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 Objections
Claim 18 is objected to because of the following informality:
• Claim 18 should be amended to read: “…by mass of the (C) fluorescent agent…”
Appropriate correction is required.
Claim Interpretation
For the purposes of examination, the term “not substantially comprise” as used throughout the claims (see claim 4, 8, and 9) will be interpreted in the same manner as defined in the specification, or “not intentionally compounded” (see para. 0102 of Applicant’s specification).
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 1-18 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.
In claims 1, 2, 5, 10-13, and 18, the phrase “wherein the ratio of the absorbance of the first absorption maximum to an absorbance of the second absorption maximum” is confusing in the case that more than one of each is present. To elaborate, the claims allow for “at least one first absorption maximum” and “at least one second absorption maximum;” however, in the case that there are two or more of each maximum, it becomes unclear how the ratio should be calculated. If two first absorption maximums are present, is the absorbance value for the ratio calculation the higher of the two maximums? The lower? An average? Similarly, if two second absorption maximums are present, is the absorbance value for the ratio calculation the higher of the two maximums? The lower? An average? In other words, the terms “the first absorption maximum” and “the second absorption maximum” in the ratio calculation lack sufficient antecedent basis in the case that more than one of each is present. The same issue is present in claims 2, 5, 10-13, and 18. To correct, the Examiner suggests deleting the phrase “at least one” for both the first and second absorption maximum in claims 2, 5, 10-13, and 18. For the purposes of examination, the Examiner is interpreting that in the case that two or more first absorption maximums and two or more second absorption maximums are present, the claimed ratio is calculated by taking the highest absorption of each respective grouping, i.e., the highest absorbance value out of all the first absorption maximums : the highest absorbance value out of all the second absorption maximums. Claims 2-18 are also rejected by virtue of their dependency on claim 1.
In claim 2, the chemical formula description is in parentheses. This generates confusion as to whether the material in the parentheses positively limit the claim or not. To correct, the Examiner suggests deleting the parentheses. For the purposes of examination, the Examiner is interpreting the claimed formula to necessitate what is present in the parentheses. Claims 7, 8, 10, and 14 are also rejected by virtue of their dependency on claim 2.
In claim 4, the term “the (B-3) polymerization accelerator” lacks sufficient antecedent basis. Claim 4 is dependent on claim 1, which does not mention a polymerization accelerator. It is believed Applicants intended claim 4 to be dependent on claim 3, and the Examiner is interpreting as such. Claims 12 and 16 are also rejected by virtue of their dependency on claim 4.
In claims 6 and 14-17, the chemical formula description for the claimed formula is in parentheses. This generates confusion as to whether the material in the parentheses positively limit the claim or not. To correct, the Examiner suggests deleting the parentheses. For the purposes of examination, the Examiner is interpreting the claimed formula to necessitate what is present in the parentheses.
In claims 6 and 14-17, the phrase “such as a methyl group, an ethyl group…an i-propyl group” is confusing. It is unclear whether the term “such as” positively limits the claim or not. To correct, the Examiner suggests deleting the “such as” phrase from the claim. The Examiner further suggests amending the formula limitations to all be a single sentence, e.g., “…an amino or a hydroxyl group, wherein the alkyl group has 1 to 3 carbon atoms.” For the purposes of examination, the Examiner is interpreting the limitations following “such as” to not positively limit the claims.
In claim 8, the term “the (B-3) polymerization accelerator” lacks sufficient antecedent basis. Claim 8 is dependent on claim 2, which does not mention a polymerization accelerator. For the purposes of examination, the Examiner is interpreting claim 8 to necessitate all the limitations of claims 2 and 3.
In claim 14, the term “the formula” within the parentheses lacks sufficient antecedent basis. This is because claim 14 is dependent on claim 2, which also contains a formula. Thus, it is unclear which formula is being referred to. For the purposes of examination, the Examiner is interpreting “the formula” of claim 14 to refer to the Formula (3). To correct, the Examiner suggests amending the claim to specify the formula as being the Formula (3).
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, 5, 6, 13, and 17 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Matsuura et al. (US-20250213433-A1) (hereinafter referred to as “Matsuura”).
Regarding claim 1, Matsuura teaches a dental curable composition (see Matsuura at para. 0026, teaching a self-adhesive dental composite; also see Matsuura at para. 0096, teaching the resin as containing radical polymerizable monomers; also see Matsuura at para. 0071, teaching the composite resin may be cured into a cured product) comprising:
• (A) polymerizable monomer, (B) polymerization initiator, (C) fluorescent agent, and (D) ultraviolet absorber (see Matsuura at para. 0026 and 0096, teaching the dental composite resin to contain a polymerizable monomer having an acidic group; also see Matsuura at para. 0026, teaching the resin to contain a polymerization initiator; also see Matsuura at para. 0274, teaching the resin to contain a fluorescent agent; also see Matsuura at para. 0273, teaching the resin to contain an ultraviolet absorber), wherein
• the dental curable composition comprises, as the (D) ultraviolet absorber, (D-1) compound having at least one first absorption maximum in the wavelength region of 250 to 320 nm and at least one second absorption maximum in the wavelength region of 320 to 400 nm, wherein the ratio of an absorbance of the first absorption maximum to an absorbance of the second absorption maximum is within the range of 1 to 4 (see Matsuura at para. 0273, teaching 2-(2-hydroxy-5-tert-octylphenyl)benzotriazole as a suitable ultraviolet absorber; 2-(2-hydroxy-5-tert-octylphenyl)benzotriazole satisfies the claimed limitations, as disclosed by Applicant’s specification at para. 0119; products of identical chemical composition cannot have mutually exclusive properties, see MPEP § 2112.01(II)).
Regarding claims 5 and 13, see Matsuura at para. 0273, teaching the ultraviolet absorber may be used alone; thus, Matsuura necessarily teaches embodiments where the ultraviolet absorber contains only 2-(2-hydroxy-5-tert-octylphenyl)benzotriazole.
Regarding claims 6 and 17, see Matsuura at para. 0275, teaching diethyl 2,5-dihydroxyterephthalate as a suitable fluorescent agent; diethyl 2,5-dihydroxyterephthalate reads on the claimed formula, as disclosed by Applicant’s specification at para. 0105; also see Matsuura at para. 0275, teaching the fluorescent agent may be used alone; thus, Matsuura necessarily teaches embodiments where the fluorescent agent contains only diethyl 2,5-dihydroxyterephthalate.
Claim Rejections - 35 USC § 102/103
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.
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, 10, 11, 13-15, and 17 are rejected under 35 U.S.C. 102(a)(1) as anticipated by Neffgen et al. (WO-2024227533-A1), with reference to patent family member DE-102023111186-A1 as a machine translation (hereinafter referred to as “Neffgen”), or, in the alternative, under 35 U.S.C 103 as obvious over Neffgen in further view of Durban et al. (US-20240018289-A1) (hereinafter referred to as “Durban”).
Regarding claims 1 and 2, Neffgen teaches a dental curable composition (see Neffgen at Abstract and pg. 1, para. 1, teaching a radically curable composition which may be used to form a curable dental material) comprising:
• (A) polymerizable monomer, (B) polymerization initiator, (C) fluorescent agent, and (D) ultraviolet absorber (see Neffgen at pg. 7, para. 9, teaching the composition as containing one or more radically polymerizable monomers and at least one initiator; also see Neffgen at pg. 12, para. 3-4, teaching the composition as containing one or more stabilizers, such as 2-hydroxy-4-octyloxybenzophenone; the stabilizer of Neffgen corresponds to the claimed “ultraviolet absorber,” see the bullet point below; also see Neffgen at pg. 16, para. 4, teaching the composition may contain a fluorescent colorant), wherein
• the dental curable composition comprises, as the (D) ultraviolet absorber, (D-1) compound having at least one first absorption maximum in the wavelength region of 250 to 320 nm and at least one second absorption maximum in the wavelength region of 320 to 400 nm, wherein the ratio of an absorbance of the first absorption maximum to an absorbance of the second absorption maximum is within the range of 1 to 4 (see Neffgen at pg. 12, para. 3-4, teaching the composition as containing one or more stabilizers, such as 2-hydroxy-4-octyloxybenzophenone; 2-hydroxy-4-octyloxybenzophenone reads on the claimed compound of Formula (1) in claim 2, where R1 is an organic group having eight carbon atoms; since 2-hydroxy-4-octyloxybenzophenone is the same compound as that claimed, it necessarily follows the compound is an ultraviolet absorber that meets the claimed (D-1) properties; products of identical chemical composition cannot have mutually exclusive properties, see MPEP § 2112.01(II)).
In the alternative, 2-hydroxy-4-n-octyloxybenzophenone is a known UV blocker (i.e., stabilizer) in similar curable dental compositions in the art (see Durban at para. 0201).
Neffgen teaches 2-hydroxy-4-octyloxybenzophenone as a suitable stabilizer in their composition (see Neffgen at pg. 12, para. 3-4). 2-hydroxy-4-n-octyloxybenzophenone is a type of 2-hydroxy-4-octyloxybenzophenone, and is further one of the most common forms.
Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to use 2-hydroxy-4-n-octyloxybenzophenone as the stabilizer in the curable composition of Neffgen, because 2-hydroxy-4-n-octyloxybenzophenone is a known stabilizer/UV blocker in the art and Neffgen explicitly teaches 2-hydroxy-4-octyloxybenzophenone as suitable stabilizers for their composition (see Neffgen at pg. 12, para. 3-4; also see Durban at para. 0201). The selection of a known material, which is based upon its suitability for the intended use, is within the ambit of one of ordinary skill in the art. See In re Leshin, 125 USPQ 416 (CCPA 1960), Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945), and MPEP § 2144.07.
Following the above modification, the composition of Neffgen contains 2-hydroxy-4-n-octyloxybenzophenone as a stabilizer. 2-hydroxy-4-n-octyloxybenzophenone satisfies the claimed (D-1) property limitations, as disclosed by Applicant’s specification at para. 0119 and 0171.
Regarding claims 3 and 7, see Neffgen at pg. 11, para. 7, teaching the initiator system may contain a combination of camphorquinone and a tertiary amine, along with a synergist such as a diaryl iodonium salt; camphorquinone corresponds to the claimed (B-1) compound (see Applicant’s specification at para. 0061); accordingly, Neffgen teaches photoinitiator systems containing the three claimed compounds.
Regarding claims 5, 10, 11, and 13, see Neffgen at pg. 12, para. 3, teaching the composition may contain “one or more stabilizers.” Thus, Neffgen reasonably teaches the use of a single stabilizer in their composition, i.e., 2-hydroxy-4-n-octyloxybenzophenone.
Regarding claims 6, 14, 15, and 17, see Neffgen at pg. 16, para. 4, teaching the fluorescent colorant may include diethyl 2,5-dihydroxyterephthalate; diethyl 2,5-dihydroxyterephthalate reads on the claimed formula, as disclosed by Applicant’s specification at para. 0105; also see Neffgen at pg. 16, para. 3, teaching the dental material may contain “a colorant or a colorant mixture;” accordingly, Neffgen reasonably teaches the dental material may contain only a single colorant, e.g., diethyl 2,5-dihydroxyterephthalate.
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 18 is rejected under 35 U.S.C. 103 as being unpatentable over Matsuura.
Regarding claim 18, Matsuura teaches the dental curable composition as comprising, with respect to 100 parts by mass of the (A) polymerizable monomer,
• 0.5 to 10 parts by mass of the (B) polymerization initiator (see Matsuura at para. 0168, teaching the polymerization initiator (c) as being a photopolymerization initiator; also see Matsuura at para. 0169, teaching the photopolymerization initiator as containing both a water-soluble photopolymerization initiator (c-1a) and a water-insoluble photopolymerization initiator (c-1b); also see Matsuura at para. 0185, teaching the content of the water-soluble photopolymerization initiator (c-1a) to range from 0.01 to 20 parts by mass relative to 100 parts by mass of monomers in the resin; also see Matsuura at para. 0198, teaching the content of the water-insoluble photopolymerization initiator (c-1b) to range from 0.01 to 10 parts by mass relative to 100 parts by mass of monomers in the resin; thus, Matsuura necessarily teaches a total initiator content of 0.02 to 30 parts by mass relative to 100 parts by mass of the monomers in the resin (0.01 c-1a min + 0.01 c-1b min = 0.02 total initiator content minimum; 20 c-1a max + 10 c-1b max = 30 total initiator content maximum); this range of 0.02 to 30 parts overlaps the claimed range, establishing a prima facie case of obviousness, see MPEP § 2144.05);
• 0.001 to 0.1 parts by mass of the (C) fluorescent agent (see Matsuura at para. 0276, teaching the content of the fluorescent agent to range from 0.005 to 0.5 parts by mass relative to 100 parts by mass of monomers in the resin; this range overlaps the claimed range, establishing a prima facie case of obviousness, see MPEP § 2144.05); and
• 0.01 to 2 parts by mass of the (D-1) compound having at least one first absorption maximum in the wavelength region of 250 to 320 nm and at least one second absorption maximum in the wavelength region of 320 to 400 nm, wherein the ratio of an absorbance of the first absorption maximum to an absorbance of the second absorption maximum is within the range of 1 to 4 (see Example 1 of Matsuura at Table 1 at pg. 29-30, teaching the presence of 0.2 parts of ultraviolet absorber (i.e., TN326, see Matsuura at para. 0342) relative to 100 total monomer parts in the resin; thus, Matsuura reasonably teaches, via their example embodiments, the use of 0.2 parts of ultraviolet absorber relative to 100 total monomer parts in the resin; this value of 0.2 parts falls within the claimed range).
Claims 4, 8, 9, 12, and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Neffgen, or alternatively Neffgen in view of Durban, as applied to claim 1 above, and further in view of Yamamoto et al. (US-20220401312-A1) (hereinafter referred to as “Yamamoto”) and Jin et al. (US-20160228334-A1) (hereinafter referred to as “Jin”).
Regarding claims 4, 8, and 9, while Neffgen (or modified Neffgen) teaches the composition according to claim 1 outlined above, Neffgen fails to explicitly teach the dental curable composition as not substantially comprising an aromatic amine compound as the (B-3) polymerization accelerator.
However, Yamamoto teaches a dental photocurable composition containing a polymerizable monomer, a photosensitizer, a photopolymerization accelerator, and a filler (see Yamamoto at para. 0008). Yamamoto further teaches that aromatic tertiary amine compounds cause discoloration, deterioration in sensitivity to light, and the like, and therefore, aliphatic tertiary amine compounds have been used as a replacement (see Yamamoto at para. 0049). Moreover, Jin teaches there are increasing concerns over using tertiary aromatic amines due to potential toxicity and long-term effect on color stability for cured systems (see Jin at para. 0001).
Neffgen teaches their initiator system may contain tertiary aliphatic amines as a co-initiator (see Neffgen at pg. 11, para. 7).
Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to use only an aliphatic tertiary amine as a co-initiator in the initiator system of Neffgen, i.e., set the content of the aromatic tertiary amine to be zero. One of ordinary skill in the art would have been motivated to do so in order to prevent discoloration, deterioration in sensitivity to light, toxicity, and a long-term effect on color stability (see Yamamoto at para. 0049; also see Jin at para. 0001).
Regarding claim 12, see Neffgen at pg. 12, para. 3, teaching the composition may contain “one or more stabilizers.” Thus, Neffgen reasonably teaches the use of a single stabilizer in their composition, i.e., 2-hydroxy-4-n-octyloxybenzophenone.
Regarding claim 16, see Neffgen at pg. 16, para. 4, teaching the fluorescent colorant may include diethyl 2,5-dihydroxyterephthalate; diethyl 2,5-dihydroxyterephthalate reads on the claimed formula, as disclosed by Applicant’s specification at para. 0105; also see Neffgen at pg. 16, para. 3, teaching the dental material may contain “a colorant or a colorant mixture;” accordingly, Neffgen reasonably teaches the dental material may contain only a single colorant, e.g., diethyl 2,5-dihydroxyterephthalate.
Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over Neffgen, or alternatively Neffgen in view of Durban.
Regarding claim 18, see Neffgen at pg. 8, para. 2, teaching the content of their polymerizable monomer may range from 0 to 99 wt% in the composition; also see Neffgen at pg. 8, para. 2 and pg. 16, para. 4-5, teaching the content of the initiator, the stabilizer, and the additive (i.e., the fluorescent colorant) may each respectively range from 0 to 5 wt% in the composition; accordingly, it necessarily follows that the ranges taught by Neffgen overlap the claimed ranges, establishing a prima facie case of obviousness, see MPEP § 2144.05 (to elaborate, the monomer component can never be 100% by weight of the entire composition, but can range from 0 to 99 wt%; thus, with respect to 100 parts of the monomer component, the parts by mass range of each of the initiator, the stabilizer, and the additive (i.e., the fluorescent colorant) necessarily ranges from 0 parts to a value greater than 5 parts by mass, since 5 divided by a number <100 that is then multiplied by 100 will always be greater than 5 (e.g., 5 wt% of stabilizer/90 wt% of total monomer • 100 = 5.56 parts of the stabilizer with respect to 100 parts of the total monomer); this range of 0 parts to a value greater than 5 parts overlaps each respective claimed range).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Utterodt et al. (US-20200253836-A1) teach a polymerizable dental composite material (see Utterodt at Abstract).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jeffrey E Barzach whose telephone number is (571)272-8735. The examiner can normally be reached Monday - Friday; 8 am - 5 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Amber R Orlando can be reached on 571-270-3149. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JEFFREY EUGENE BARZACH/Examiner, Art Unit 1731
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