DETAILED ACTION
Summary
This is a non-final rejection for application 18,938,820. The amendment in the RCE dated 5 January 2026 is acknowledged. Claims 21-26 and 28-41 are pending. Claims 38-40 are withdrawn from consideration.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office 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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 5 January 2026 has been entered.
Terminal Disclaimer
The terminal disclaimer filed on 5 January 2026 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of US Patent No. 12,102,499 has been reviewed and is accepted. The terminal disclaimer has been recorded.
Double Patenting
Claims 21-25, 29-32, 34 and 41 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over Claim 1 and 64 of copending Application No. 16/465,346 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the copending claims contain all of the limitations of the instant claims. The mappings between the instant claims and the copending claims are as follows:
Regarding Claim 21, Copending Claim 1 recites a dental composition comprising an encapsulated material comprising a core comprising Portland cement and a shell comprising a metal oxide wherein the shell degrades, dissolves or decomposes upon contact with water or an acidic component. The instant claim recites the same limitations with the exception of a basic compound or material characterized by a pKa of 8-14 and a source of calcium ions derived from the basic compound or material which is selected from tricalcium silicate, dicalcium silicate, calcium silicate, tricalcium aluminate, tetracalcium aluminoferrite, and combinations thereof, while copending Claim 1 recites that the core contains Portland cement. Here the specification of the current invention is used as evidence to disclose that the Portland cement recited by the copending claim inherently has major components of tricalcium silicate, dicalcium silicate, tricalcium aluminate and tetracalcium aluminoferrite (cur spec: p. 49, lines 27-31) and has a pKa of 8-14 (cur spec: p. 13, lines 7-9).
Copending Claim 64 adds a limitation to Copending Claim 1 that the average core-and-shell particle size is from 5-50 µm with an average shell thickness of 5-25 nm. This calculates to an average core particle size of 4.975-49.995 µm which largely overlaps the at least 5 µm which is recited by instant claim 21. It would be obvious to modify the copending claim to include amounts recited by the copending claim that are also within the range recited by the instant claim. That is, the size limitation in the copending claim is an obvious modification of the size limitation of the instant claim due to overlapping ranges. It is well settled that where the prior art describes the components of a claimed compound or compositions in concentrations within or overlapping the claimed concentrations a prima facie case of obviousness is established. See In re Harris, 409 F.3d 1339, 1343, 74 USPQ2d 1951, 1953 (Fed. Cir 2005); In re Peterson, 315 F.3d 1325, 1329, 65 USPQ 2d 1379, 1382 (Fed. Cir. 1997); In re Woodruff, 919 F.2d 1575, 1578 16 USPQ2d 1934, 1936-37 (CCPA 1990); In re Malagari, 499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974). For more discussion see MPEP 2144.05-I.
Regarding Claim 22, Copending Claim 64 recites a maximum particle size of 50 µm which is narrower than the up to 1 mm limitation that Instant Claim 22 adds to Instant Claim 21.
Regarding Claim 23, Copending Claim 64 already recites an average shell thickness of 5-25 nm which satisfies the shell-thickness limitation that Instant Claim 23 adds to Instant Claim 21.
Regarding Claim 24, Copending Claim 64 recites that the metal oxide comprising aluminum oxide. The copending claims do not recite the pKa of aluminum oxide, but it is presumed to be within the recited range because it is the same shell used in the instant examples (cur spec: p. 53, line 27; Table 6).
Regarding Claim 25, Copending Claim 1 recites that the core material comprises Portland cement. Instant Claim 25 adds the limitation to Instant Claim 21 that the basic core material is calcium silicate. Here, the specification of the current invention is used as evidence to disclose that the Portland cement recited by the copending claim inherently contains tricalcium silicate, dicalcium silicate, and other components (cur spec: p. 49, lines 27-31).
Regarding Claim 29, Copending Claim 1 recites that the core material comprises Portland cement. Instant Claim 29 adds the limitation to Instant Claim 21 that the basic core material is comprises an oxide or hydroxide of Na, K, Ca, Sr or Ba. Here the specification of the current invention is used as evidence to disclose that the Portland cement recited by the copending claim inherently contains calcium oxide (cur spec: p. 49, lines 27-35).
Regarding Claim 30, Instant Claim 30 adds a limitation to instant Claim 1 that the dental composition is a capping composition. This is an intended use. Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045). The composition recited by the copending claims would be suitable for the intended use of a capping composition.
Regarding Claim 31, Copending Claim 1 already contains the Portland cement limitation that Instant Claim 31 adds to Instant Claim 21.
Regarding Claim 32, Copending Claim 64 already contains the aluminum oxide limitation that Instant Claim 32 adds to Instant Claim 21.
Regarding Claim 34, Copending Claim 1 already contains the Portland cement and aluminum oxide limitations that instant Claim 34 adds to Instant Claim 21. Copending Claim 64 already recites the core-plus-shell average maximum particle size and shell-thickness limitations that Instant Claim 34 adds to Instant Claim 21.
Regarding Claim 41, Copending Claim 1 recites a dental composition comprising an encapsulated material comprising a core comprising Portland cement and a shell comprising a metal oxide wherein the shell degrades, dissolves or decomposes upon contact with water or an acidic component. These match the recitation of instant Claim 41.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 26, 33 and 35-37 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over Claims 17, 22-23, 28 and 65 of copending Application No. 16/465,346 (reference application) in view of WANG (US-20120295214-A1). Although the claims at issue are not identical, they are not patentably distinct from each other because the copending claims contain all of the limitations of the instant claims in view of WANG. The mappings between the instant claims and the copending claims are as follows:
Regarding the limitations of Claim 21, Claim 21 is rejected above using copending Claim 64 which is a dependent claim. Here, the limitations of Claim 21 are rejected using the independent Copending Claim 1 in view of WANG for the purpose of rejecting more of claims below. Copending Claim 1 recites a dental composition comprising an encapsulated material comprising a core comprising Portland cement and a shell comprising a metal oxide wherein the shell degrades, dissolves or decomposes upon contact with water or an acidic component. The instant claim recites the same limitations with the exception of a basic compound or material characterized by a pKa of 8-14 and a source of calcium ions derived from the basic compound or material which is selected from tricalcium silicate, dicalcium silicate, calcium silicate, tricalcium aluminate, tetracalcium aluminoferrite, and combinations thereof, while copending Claim 1 recites that the core contains Portland cement. Here the specification of the current invention is used as evidence to disclose that the Portland cement recited by the copending claim inherently has major components of tricalcium silicate, dicalcium silicate, tricalcium aluminate and tetracalcium aluminoferrite (cur spec: p. 49, lines 27-31) and has a pKa of 8-14 (cur spec: p. 13, lines 7-9).
Copending Claim 1 does not recite a that the core is characterized by an average particle size of at least 5 µm. WANG, in an invention of a dental composition (Abstract) containing acid-reactive filler ([0040]) which is a mixture of fine particles and coarse particles ([0069]) where the coarse particles between 2-30 microns ([0069]) which overlaps the instant recitation of at least 5 microns. WANG teaches that this particle size mixture allows the viscosity to the be controlled for low extrusion force and good mixing ([0069]). A particle size of at least 5 microns is an obvious modification of Issued Claim 1 based on the teachings of WANG. It is well settled that where the prior art describes the components of a claimed compound or compositions in concentrations within or overlapping the claimed concentrations a prima facie case of obviousness is established. See In re Harris, 409 F.3d 1339, 1343, 74 USPQ2d 1951, 1953 (Fed. Cir 2005); In re Peterson, 315 F.3d 1325, 1329, 65 USPQ 2d 1379, 1382 (Fed. Cir. 1997); In re Woodruff, 919 F.2d 1575, 1578 16 USPQ2d 1934, 1936-37 (CCPA 1990); In re Malagari, 499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974). For more discussion see MPEP 2144.05-I.
Regarding Claim 26, Copending Claim 17 adds a limitation to Copending Claim 1 that the core further comprises a source of phosphorus ions, fluoride ions, or a combination thereof. This is the same limitation that instant Claim 26 adds to instant Claim 21. Regarding Claim 33, Copending Claim 65 adds the same acid-reactive filler limitation to Copending Claim 1 that Instant Claim 33 adds to Instant Claim 21.
Regarding Claim 35, Copending Claim 22 adds the same three filler limitations to Copending Claim 1 that Instant Claim 35 adds to Instant Claim 21. Any one of these would be enough to satisfy the claim.
Regarding Claim 36, Instant Claim 36 modifies an optional component of instant Claim 35. Because copending Claim 22 is used to reject Instant Claim 35 without using the polymerizable liquid component, then it automatically rejects instant Claim 36 as well.
Also, note that Copending Claim 22 recites a polymerizable material, not a liquid as is recited by Instant Claim 35, but Copending Claim 23 recites that the polymerizable material comprises a hydroxy functional (meth)acrylate monomer which is the same component recited by instant Claim 36. It can be presumed that the hydroxy functional (meth)acrylate monomer recited by Copending Claim 36 is a liquid as it is the same compound recited by Instant Claim 35.
Regarding Claim 37, Copending Claim 28 recites a kit comprising the dental composition of Copending Claim 22 and a water or acidic component. Instant Claim 37 recites a kit comprising the dental composition of instant Claim 35 in a first part and water or an acidic component in a second part. The Copending claims do not recite the kit as a being in two parts. WANG teaches a kit in two parts ([0037]) where the acid-reactive filler is in one part ([0040]) and a polyacid component and water are in the second part ([0042]). WANG teaches that its when its two parts are mixed, the mixture hardens ([0066]) and that its polyacid component undergoes a setting reaction in the presence of reactive filler and water ([0084]). It would be obvious to modify the kit recited by copending Claim 28 with the teachings of WANG and separate kit recited by Instant Claim 37 so that the acid-reactive filler of Instant Claim 35 and the acidic component are in separate parts for the purpose of controlling the setting reaction between the two components that occurs when the two parts are mixed.
Claims 21 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over Claim 26 of copending Application No. 18/820,899 (reference application) in view of WANG (US-20120295214-A1). Although the claims at issue are not identical, they are not patentably distinct from each other because the copending claims contain all of the limitations of the instant claims in view of WANG. The mappings between the instant claims and the copending claims are as follows:
Regarding Claim 21, Copending Claim 24 recites an encapsulated material comprising a core with a basic material having a pKa of 8-14 and a source of calcium ions and a shell comprising a metal oxide wherein the shell surrounds the core, and wherein the shell degrades or composes upon contact with water or an acidic component. Copending Claim 26 adds a limitation to Copending Claim 24 where the core comprises tricalcium silicate, dicalcium silicate, calcium silicate, tricalcium aluminate, tetracalcium aluminoferrite, or a combination thereof. This matches the recitation of instant Claim 21. The copending claims do not recite that the encapsulated material is a dental material as is recited by instant Claim 21. This is an intended use. Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045). It is presumed that the encapsulated material recited in the copending claim would be suitable for the intended use of a dental material.
The copending claims do no recite that the core is characterized by an average particle size of at least 5 µm. WANG, in an invention of a dental composition (Abstract) containing acid-reactive filler ([0040]) which is a mixture of fine particles and coarse particles ([0069]) where the coarse particles between 2-30 microns ([0069]) which overlaps the instant recitation of at least 5 microns. WANG teaches that this particle size mixture allows the viscosity to the be controlled for low extrusion force and good mixing ([0069]). A particle size of at least 5 microns is an obvious modification of Issued Claim 1 based on the teachings of WANG. It is well settled that where the prior art describes the components of a claimed compound or compositions in concentrations within or overlapping the claimed concentrations a prima facie case of obviousness is established. See In re Harris, 409 F.3d 1339, 1343, 74 USPQ2d 1951, 1953 (Fed. Cir 2005); In re Peterson, 315 F.3d 1325, 1329, 65 USPQ 2d 1379, 1382 (Fed. Cir. 1997); In re Woodruff, 919 F.2d 1575, 1578 16 USPQ2d 1934, 1936-37 (CCPA 1990); In re Malagari, 499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974). For more discussion see MPEP 2144.05-I.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Allowable Subject Matter
Claims 21-26, 29-37 and 41 are only rejected under Double Patenting and would be allowable if those issues were resolved.
Claims 28 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The amendment to Claim 21 includes limitations from the previous Claim 27 which had been deemed allowable in a previous office action. Claim 21 and its dependents are allowable for the same reasons set forth in the final action dated 31 October 2025.
WEIMER (US-20040224087-A1), cited in a previous office action, teaches dental filler particles of up to 350 nm in size with a calcium oxide core where the coating can be an oxide of silicon, zirconium or titanium, but WEIMER does not teach that its particles have a core of Portland cement as is recited by Claim 41. TORABINEJAD (US-5415547-A), teaches the use of Portland cement in dental filler compositions, but TORABINEJAD does not teach an metal oxide shell which degrades, dissolves or decomposes upon contact with an acidic component as is recited by Claim 41. There is not sufficient evidence that one would be motivated to combine the teachings of WEIMER with the teachings of TORABINEJAD to arrive at the composition of Claim 41.
Response to Arguments
Applicant's arguments filed 5 January 2026 have been fully considered but they are not persuasive.
The amendment to Claim 34 has overcome the 112(d) rejection set forth in the previous office action. This rejection has been withdrawn.
The terminal disclaimed filed disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of US Patent No. 12,102,499 has overcome the Double Patenting rejection over claims from this patent which were set forth in the previous office action. These specific Double Patenting rejections have been withdrawn.
Applicant argues that the Double Patenting rejection over US Pat. App. 16/465,346 should be withdrawn since Claim 64 requires the core and shell to be at least 5 µm and the present Claim 21 requires the core to be at least 5 µm. In response, Copending Claim 64 (which incorporates the limitation of copending Claim 1) recites an average core-and-shell particle size is from 5-50 µm with an average shell thickness of 5-25 nm. This calculates to an average core particle size of 4.975-49.995 µm which largely overlaps the at least 5 µm which is recited by instant claim 21. The size limitation in the copending claim is an obvious modification of the size limitation of the instant claim due to overlapping ranges. It would be obvious to modify the copending claim to include amounts recited by the copending claim that are also within the range recited by the instant claim. That is, the size limitation in the copending claim is an obvious modification of the size limitation of the instant claim due to overlapping ranges.
New grounds of rejection under non-statutory obviousness double patenting have been added over US Pat. App. 16/465,346 in view of WANG and over US Pat. App. 18/820,899 in view of WANG.
Conclusion
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/D.R.F./Examiner, Art Unit 1764
/KREGG T BROOKS/Primary Examiner, Art Unit 1764