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 .
Non-Final Rejection
The Status of Claims:
Claims 1-17 are pending.
Claims 1-17 are rejected.
DETAILED ACTION
1. Claims 1-17 are under consideration in this Office Action.
Priority
2. It is noted that this application is a a 371 of PCT/JP2023/012013 03/24/2023 which has a foreign priority document ,JAPAN JP2022-050804 03/25/2022.
Drawings
3. None.
IDS
4. The IDS filed on 9/24/24 were is reviewed by the examiner.
Claim Objections
Claims 2-4 and 12 are objected to because of the following informalities:
In claims 2-4, the term” general” is recited. This expression can be confusing because the skilled artisan in the art is unable to figure out how general the formula can be for the claims. The examiner recommends to remove the term” general ‘from the claims. Appropriate correction is required.
In claim 12, the terms “ the polymerization accelerator (1)” is recited. The expression “(1)” can be confusing. The examiner recommends to remove the expression” (1)” ‘from the claim. Appropriate correction 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 1-17 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 pre-AIA the applicant regards as the invention.
In claims 1-8, 10, 12, 14-15 , the terms " ascorbic derivative ” is recited. This expression is vague and indefinite because the claims do not define what is meant by the derivative of the ascorbic acid. The examiner recommends to put the specific chemical formula or its chemical structure for the terms “ ascorbic acid derivative in the claims.
In claim 1-2, the phrases “ at least one of hydroxyl groups included in an ascorbic acid” and “ the ascorbic acid derivative includes a structure represented by the following general formula (A)” are recited. These expressions can be vague because the claims do not specify what is excluded from “the ascorbic acid derivative”.
Claim 3 recites the limitation " the following general formula (B) " in lines 2-4. There is insufficient antecedent basis for this limitation in the claim.
In claim 3, the phrase” a monovalent organic group” is recited. These expressions can be vague and indefinite because the claim does not define or elaborate what is meant by the “ monovalent organic group” for the formula (B).
In claim 15, the term” a monomer” is recited. This expression can be vague because the claim does not define what kind of “a monomer “ is used for the curable composition. Thee examiner recommends to put the specific name of the monmer in the claim.
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)(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.
Claim(s) 1-3, 5-7, 15-17 are rejected under 35 U.S.C. 102(aq)(2) as being anticipated clearly by Townsend et al (US 2018/0312613 A1).
Townsend et al discloses an ascorbic acid derivative and its curable and/or cured dental composition in the followings:
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(see page 20, example 1, p-AA )
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(see page 25, table 5)
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(see page 31, claims 1, 3, 8). These are identical with claims.
Claim Rejections - 35 USC § 103
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.
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
5. Claims 1, 4, and 7-14 are rejected under 35 U.S.C. 103 as being unpatentable over Townsend et al (US 2018/0312613 A1).
Applicant claims the followings:
1. (Original) An ascorbic acid derivative or a salt thereof, comprising a structure in which at least one of hydroxyl groups included in an ascorbic acid is substituted by an ether bond bonded to a carbon atom.
4. (Original) The ascorbic acid derivative or a salt thereof according to The ascorbic acid derivative or a salt thereof according to wherein one of R1B or R2B is a hydrogen atom, the other of R1Bor R2Bis a monovalent organic group having 1 to 15 carbon atoms in the general formula (B), and the ascorbic acid derivative is a cm salt.
7. (Currently Amended) A curable composition preparation kit, comprising:a first agent containing a monomer (A), and a second agent containing a monomer (B), wherein each of the ascorbic acid derivative or salt thereof according to any one of
8. (Original) The curable composition preparation kit according to claim 7, wherein:the first agent contains the transition metal compound, and the second agent contains the ascorbic acid derivative or salt thereof.
9. (Currently Amended) The curable composition preparation kit according to The curable composition preparation kit according to wherein one of the monomer (A) contained in the first agent or the monomer (B) contained in the second agent contains an acidic group-containing monomer.
10. (Original) The curable composition preparation kit according to claim 9, wherein:the monomer (A) contained in the first agent contains an acidic group-containing monomer, andthe second agent contains the ascorbic acid derivative or a salt thereof.
11. (Currently Amended) The curable composition preparation kit according to any one of claims 7 to 10 claim 7,wherein at least one of the first agent or the second agent contains at least one polymerization accelerator (1) selected from the group consisting of a phosphonite compound, a phosphite compound, and a sulfite compound.
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12. (Currently Amended) The curable composition preparation kit according to any one of claims 7 to 11 claim 7,wherein the second agent contains the ascorbic acid derivative or salt thereof and the polymerization accelerator (1).
13. (Currently Amended) The curable composition preparation kit according to any one of claims 7 to 12 claim 7,wherein the first agent and the second agent contain a filler.
14. (Currently Amended) The curable composition preparation kit according to any one of claims 7 to 13 claim 7,wherein a total content of the ascorbic acid derivative or salt thereof contained in the first agent and the second agent is from 0.1% by mass to 5% by mass with respect to a total amount of a curable composition to be prepared.
Determination of the scope and content of the prior art
Townsend et al discloses an ascorbic acid derivative and its curable and cured dental composition in the followings:
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as in claim 1 (see page 20, example 1, p-AA )
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As in claims 13-14 (see page 25, table 5)
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as in claims 7-14 (see page 31, claims 1, 3, 8).
The instant invention, however, differs from the prior art in that the claimed curable composition preparation kit and a variable R1B or R2B being either hydrogen or a methyl group are unspecified in the prior art.
Ascertainment of the difference between the prior art and the claims
The difference between the instant application and the applied Townsend et al art is that the Townsend et al does not expressly teach the claimed curable composition preparation kit and a variable R1B or R2B being either hydrogen or a methyl group
Resolving the level of ordinary skill in the pertinent art.
Regarding the instant Claims 8-14 with respect to the lack of disclosing the curable composition preparation kit, the prior art is silent about it. However, the term kit and a stamen of intended use is not given any patentable weight over the prior art, as claims are directed to a curable composition preparation kit and containers for various components of a kit were well recognized in the prior art.
Furthermore, USPTO personnel need not give patentable weight to printed matter absent a new and unobvious functional relationship between the printed matter and the substrate. See In re Lowry, 32 F.3d 1579, 1583-84, 32 USPQ2d 1031, 1035 (Fed. Cir. 1994).
Therefore, the prior art is still relevant to the claimed invention.
Regarding the instant Claim 4, with respect to the lack of disclosing the variable R1B or R2B being either hydrogen or a methyl group, the prior art does teach that both variables of R1B and R2B are a methyl group as shown in the following:
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(see page 20, example 1, p-AA ). The distinction between the prior art and the claimed compound is hydrogen vs. methyl moiety; it is well-established that the substitution of methyl for hydrogen or vice versa in a known compound is not a patentable modification absent unexpected or unobvious results. In re Wood, 582 F.2d 638, 199 U.S.P.Q. 137 (C.C.P.A. 1978); In re Hoke , 560 F. 2d 436, 195 U.S.P.Q. 148 (C.C.P.A. 1977). Furthermore, such a difference between the prior art and the claimed compound is a minor and can be expected to be prepared by the same method and to have generally the same or similar properties. This expectation is then deemed the motivation for preparing the hydrogen substituted compound instead. So, it would have been obvious to the skilled artisan in the art to be motivated to prepare the claimed compound as an alternative in the Townsend et al method. This is because the skilled artisan in the art would expect such a selection and manipulation to be successful and feasible as guidance shown in the prior art.
Considering objective evidence present in the application indicating obviousness or nonobviousness.
Townsend et al expressly discloses the ascorbic acid derivative and its curable and/or cured dental composition in the followings:
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(see page 20, example 1, p-AA )
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(see page 25, table 5)
Although the prior art does not teach that the variable R1B or R2B is either hydrogen or a methyl group, the distinction between the prior art and the claimed compound is hydrogen vs. methyl moiety; it is well-established that the substitution of methyl for hydrogen or vice versa in a known compound is not a patentable modification absent unexpected or unobvious results. In re Wood, 582 F.2d 638, 199 U.S.P.Q. 137 (C.C.P.A. 1978); In re Hoke , 560 F. 2d 436, 195 U.S.P.Q. 148 (C.C.P.A. 1977). Furthermore, such a difference between the prior art and the claimed compound is a minor and can be expected to be prepared by the same method and to have generally the same or similar properties. This expectation is then deemed the motivation for preparing the hydrogen substituted compound instead. So, it would have been obvious to the skilled artisan in the art before the effective filing date of the claimed invention to be motivated to prepare the claimed compound as an alternative in the Townsend et al method. This is because the skilled artisan in the art would expect such a selection and manipulation to be successful and feasible as guidance shown in the prior art.
Conclusion
Claims 1-17 are rejected.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TAYLOR V OH whose telephone number is (571)272-0689. The examiner can normally be reached on 8:00-5:00.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Andrew Kosar can be reached on 571-272-0913. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/TAYLOR V OH/Primary Examiner, Art Unit 1625 7/25/2026
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