DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Election/Restrictions
2. Applicant’s election without traverse of Group I, claims 1-10 and 18, in the reply filed on 06/04/2026 is acknowledged.
Claims 19-27 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention(s), there being no allowable generic or linking claim.
Claim Rejections - 35 USC § 112
3. 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.
4. Claims 8, 10, and 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.
Claim 8 contains the trademark(s)/trade name(s) “Laponite® RD (LRD); Laponite® XLS (XLS)”. Claim 10 contains the trademark/trade name “Avecil pH-10”. Where a trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph. See Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982). The claim scope is uncertain since the trademark or trade name cannot be used properly to identify any particular material or product. A trademark or trade name is used to identify a source of goods, and not the goods themselves. Thus, a trademark or trade name does not identify or describe the goods associated with the trademark or trade name. In the present case, the trademark(s)/trade name(s) is used to identify/describe materials (i.e. the inorganic component in claim 8, and the polymer in claim 10); accordingly, the identification/description is indefinite.
Claim 18 recites “a gum or a soft tissue” which has already been recited in the base claim 1 “a gum or soft tissue in a mouth” (line 10). It is unclear whether “a gum or a soft tissue” in claim 18 is the same as, different from, or part of “a gum or soft tissue in a mouth” in claim 1.
Claim Rejections - 35 USC § 103
5. 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.
6. Claims 1-8 are rejected under 35 U.S.C. 103 as being unpatentable over Schmidt et al. (US 20200032121) and Randklev (US 4,906,185).
Regarding claim 1, Randklev discloses applying an adhesive to a first substrate being a tooth surface, applying a second substrate being a bracket to the first substrate/tooth surface, allowing the adhesive to cure and fix the second substrate/bracket to the first substrate/tooth surface, whereupon the second substrate/bracket is bonded to the first substrate/tooth surface (abstract; column 6 lines 32-36 “small quantity of adhesive is then applied as a layer to the prepared tooth surface, followed by placement of the bracket. The adhesive is then cured”).
However, Randklev does not disclose the adhesive comprising zein and tannic acid as claimed. Schmidt et al. discloses an adhesive comprising a zein and a tannic acid (¶0008], ¶0018], ¶0024], ¶0027], ¶0028]; abstract “adhesive compositions made from… tannic acid in a zein matrix”). Schmidt et al. discloses such zein-tannic acid adhesive retains substantial bond strength after prolonged exposure to water (¶0062] “the adhesive still holds after being 24 hours under water”), and that body-temperature curing allows for biomedical uses (¶0057] “curing temperatures around 37° C would be desirable for biomedical uses including surgeries and wound healing”), solving the need for an adhesive for medical applications inside the human body (¶0004]). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to utilize Schmidt’s zein-tannic adhesive in Randlev’s orthodontic procedure to bond a bracket to the tooth surface with reasonable expectation of success given Schmidt’s demonstrated wet and body-temperature-compatible performance.
As to claims 2-4, Randklev discloses the dental material being an orthodontic appliance (i.e. a bracket), or a dental restorative (column 9 lines 20-24 “dental restorative resin, acrylic teeth, and denture bases”).
As to claims 5-8, it is well known for an adhesive composition comprising a filler. Randklev discloses an adhesive comprising a filler of inorganic component such as ZnO (see Randklev column 4 lines 4-10 “the first inorganic material… the filler used in the adhesive, TABLE 1 lists Montmorillonite, ZnO, etc.), or a polymeric binder (column 7 lines 16-25 “binder… epoxy, polyester”). It would have been obvious to add to Schmidt’s zein-tannic acid adhesive a filler of inorganic component, or polymeric binder as taught Randklev in order to effectively increase the volume (filler) of the adhesive.
7. Claims 9-10 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Randklev and Schmidt et al., and further in view of Kovarik (US 2015/0290026).
Randklev/Schmidt discloses the adhesive substantially as claimed according to claims 1 and 6 as detailed above. However, per claims 9-10, Randklev/Schmidt fails to disclose the polymer filler comprising a protein or a polysaccharide; and per claim 18, Randklev/Schmidt fails to disclose using the adhesive on the gum or soft tissue in the mouth. Kovarik discloses an adhesive strip adhering to the soft tissue in the mouth (¶0038] “polymer… film that may be prepared from a hydroxypropyl cellulose… When applied to the wet surface of the mucosa… preferably show excellent adhesion”), wherein the adhesive strip includes filler/carrier polymer material of gelatin or polysaccharide (¶0047] “a carrier or base material of the strip may comprise… bovine or marine gelatin or vegetal gelatin-like product, a polysaccharide”). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to include into Schmidt’s adhesive such gelatin or polysaccharide as taught by Kovarik to be suitable filler/carrier polymer material for such intraoral adhesive with reasonable expectable of success. Furthermore, it would also have been obvious to use the adhesive on a soft tissue in the mouth as shown by Kovarik, should a medical or dental need arise, e.g. bonding orthodontic palatal expander to the palate.
Conclusion
8. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Examiner HAO D. MAI whose telephone number is (571)270-3002. The examiner can normally be reached on Mon-Fri 8:00-4:30. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Eric Rosen can be reached on (571) 270-7855. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Hao D Mai/
Examiner, Art Unit 3772
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