DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Objections
Claim 11 is objected to because of the following informalities: Claim 11 recites “-☐b*” which appears to mean “-Δb*”. Appropriate correction is required.
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 1-13 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 17-20 of U.S. Patent No. 11,938,206 and claims 18-20 of U.S. Patent No. 12,337,044. Although the claims at issue are not identical, they are not patentably distinct from each other because the difference between claims of the application and claims of the patent lies in the fact that the patent claim includes many more elements and is thus much more specific. Thus the invention of the patent is in effect a “species” of the “generic” invention of the application. It has been held that the generic invention is “anticipated” by the “species”. See In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993). Since the claims are anticipated by the claims of the patent, it is not patentably distinct.
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 1-13 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 1 recites the limitation "the first period of time" and “the second period of time”. Claim 11 recites “the bleaching efficacy”. There is insufficient antecedent basis for this limitation in the claim.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1-13 are rejected under 35 U.S.C. 103 as being unpatentable over Romano et al. (US 2007/0280894) in view of Gottenbos (WO 2013/093743).
Romano shows a method for whitening teeth comprising applying a multi-phase oral composition comprising from about 0.9% to about 60% by weight of the multi-phase oral composition of an aqueous phase that includes a bleaching agent ([0008], [0009], [0023]); about 40% to about 99.1% by weight of the composition of a hydrophobic phase ([0010]); wherein the multi-phase oral composition is a water-in oil emulsion (oil and aqueous); wherein the concentration of the bleaching agent is up to about 0.1% by weight of the multi-phase oral composition ([0032], overlapping ranges); wherein the hydrophobic phase is a predominant portion of the multi-phase oral composition ([0001]). With respect to claims 6-8 and 11, Romano would be expected to have the same test results since the composition is the same as that claimed. With respect to claim 9, wherein the bleaching agent comprises hydrogen peroxide ([0033] for instance). With respect to claim 10, wherein the hydrophobic phase comprises mineral oil thickened with wax, mineral oil thickened with polyethylene, petrolatum or a combination of these ([0035]-[0036]). With respect to claims 12-13, wherein the multi-phase oral composition is applied to the surface of at least one tooth with a delivery carrier such as a strip or a tray (“strip of material”).
However, Romano fails to show utilizing an electromagnetic radiation source with wavelengths from about 200 nm to about 1700 nm toward a tooth.
Gottenbos similarly teaches a method of bleaching composition included with an electromagnetic radiation source with wavelengths from about 200 nm to about 1700 nm directing toward a tooth (page 12, line 28 - page 13, line 15). With respect to claim 2, wherein the multi-phase oral composition remains on the surface of the at least one tooth for a first period of time before the EMR is directed onto the surface of the tooth (period of time between applying the composition and then directing light onto the composition), and the EMR is directed onto the surface of the tooth for a second period of time (a period of time during EMR application), wherein the first period of time is longer than the second period of time (the time during EMR application can be split up into any number of arbitrary periods of time; that total time of EMR exposure could be broken into a brief second period shorter than the first). With respect to claim 3, wherein the first period of time ranges from about 10 minutes to about 60 minutes, and the second period of time ranges from about 1 minute to about 10 minutes (Romano [0059] discusses a 30 minute total application time for instance and Gottenbos page 12 discusses 30 minutes for instance, which allows for these allocation of time periods). With respect to claim 4, wherein the EMR source emits electromagnetic radiation having a wavelength of about 400 nm to about 500 nm (page 12, line 28 - page 13, line 15).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify Romano's method by including the application of electromagnetic radiation as taught by Gottenbos in order to accelerate the whitening treatment. Gottenbos appears to be silent regarding the energy between about 175 mW/cm2 to about 225 mW/cm2, however the Office takes official notice that this is a well known range in the dental whitening art.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MATTHEW NELSON whose telephone number is (571)270-5898. The examiner can normally be reached on Monday-Friday 7:30am-5:00pm EDT.
If attempts to reach the examiner by telephone are unsuccessful, please contact the examiner’s supervisor, Eric Rosen, at (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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/MATTHEW M NELSON/Primary Examiner, Art Unit 3772
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