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 .
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.
Note Regarding HLB Values
The examiner notes that the skilled artisan would have been aware that polysorbate 80 has an HLB of 15.0 and polysorbate 20 has an HLB of 16.7. See e.g. Gemeinhart et al. (US 2015/0258211 A1), paragraph 0129.
Claim Rejections - 35 USC § 112(b) – Indefiniteness
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 20 is 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.
Claim 20 further modifies the amino acid of claim 19, and appears to recite that the amino acid may be calcium. It is unclear how this further modifies the claim because calcium is not an amino acid. The term “amino acid” refers to a compound having both an amine functionality and a (Bronsted) acid functionality such as a carboxylic acid group. Calcium or calcium ions have neither of these. As such, it is unclear as to how the term “calcium” further modifies the amino acid.
For the purposes of examination under prior art, the examiner understands that claim 20 is drawn to calcium salts of the amino acids recited previously in the claim.
Claim Rejections - 35 USC § 103 – Obviousness
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) 1-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Montgomery et al. (US 2005/0265933 A1) in view of Quan et al. (US 2005/0137109 A1) and in view of or as evidenced by Pal (Colloid Polymer Science, Vol. 277, 1999, pages 583-588).
Montgomery et al. (hereafter referred to as Montgomery) is drawn to a light activated tooth whitening method, as of Montgomery, title and abstract. The method of Montgomery entails administration of an oxidizing compound along with actinic radiation having a wavelength between 400 nm and 500 nm, as of Montgomery, page 11, right column, relevant text reproduced below.
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The oxidizing compound may be a peroxide, as of Montgomery, paragraph 0037. Montgomery teaches applying light for a period of time of 10 minutes to 90 minutes, as of Montgomery, paragraph 0048, with off times of about 1 to 10 minutes, also taught by paragraph 0048 of Montgomery. A case wherein the “off” time is at least 50% of the “on” time would appear to overlap with these teachings (e.g. off time for 10 minutes, on time for 11 minutes). While the prior art does not disclose the exact claimed values, but does overlap: in such instances even a slight overlap in range establishes a prima facie case of obviousness. See MPEP 2144.05(I).
Montgomery does not teach a jammed emulsion.
Quan et al. (hereafter referred to as Quan) is drawn to a composition and method for whitening teeth, as of Quan, title and abstract. The composition of Quan may be a high internal phase oil in water emulsion comprising a volume fraction of the internal phase as high as 90%, 95%, or 98%, as of paragraph 0042 of Quan. The examiner notes that the compositions of Example 1 of Quan all have oil as the predominant ingredient, and Examples #4 and #5 include polysorbate 80 which is a high HLB emulsifier for oil in water emulsion; as such, these compositions would appear to be jammed oil in water emulsions comprising a higher proportion of oil than water despite oil being the dispersed phase and water the continuous phase. The composition of Quan includes a peroxide for whitening teeth, as of Quan, at least paragraph 0050.
Quan does not teach directing light radiation toward a tooth.
It would have been prima facie obvious for one of ordinary skill in the art to have used the composition of Quan as the tooth whitening agent-containing composition in the method of Montgomery. Montgomery is drawn to a method of tooth whitening that includes both applying a tooth whitening agent containing composition to teeth as well as shining light on said teeth. The emulsion of Quan is a tooth whitening agent containing composition. As such, the skilled artisan would have been motivated to have used the tooth whitening emulsion of Quan as the tooth whitening agent in the method of Montgomery in order to have predictably whitened teeth with a reasonable expectation of success. Generally, it is prima facie obvious to select a known material (e.g. the emulsion of Quan) for incorporation into a method (e.g. that of Montgomery), based on its recognized suitability for its intended use (whitening teeth). See MPEP 2144.07.
Neither Montgomery nor Quan teach the yield stress.
Pal is drawn to yield stress of high internal phase emulsions, as of Pal, page 583, title and abstract. The yield stress measured in Pal, page 585, figure 2 appears to be in the range of 10-30 Pascals. See the relevant figure reproduced below.
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It would have been prima facie obvious for one of ordinary skill in the art to have modified the jammed oil in water emulsion of Quan to have had a yield stress in the range taught by Pal. Quan is understood by the examiner to be drawn to a jammed oil in water emulsion, which is a type of high internal phase emulsion. Pal teaches that a value of about 10-30 Pascals is a known yield stress value for a high internal phase emulsion. As such, the skilled artisan would have been motivated to have modified the yield stress of the high internal phase jammed emulsion of Quan to have been in the range taught by Pal for predictable suitability in forming a high internal phase emulsion with a reasonable expectation of success.
In the alternative, the skilled artisan would have understood that the value of yield stress taught by Pal is the value known for high internal phase emulsions. As the jammed emulsion of Quan is a high internal phase emulsion, the skilled artisan would have expected that the jammed emulsion of Quan would have had a yield stress within the 2-500 Pascal range required by the instant claims even though this property was not actually taught by Quan. Something which is old (e.g. the composition of Quan) does not become patentable on the discovery of a new property (e.g. the yield stress), and this feature need not have been recognized at the time of the invention. See MPEP 2112(I & II).
As to claim 2, Quan teaches removal of the applied material after use, as of paragraph 0095.
As to claim 3, Montgomery teaches applying light for a period of time of 10 minutes to 90 minutes, as of Montgomery, paragraph 0048, with off times of about 1 to 10 minutes, also taught by paragraph 0048 of Montgomery. A case wherein the “off” time is at least 80% of the “on” time would appear to overlap with these teachings (e.g. off time for 10 minutes, on time for 11 minutes). While the prior art does not disclose the exact claimed values, but does overlap: in such instances even a slight overlap in range establishes a prima facie case of obviousness. See MPEP 2144.05(I).
As to claim 4, Montgomery teaches 400-500 nm wavelength light, as of claim 31 of Montgomery.
As to claim 5, Montgomery teaches a peroxide bleaching agent as of at least paragraph 0037.
As to claim 6, Quan teaches a fluoride ion source, as of Quan, paragraphs 0122-0123. These include sodium fluoride and stannous fluoride, as of Quan, paragraph 0123.
As to claim 7, Quan teaches hydrogen peroxide as of paragraph 0050.
As to claims 8-9, Quan teaches stannous fluoride in paragraph 0123.
As to claim 10, Quan teaches citrate in paragraph 0141.
As to claim 11, as best understood by the examiner, in the dentistry art, abrasives are usually certain types of silica, though not all silicas are abrasives. While Quan teaches silicas, e.g. as of paragraph 0166, these silicas appear to be viscosity modifiers. As such, Quan appears to teach silica as a thickening agent rather than as an abrasive. Therefore, as best understood by the examiner, Quan meets the requirement of the composition being free of abrasive.
As to claim 12, Quan teaches 0.1% to 3% of emulsifier in paragraph 0059.
As to claim 13, Quan teaches polysorbate 80, as of paragraph 0061. The skilled artisan would have understood this to have had an HLB of about 15, which is within the claimed range. See the section above entitled “Note Regarding HLB Values.”
As to claim 14, Quan teaches polysorbate 80, as of paragraph 0061. This reads on the required polysorbate.
As to claim 15, Quan teaches sodium lauryl sulfate in paragraph 0061.
As to claim 16, Quan may be a high internal phase oil in water emulsion comprising a volume fraction of the internal phase, which in this case is hydrophobic, as high as 90%, 95%, or 98%, as of paragraph 0042 of Quan. This would appear to result in a composition having between 80% and 90% hydrophobic phase.
As to claim 17, Quan may be a high internal phase oil in water emulsion comprising a volume fraction of the internal phase, which in this case is hydrophobic, as high as 90%, 95%, or 98%, as of paragraph 0042 of Quan. As best understood by the examiner, the remainder of the composition would have been aqueous phase, thereby resulting in amounts of aqueous phase of 10%, 5%, or 2%.
As to claim 18, the examiner understands the teachings of paragraph 0042 of Quan to be drawn to a composition with 2%, 5%, or 20% aqueous phase. See the rejection of claim 17 above.
As to claim 19, Quan teaches antimicrobial agents and anticaries agents and desensitizing agents in paragraph 0119.
As to claim 20, Quan teaches tryptophan, lysine, methionine, threonine, Levocamitine, or L-carnitine in paragraph 0153.
Note Regarding Copending Application Drawn to Similar Subject Matter
The examiner notes copending application 17/944,686, which is commonly assigned with the instant application and has overlapping inventors with the instant application. The claims of this copending application are drawn to a toothpaste composition comprising a jammed oil in water emulsion comprising an aqueous phase, a hydrophobic phase and an emulsifier. This application has been appealed, with appeal number 2026-002349. It is the examiner’s position that a decision on appeal in the ‘686 case may be relevant in regard to the examiner’s determination as to whether to maintain or withdraw the above-indicated obviousness rejection.
Non-Statutory Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-35 of U.S. Patent No. 10,780,032 in view of Montgomery et al. (US 2005/0265933 A1) and in view of or as evidenced by Pal (Colloid Polymer Science, Vol. 277, 1999, pages 583-588).
The instant claims are drawn to a method of treating teeth. This method requires applying a jammed emulsion to teeth. The jammed emulsion has a particular yield stress and is maintained on teeth for a period of time. The instantly claimed method also requires directing light radiation to the teeth.
The conflicting claims are drawn to a jammed emulsion. The jammed emulsion may comprise an oral care active agent including bleaching agents such as hydrogen peroxide, as of conflicting claims 5-7.
The conflicting claims differ from the instant claims because (a) the conflicting claims are drawn to a composition whereas the instant claims are drawn to a method, (b) the conflicting claims do not recite the yield stress, and (c) the conflicting claims do not recite applying light.
Montgomery et al. (hereafter referred to as Montgomery) is drawn to a light activated tooth whitening method, as of Montgomery, title and abstract. The method of Montgomery entails administration of an oxidizing compound along with actinic radiation having a wavelength between 400 nm and 500 nm, as of Montgomery, page 11, right column, relevant text reproduced in the obviousness rejection above. The oxidizing compound may be a peroxide, as of Montgomery, paragraph 0037. Montgomery teaches applying light for a period of time of 10 minutes to 90 minutes, as of Montgomery, paragraph 0048, with off times of about 1 to 10 minutes, also taught by paragraph 0048 of Montgomery. A case wherein the “off” time is at least 50% of the “on” time would appear to overlap with these teachings (e.g. off time for 10 minutes, on time for 11 minutes). While the prior art does not disclose the exact claimed values, but does overlap: in such instances even a slight overlap in range establishes a prima facie case of obviousness. See MPEP 2144.05(I).
It would have been prima facie obvious for one of ordinary skill in the art to have combined the method of applying light of Montgomery to a method of using the conflicting claims. The conflicting claims are drawn to a composition comprising a jammed emulsion; however, this composition is used for bleaching teeth, as of conflicting claims 5-7. The method of light application of Montgomery is useful for bleaching teeth. As such, the skilled artisan would have been motivated to have combined the method of Montgomery with a method of using the composition of the conflicting claims in order to have predictably bleached teeth with a reasonable expectation of success. Combining prior art elements (e.g. the composition of the conflicting claims and the method of Montgomery) according to known methods to yield predictable results (bleaching/whitening teeth) is prima facie obvious. See MPEP 2143, Exemplary Rationale A.
Neither the conflicting claims nor Montgomery teach the required yield stress.
Pal is drawn to yield stress of high internal phase emulsions, as of Pal, page 583, title and abstract. The yield stress measured in Pal, page 585, figure 2 appears to be in the range of 10-30 Pascals. See the relevant figure reproduced in the obviousness rejection above.
It would have been prima facie obvious for one of ordinary skill in the art to have modified the jammed oil in water emulsion of the conflicting claims to have had a yield stress in the range taught by Pal. The conflicting claims are drawn to a jammed oil in water emulsion, which is a type of high internal phase emulsion. Pal teaches that a value of about 10-30 Pascals is a known yield stress value for a high internal phase emulsion. As such, the skilled artisan would have been motivated to have modified the yield stress of the high internal phase jammed emulsion of the conflicting claims to have been in the range taught by Pal for predictable suitability in forming a high internal phase emulsion with a reasonable expectation of success.
In the alternative, the skilled artisan would have understood that the value of yield stress taught by Pal is the value known for high internal phase emulsions. As the jammed emulsion of the conflicting claims is a high internal phase emulsion, the skilled artisan would have expected that the jammed emulsion of the conflicting claims would have had a yield stress within the 2-500 Pascal range required by the instant claims even though this property was not actually recited by the conflicting claims. Something which is old (e.g. the composition of the conflicting claims) does not become patentable on the discovery of a new property (e.g. the yield stress), and this feature need not have been recognized at the time of the invention. See MPEP 2112(I & II).
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11,123,270 in view of Montgomery et al. (US 2005/0265933 A1) and in view of or as evidenced by Pal (Colloid Polymer Science, Vol. 277, 1999, pages 583-588).
The instant claims are drawn to a method of treating teeth. This method requires applying a jammed emulsion to teeth. The jammed emulsion has a particular yield stress and is maintained on teeth for a period of time. The instantly claimed method also requires directing light radiation to the teeth.
The conflicting claims are drawn to a jammed emulsion. The jammed emulsion may comprise an oral care active agent including bleaching agents such as hydrogen peroxide, as of conflicting claims 5-7. Conflicting claims 17-18 are drawn to a method of applying the jammed emulsion to teeth.
The conflicting claims differ from the instant claims because (a) the conflicting claims do not recite the yield stress, and (b) the conflicting claims do not recite applying light.
Montgomery et al. (hereafter referred to as Montgomery) is drawn to a light activated tooth whitening method, as of Montgomery, title and abstract. The method of Montgomery entails administration of an oxidizing compound along with actinic radiation having a wavelength between 400 nm and 500 nm, as of Montgomery, page 11, right column, relevant text reproduced in the obviousness rejection above. The oxidizing compound may be a peroxide, as of Montgomery, paragraph 0037. Montgomery teaches applying light for a period of time of 10 minutes to 90 minutes, as of Montgomery, paragraph 0048, with off times of about 1 to 10 minutes, also taught by paragraph 0048 of Montgomery. A case wherein the “off” time is at least 50% of the “on” time would appear to overlap with these teachings (e.g. off time for 10 minutes, on time for 11 minutes). While the prior art does not disclose the exact claimed values, but does overlap: in such instances even a slight overlap in range establishes a prima facie case of obviousness. See MPEP 2144.05(I).
It would have been prima facie obvious for one of ordinary skill in the art to have combined the method of applying light of Montgomery to a method of using the conflicting claims. The conflicting claims are drawn to a composition comprising a jammed emulsion; however, this composition is used for bleaching teeth, as of conflicting claims 5-7. The method of light application of Montgomery is useful for bleaching teeth. As such, the skilled artisan would have been motivated to have combined the method of Montgomery with a method of using the composition of the conflicting claims in order to have predictably bleached teeth with a reasonable expectation of success. Combining prior art elements (e.g. the composition of the conflicting claims and the method of Montgomery) according to known methods to yield predictable results (bleaching/whitening teeth) is prima facie obvious. See MPEP 2143, Exemplary Rationale A.
Neither the conflicting claims nor Montgomery teach the required yield stress.
Pal is drawn to yield stress of high internal phase emulsions, as of Pal, page 583, title and abstract. The yield stress measured in Pal, page 585, figure 2 appears to be in the range of 10-30 Pascals. See the relevant figure reproduced in the obviousness rejection above.
It would have been prima facie obvious for one of ordinary skill in the art to have modified the jammed oil in water emulsion of the conflicting claims to have had a yield stress in the range taught by Pal. The conflicting claims are drawn to a jammed oil in water emulsion, which is a type of high internal phase emulsion. Pal teaches that a value of about 10-30 Pascals is a known yield stress value for a high internal phase emulsion. As such, the skilled artisan would have been motivated to have modified the yield stress of the high internal phase jammed emulsion of the conflicting claims to have been in the range taught by Pal for predictable suitability in forming a high internal phase emulsion with a reasonable expectation of success.
In the alternative, the skilled artisan would have understood that the value of yield stress taught by Pal is the value known for high internal phase emulsions. As the jammed emulsion of the conflicting claims is a high internal phase emulsion, the skilled artisan would have expected that the jammed emulsion of the conflicting claims would have had a yield stress within the 2-500 Pascal range required by the instant claims even though this property was not actually recited by the conflicting claims. Something which is old (e.g. the composition of the conflicting claims) does not become patentable on the discovery of a new property (e.g. the yield stress), and this feature need not have been recognized at the time of the invention. See MPEP 2112(I & II).
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-31 of U.S. Patent No. 12,029,802 in view of Montgomery et al. (US 2005/0265933 A1).
The instant claims are drawn to a method of treating teeth. This method requires applying a jammed emulsion to teeth. The jammed emulsion has a particular yield stress and is maintained on teeth for a period of time. The instantly claimed method also requires directing light radiation to the teeth.
The conflicting claims are drawn to a jammed emulsion. The jammed emulsion may comprise an oral care active agent including bleaching agents such as hydrogen peroxide, as of conflicting claims 3-5. The conflicting claims recite a particular yield stress.
The conflicting claims differ from the instant claims because (a) the conflicting claims are drawn to a composition whereas the instant claims are drawn to a method, (b) the conflicting claims do not recite required method of applying light radiation.
Montgomery et al. (hereafter referred to as Montgomery) is drawn to a light activated tooth whitening method, as of Montgomery, title and abstract. The method of Montgomery entails administration of an oxidizing compound along with actinic radiation having a wavelength between 400 nm and 500 nm, as of Montgomery, page 11, right column, relevant text reproduced in the obviousness rejection above. The oxidizing compound may be a peroxide, as of Montgomery, paragraph 0037. Montgomery teaches applying light for a period of time of 10 minutes to 90 minutes, as of Montgomery, paragraph 0048, with off times of about 1 to 10 minutes, also taught by paragraph 0048 of Montgomery. A case wherein the “off” time is at least 50% of the “on” time would appear to overlap with these teachings (e.g. off time for 10 minutes, on time for 11 minutes). While the prior art does not disclose the exact claimed values, but does overlap: in such instances even a slight overlap in range establishes a prima facie case of obviousness. See MPEP 2144.05(I).
It would have been prima facie obvious for one of ordinary skill in the art to have combined the method of applying light of Montgomery to a method of using the conflicting claims. The conflicting claims are drawn to a composition comprising a jammed emulsion; however, this composition is used for bleaching teeth, as of conflicting claims 3-5. The method of light application of Montgomery is useful for bleaching teeth. As such, the skilled artisan would have been motivated to have combined the method of Montgomery with a method of using the composition of the conflicting claims in order to have predictably bleached teeth with a reasonable expectation of success. Combining prior art elements (e.g. the composition of the conflicting claims and the method of Montgomery) according to known methods to yield predictable results (bleaching/whitening teeth) is prima facie obvious. See MPEP 2143, Exemplary Rationale A.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-23 of U.S. Patent No. 11,096,874 in view of Montgomery et al. (US 2005/0265933 A1) and in view of or as evidenced by Pal (Colloid Polymer Science, Vol. 277, 1999, pages 583-588).
The instant claims are drawn to a method of treating teeth. This method requires applying a jammed emulsion to teeth. The jammed emulsion has a particular yield stress and is maintained on teeth for a period of time. The instantly claimed method also requires directing light radiation to the teeth.
The conflicting claims are drawn to a jammed emulsion. The jammed emulsion may comprise an oral care active agent including bleaching agents such as hydrogen peroxide, as of conflicting claims 8-9.
The conflicting claims differ from the instant claims because (a) the conflicting claims are drawn to a composition whereas the instant claims are drawn to a method, (b) the conflicting claims do not recite the yield stress, and (c) the conflicting claims do not recite applying light.
Montgomery et al. (hereafter referred to as Montgomery) is drawn to a light activated tooth whitening method, as of Montgomery, title and abstract. The method of Montgomery entails administration of an oxidizing compound along with actinic radiation having a wavelength between 400 nm and 500 nm, as of Montgomery, page 11, right column, relevant text reproduced in the obviousness rejection above. The oxidizing compound may be a peroxide, as of Montgomery, paragraph 0037. Montgomery teaches applying light for a period of time of 10 minutes to 90 minutes, as of Montgomery, paragraph 0048, with off times of about 1 to 10 minutes, also taught by paragraph 0048 of Montgomery. A case wherein the “off” time is at least 50% of the “on” time would appear to overlap with these teachings (e.g. off time for 10 minutes, on time for 11 minutes). While the prior art does not disclose the exact claimed values, but does overlap: in such instances even a slight overlap in range establishes a prima facie case of obviousness. See MPEP 2144.05(I).
It would have been prima facie obvious for one of ordinary skill in the art to have combined the method of applying light of Montgomery to a method of using the conflicting claims. The conflicting claims are drawn to a composition comprising a jammed emulsion; however, this composition is used for bleaching teeth, as of conflicting claims 8-9. The method of light application of Montgomery is useful for bleaching teeth. As such, the skilled artisan would have been motivated to have combined the method of Montgomery with a method of using the composition of the conflicting claims in order to have predictably bleached teeth with a reasonable expectation of success. Combining prior art elements (e.g. the composition of the conflicting claims and the method of Montgomery) according to known methods to yield predictable results (bleaching/whitening teeth) is prima facie obvious. See MPEP 2143, Exemplary Rationale A.
Neither the conflicting claims nor Montgomery teach the required yield stress.
Pal is drawn to yield stress of high internal phase emulsions, as of Pal, page 583, title and abstract. The yield stress measured in Pal, page 585, figure 2 appears to be in the range of 10-30 Pascals. See the relevant figure reproduced in the obviousness rejection above.
It would have been prima facie obvious for one of ordinary skill in the art to have modified the jammed oil in water emulsion of the conflicting claims to have had a yield stress in the range taught by Pal. The conflicting claims are drawn to a jammed oil in water emulsion, which is a type of high internal phase emulsion. Pal teaches that a value of about 10-30 Pascals is a known yield stress value for a high internal phase emulsion. As such, the skilled artisan would have been motivated to have modified the yield stress of the high internal phase jammed emulsion of the conflicting claims to have been in the range taught by Pal for predictable suitability in forming a high internal phase emulsion with a reasonable expectation of success.
In the alternative, the skilled artisan would have understood that the value of yield stress taught by Pal is the value known for high internal phase emulsions. As the jammed emulsion of the conflicting claims is a high internal phase emulsion, the skilled artisan would have expected that the jammed emulsion of the conflicting claims would have had a yield stress within the 2-500 Pascal range required by the instant claims even though this property was not actually recited by the conflicting claims. Something which is old (e.g. the composition of the conflicting claims) does not become patentable on the discovery of a new property (e.g. the yield stress), and this feature need not have been recognized at the time of the invention. See MPEP 2112(I & II).
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11,590,063 in view of Montgomery et al. (US 2005/0265933 A1).
The instant claims are drawn to a method of treating teeth. This method requires applying a jammed emulsion to teeth. The jammed emulsion has a particular yield stress and is maintained on teeth for a period of time. The instantly claimed method also requires directing light radiation to the teeth.
The conflicting claims are drawn to a jammed emulsion. The jammed emulsion may comprise an oral care active agent including bleaching agents such as hydrogen peroxide, as of conflicting claims 10-11 and 20, wherein peroxide is a known oral care agent for tooth bleaching. The conflicting claims recite a particular yield stress.
The conflicting claims differ from the instant claims because (a) the conflicting claims are drawn to a composition whereas the instant claims are drawn to a method, (b) the conflicting claims do not recite required method of applying light radiation.
Montgomery et al. (hereafter referred to as Montgomery) is drawn to a light activated tooth whitening method, as of Montgomery, title and abstract. The method of Montgomery entails administration of an oxidizing compound along with actinic radiation having a wavelength between 400 nm and 500 nm, as of Montgomery, page 11, right column, relevant text reproduced in the obviousness rejection above. The oxidizing compound may be a peroxide, as of Montgomery, paragraph 0037. Montgomery teaches applying light for a period of time of 10 minutes to 90 minutes, as of Montgomery, paragraph 0048, with off times of about 1 to 10 minutes, also taught by paragraph 0048 of Montgomery. A case wherein the “off” time is at least 50% of the “on” time would appear to overlap with these teachings (e.g. off time for 10 minutes, on time for 11 minutes). While the prior art does not disclose the exact claimed values, but does overlap: in such instances even a slight overlap in range establishes a prima facie case of obviousness. See MPEP 2144.05(I).
It would have been prima facie obvious for one of ordinary skill in the art to have combined the method of applying light of Montgomery to a method of using the conflicting claims. The conflicting claims are drawn to a composition comprising a jammed emulsion; however, this composition is used for bleaching teeth, as of conflicting claims 10-11 and 20. The method of light application of Montgomery is useful for bleaching teeth. As such, the skilled artisan would have been motivated to have combined the method of Montgomery with a method of using the composition of the conflicting claims in order to have predictably bleached teeth with a reasonable expectation of success. Combining prior art elements (e.g. the composition of the conflicting claims and the method of Montgomery) according to known methods to yield predictable results (bleaching/whitening teeth) is prima facie obvious. See MPEP 2143, Exemplary Rationale A.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-23 of U.S. Patent No. 12,551,414 in view of or as evidenced by Pal (Colloid Polymer Science, Vol. 277, 1999, pages 583-588).
The instant claims are drawn to a method of treating teeth. This method requires applying a jammed emulsion to teeth. The jammed emulsion has a particular yield stress and is maintained on teeth for a period of time. The instantly claimed method also requires directing light radiation to the teeth.
The conflicting claims are drawn to a jammed emulsion and a system for their delivery for oral care. The conflicting claims may comprise a bleaching agent as an active, in conflicting claim 9. The conflicting claims further comprise a device capable of producing electromagnetic radiation, as of conflicting claims 2 and 14-15
The conflicting claims differ from the instant claims because (a) the conflicting claims are drawn to a composition whereas the instant claims are drawn to a method, (b) the conflicting claims do not recite the yield stress.
The conflicting claims do not recite the required yield stress.
Pal is drawn to yield stress of high internal phase emulsions, as of Pal, page 583, title and abstract. The yield stress measured in Pal, page 585, figure 2 appears to be in the range of 10-30 Pascals. See the relevant figure reproduced in the obviousness rejection above.
It would have been prima facie obvious for one of ordinary skill in the art to have modified the jammed oil in water emulsion of the conflicting claims to have had a yield stress in the range taught by Pal. The conflicting claims are drawn to a jammed oil in water emulsion, which is a type of high internal phase emulsion. Pal teaches that a value of about 10-30 Pascals is a known yield stress value for a high internal phase emulsion. As such, the skilled artisan would have been motivated to have modified the yield stress of the high internal phase jammed emulsion of the conflicting claims to have been in the range taught by Pal for predictable suitability in forming a high internal phase emulsion with a reasonable expectation of success.
In the alternative, the skilled artisan would have understood that the value of yield stress taught by Pal is the value known for high internal phase emulsions. As the jammed emulsion of the conflicting claims is a high internal phase emulsion, the skilled artisan would have expected that the jammed emulsion of the conflicting claims would have had a yield stress within the 2-500 Pascal range required by the instant claims even though this property was not actually recited by the conflicting claims. Something which is old (e.g. the composition of the conflicting claims) does not become patentable on the discovery of a new property (e.g. the yield stress), and this feature need not have been recognized at the time of the invention. See MPEP 2112(I & II).
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-29 of U.S. Patent No. 12,496,262 in view of Montgomery et al. (US 2005/0265933 A1).
The instant claims are drawn to a method of treating teeth. This method requires applying a jammed emulsion to teeth. The jammed emulsion has a particular yield stress and is maintained on teeth for a period of time. The instantly claimed method also requires directing light radiation to the teeth.
The conflicting claims are drawn to a jammed emulsion. The jammed emulsion may comprise an oral care active agent including bleaching agents such as hydrogen peroxide, as of conflicting claim 12, wherein peroxide is a known oral care agent for tooth bleaching. The conflicting claims recite a particular yield stress in conflicting claims 3-5.
The conflicting claims differ from the instant claims because (a) the conflicting claims are drawn to a composition whereas the instant claims are drawn to a method, (b) the conflicting claims do not recite required method of applying light radiation.
Montgomery et al. (hereafter referred to as Montgomery) is drawn to a light activated tooth whitening method, as of Montgomery, title and abstract. The method of Montgomery entails administration of an oxidizing compound along with actinic radiation having a wavelength between 400 nm and 500 nm, as of Montgomery, page 11, right column, relevant text reproduced in the obviousness rejection above. The oxidizing compound may be a peroxide, as of Montgomery, paragraph 0037. Montgomery teaches applying light for a period of time of 10 minutes to 90 minutes, as of Montgomery, paragraph 0048, with off times of about 1 to 10 minutes, also taught by paragraph 0048 of Montgomery. A case wherein the “off” time is at least 50% of the “on” time would appear to overlap with these teachings (e.g. off time for 10 minutes, on time for 11 minutes). While the prior art does not disclose the exact claimed values, but does overlap: in such instances even a slight overlap in range establishes a prima facie case of obviousness. See MPEP 2144.05(I).
It would have been prima facie obvious for one of ordinary skill in the art to have combined the method of applying light of Montgomery to a method of using the conflicting claims. The conflicting claims are drawn to a composition comprising a jammed emulsion; however, this composition is used for bleaching teeth, as of conflicting claim 12. The method of light application of Montgomery is useful for bleaching teeth. As such, the skilled artisan would have been motivated to have combined the method of Montgomery with a method of using the composition of the conflicting claims in order to have predictably bleached teeth with a reasonable expectation of success. Combining prior art elements (e.g. the composition of the conflicting claims and the method of Montgomery) according to known methods to yield predictable results (bleaching/whitening teeth) is prima facie obvious. See MPEP 2143, Exemplary Rationale A.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-30 of U.S. Patent No. 12,447,115 in view of Montgomery et al. (US 2005/0265933 A1) and in view of or as evidenced by Pal (Colloid Polymer Science, Vol. 277, 1999, pages 583-588).
The instant claims are drawn to a method of treating teeth. This method requires applying a jammed emulsion to teeth. The jammed emulsion has a particular yield stress and is maintained on teeth for a period of time. The instantly claimed method also requires directing light radiation to the teeth.
The conflicting claims are drawn to a method for treatment of teeth by application of a jammed emulsion. Although conflicting claim 1 is drawn to prevention of caries, cavities, or gingivitis, the examiner notes that conflicting claims 11-12 recite a tooth whitening agent.
The conflicting claims differ from the instant claims because (a) the purpose of the method of the conflicting claims differs from that of the instantly claimed method, (b) the conflicting claims do not recite the yield stress, and (c) the conflicting claims do not recite applying light.
Montgomery et al. (hereafter referred to as Montgomery) is drawn to a light activated tooth whitening method, as of Montgomery, title and abstract. The method of Montgomery entails administration of an oxidizing compound along with actinic radiation having a wavelength between 400 nm and 500 nm, as of Montgomery, page 11, right column, relevant text reproduced in the obviousness rejection above. The oxidizing compound may be a peroxide, as of Montgomery, paragraph 0037. Montgomery teaches applying light for a period of time of 10 minutes to 90 minutes, as of Montgomery, paragraph 0048, with off times of about 1 to 10 minutes, also taught by paragraph 0048 of Montgomery. A case wherein the “off” time is at least 50% of the “on” time would appear to overlap with these teachings (e.g. off time for 10 minutes, on time for 11 minutes). While the prior art does not disclose the exact claimed values, but does overlap: in such instances even a slight overlap in range establishes a prima facie case of obviousness. See MPEP 2144.05(I).
It would have been prima facie obvious for one of ordinary skill in the art to have combined the method of applying light of Montgomery to the method of the conflicting claims. The conflicting claims are drawn to a method in which a jammed emulsion is applied to teeth, in which a tooth whitening agent may be used. The method of light application of Montgomery is useful for whitening teeth. As such, the skilled artisan would have been motivated to have combined the method of Montgomery with the method of the conflicting claims in order to have predictably bleached teeth with a reasonable expectation of success. Combining prior art elements (e.g. the method of the conflicting claims and the method of Montgomery) according to known methods to yield predictable results (bleaching/whitening teeth) is prima facie obvious. See MPEP 2143, Exemplary Rationale A.
Neither the conflicting claims nor Montgomery teach the required yield stress.
Pal is drawn to yield stress of high internal phase emulsions, as of Pal, page 583, title and abstract. The yield stress measured in Pal, page 585, figure 2 appears to be in the range of 10-30 Pascals. See the relevant figure reproduced in the obviousness rejection above.
It would have been prima facie obvious for one of ordinary skill in the art to have modified the method of using the jammed oil in water emulsion of the conflicting claims to have had a yield stress in the range taught by Pal. The conflicting claims are drawn to a method of using a jammed oil in water emulsion, which is a type of high internal phase emulsion. Pal teaches that a value of about 10-30 Pascals is a known yield stress value for a high internal phase emulsion. As such, the skilled artisan would have been motivated to have modified the yield stress of the high internal phase jammed emulsion of the conflicting claims to have been in the range taught by Pal for predictable suitability in forming a high internal phase emulsion with a reasonable expectation of success.
In the alternative, the skilled artisan would have understood that the value of yield stress taught by Pal is the value known for high internal phase emulsions. As the jammed emulsion of the conflicting claims is a high internal phase emulsion, the skilled artisan would have expected that the jammed emulsion of the method of the conflicting claims would have had a yield stress within the 2-500 Pascal range required by the instant claims even though this property was not actually recited by the conflicting claims. Something which is old (e.g. the composition of the conflicting claims) does not become patentable on the discovery of a new property (e.g. the yield stress), and this feature need not have been recognized at the time of the invention. See MPEP 2112(I & II).
Claims 1-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8, 10-30, 32-37, and 40-41 of copending Application No. 17/944,686 in view of Montgomery et al. (US 2005/0265933 A1) and in view of or as evidenced by Pal (Colloid Polymer Science, Vol. 277, 1999, pages 583-588).
The instant claims are drawn to a method of treating teeth. This method requires applying a jammed emulsion to teeth. The jammed emulsion has a particular yield stress and is maintained on teeth for a period of time. The instantly claimed method also requires directing light radiation to the teeth.
The copending claims are drawn to a jammed emulsion. The jammed emulsion may comprise an oral care active agent including bleaching agents such as hydrogen peroxide, as of copending claim 12.
The copending claims differ from the instant claims because (a) the copending claims are drawn to a composition whereas the instant claims are drawn to a method, (b) the copending claims do not recite the yield stress, and (c) the copending claims do not recite applying light.
Montgomery et al. (hereafter referred to as Montgomery) is drawn to a light activated tooth whitening method, as of Montgomery, title and abstract. The method of Montgomery entails administration of an oxidizing compound along with actinic radiation having a wavelength between 400 nm and 500 nm, as of Montgomery, page 11, right column, relevant text reproduced in the obviousness rejection above. The oxidizing compound may be a peroxide, as of Montgomery, paragraph 0037. Montgomery teaches applying light for a period of time of 10 minutes to 90 minutes, as of Montgomery, paragraph 0048, with off times of about 1 to 10 minutes, also taught by paragraph 0048 of Montgomery. A case wherein the “off” time is at least 50% of the “on” time would appear to overlap with these teachings (e.g. off time for 10 minutes, on time for 11 minutes). While the prior art does not disclose the exact claimed values, but does overlap: in such instances even a slight overlap in range establishes a prima facie case of obviousness. See MPEP 2144.05(I).
It would have been prima facie obvious for one of ordinary skill in the art to have combined the method of applying light of Montgomery to a method of using the copending claims. The copending claims are drawn to a composition comprising a jammed emulsion; however, this composition is used for bleaching teeth, as of conflicting claim 12. The method of light application of Montgomery is useful for bleaching teeth. As such, the skilled artisan would have been motivated to have combined the method of Montgomery with a method of using the composition of the conflicting claims in order to have predictably bleached teeth with a reasonable expectation of success. Combining prior art elements (e.g. the composition of the copending claims and the method of Montgomery) according to known methods to yield predictable results (bleaching/whitening teeth) is prima facie obvious. See MPEP 2143, Exemplary Rationale A.
Neither the copending claims nor Montgomery teach the required yield stress.
Pal is drawn to yield stress of high internal phase emulsions, as of Pal, page 583, title and abstract. The yield stress measured in Pal, page 585, figure 2 appears to be in the range of 10-30 Pascals. See the relevant figure reproduced in the obviousness rejection above.
It would have been prima facie obvious for one of ordinary skill in the art to have modified the jammed oil in water emulsion of the copending claims to have had a yield stress in the range taught by Pal. The copending claims are drawn to a jammed oil in water emulsion, which is a type of high internal phase emulsion. Pal teaches that a value of about 10-30 Pascals is a known yield stress value for a high internal phase emulsion. As such, the skilled artisan would have been motivated to have modified the yield stress of the high internal phase jammed emulsion of the copending claims to have been in the range taught by Pal for predictable suitability in forming a high internal phase emulsion with a reasonable expectation of success.
In the alternative, the skilled artisan would have understood that the value of yield stress taught by Pal is the value known for high internal phase emulsions. As the jammed emulsion of the copending claims is a high internal phase emulsion, the skilled artisan would have expected that the jammed emulsion of the copending claims would have had a yield stress within the 2-500 Pascal range required by the instant claims even though this property was not actually recited by the copending claims. Something which is old (e.g. the composition of the copending claims) does not become patentable on the discovery of a new property (e.g. the yield stress), and this feature need not have been recognized at the time of the invention. See MPEP 2112(I & II).
This is a provisional nonstatutory double patenting rejection.
Claims 1-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of copending Application No. 19/330,889 in view of Montgomery et al. (US 2005/0265933 A1) and in view of or as evidenced by Pal (Colloid Polymer Science, Vol. 277, 1999, pages 583-588).
The instant claims are drawn to a method of treating teeth. This method requires applying a jammed emulsion to teeth. The jammed emulsion has a particular yield stress and is maintained on teeth for a period of time. The instantly claimed method also requires directing light radiation to the teeth.
The copending claims are drawn to a jammed emulsion. The jammed emulsion may comprise an oral care active agent including bleaching agents such as hydrogen peroxide, as of copending claim 6.
The copending claims differ from the instant claims because (a) the copending claims are drawn to a composition whereas the instant claims are drawn to a method, (b) the copending claims do not recite the yield stress, and (c) the copending claims do not recite applying light.
Montgomery et al. (hereafter referred to as Montgomery) is drawn to a light activated tooth whitening method, as of Montgomery, title and abstract. The method of Montgomery entails administration of an oxidizing compound along with actinic radiation having a wavelength between 400 nm and 500 nm, as of Montgomery, page 11, right column, relevant text reproduced in the obviousness rejection above. The oxidizing compound may be a peroxide, as of Montgomery, paragraph 0037. Montgomery teaches applying light for a period of time of 10 minutes to 90 minutes, as of Montgomery, paragraph 0048, with off times of about 1 to 10 minutes, also taught by paragraph 0048 of Montgomery. A case wherein the “off” time is at least 50% of the “on” time would appear to overlap with these teachings (e.g. off time for 10 minutes, on time for 11 minutes). While the prior art does not disclose the exact claimed values, but does overlap: in such instances even a slight overlap in range establishes a prima facie case of obviousness. See MPEP 2144.05(I).
It would have been prima facie obvious for one of ordinary skill in the art to have combined the method of applying light of Montgomery to a method of using the copending claims. The copending claims are drawn to a composition comprising a jammed emulsion; however, this composition is used for bleaching teeth, as of conflicting claim 6. The method of light application of Montgomery is useful for bleaching teeth. As such, the skilled artisan would have been motivated to have combined the method of Montgomery with a method of using the composition of the conflicting claims in order to have predictably bleached teeth with a reasonable expectation of success. Combining prior art elements (e.g. the composition of the copending claims and the method of Montgomery) according to known methods to yield predictable results (bleaching/whitening teeth) is prima facie obvious. See MPEP 2143, Exemplary Rationale A.
Neither the copending claims nor Montgomery teach the required yield stress.
Pal is drawn to yield stress of high internal phase emulsions, as of Pal, page 583, title and abstract. The yield stress measured in Pal, page 585, figure 2 appears to be in the range of 10-30 Pascals. See the relevant figure reproduced in the obviousness rejection above.
It would have been prima facie obvious for one of ordinary skill in the art to have modified the jammed oil in water emulsion of the copending claims to have had a yield stress in the range taught by Pal. The copending claims are drawn to a jammed oil in water emulsion, which is a type of high internal phase emulsion. Pal teaches that a value of about 10-30 Pascals is a known yield stress value for a high internal phase emulsion. As such, the skilled artisan would have been motivated to have modified the yield stress of the high internal phase jammed emulsion of the copending claims to have been in the range taught by Pal for predictable suitability in forming a high internal phase emulsion with a reasonable expectation of success.
In the alternative, the skilled artisan would have understood that the value of yield stress taught by Pal is the value known for high internal phase emulsions. As the jammed emulsion of the copending claims is a high internal phase emulsion, the skilled artisan would have expected that the jammed emulsion of the copending claims would have had a yield stress within the 2-500 Pascal range required by the instant claims even though this property was not actually recited by the copending claims. Something which is old (e.g. the composition of the copending claims) does not become patentable on the discovery of a new property (e.g. the yield stress), and this feature need not have been recognized at the time of the invention. See MPEP 2112(I & II).
This is a provisional nonstatutory double patenting rejection.
Conclusion
No claim is allowed.
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ISAAC . SHOMER
Primary Examiner
Art Unit 1612
/ISAAC SHOMER/ Primary Examiner, Art Unit 1612
Prosecution Insights