
Examiner
Art Unit 1734
/JAMES E MCDONOUGH/Primary Examiner, Art Unit 1734
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