Ex Parte Hecht et al

Board of Patent Appeals and Interferences

Aug 31, 2011

11220004 (B.P.A.I. Aug. 31, 2011)

UNITED STATES PATENT AND TRADEMARKOFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/220,004 09/06/2005 Reinhold Hecht 400.0011 0102 3264
26813 7590 09/01/2011
MUETING, RAASCH & GEBHARDT, P.A.
P.O. BOX 581336
MINNEAPOLIS, MN 55458-1336
EXAMINER
PEPITONE, MICHAEL F
ART UNIT PAPER NUMBER
1767
MAIL DATE DELIVERY MODE
09/01/2011 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte REINHOLD HECHT, MANFRED LUDSTECK,
THOMAS LUCHTERHANDT, and MARKUS MIKULLA
____________________

Appeal 2010-002382
Application 11/220,004
Technology Center 1700
____________________

Before ADRIENE LEPIANE HANLON, CATHERINE Q. TIMM, and
MARK NAGUMO, Administrative Patent Judges.

TIMM, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-002382
Application 11/220,004

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STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
rejection of claims 1-6, 8-36, and 38-45. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.
The claims are directed to self-adhesive dental materials, a method of
producing the self-adhesive dental materials, and a method of treating a hard
tooth surface using the self-adhesive dental materials (see, e.g., Claims 1, 10,
36, 38, and 41). Claims 1 and 38, reproduced below, are illustrative of the
claimed self-adhesive dental material:
1. A self-adhesive dental material comprising:

(A) from 5 to 75% by weight of one or more mono- or
polyfunctional ethylenically unsaturated compounds
which additionally possess at least one acid-functional
group, at least one of the compounds containing at least
one P-OH group,
(B) from 2 to 50% by weight of one or more mono- or
polyfunctional ethylenically unsaturated compounds without
an acid-functional group,
(C) from 22.8 to 85% by weight of filler(s), including at least one
filler capable of reacting with component (A) in an ion
exchange, neutralization, acid-forming and/or chelate-forming
reaction,
(D) from 0.1 to 8% by weight of one or more initiators and, if
desired, activators,
(E) from 0.1 to 20% by weight of additional additives and/or
modifiers,
the weight ratio in % of component (A) to component (B) being
in the range from 21 to 90:10 to 79, and
with the proviso that the self-adhesive dental composition
does not comprise added water.
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38. A self-adhesive dental material comprising:
(A) from 5 to 75% by weight of one or more mono- or
polyfunctional ethylenically unsaturated compounds
which additionally possess at least one acid-functional
group, at least one of the compounds containing at least
one P-OH group,
(B) from 2 to 50% by weight of one or more mono- or
polyfunctional ethylenically unsaturated compounds
without an acid-functional group,
(C) from 22.8 to 85% by weight of filler(s), including at
least one basic glass powder having a high fraction of
divalent and trivalent ions,
(D) from 0.1 to 8% by weight of one or more initiators and,
if desired, activators, and
(E) from 0.1 to 20% by weight of additional additives and/or
modifiers,
the weight ratio in % of component (A) to component (B)
being in the range from 21 to 90:10 to 79, and
with the proviso that the self-adhesive dental composition
does not comprise added water.

The Examiner maintains, and Appellants appeal, the following
rejections:
1. The rejection of claims 1-6, 8-27, 29-31, 34-35, 38-40, and 41-45
as unpatentable under 35 U.S.C. § 103(a) over Roberts et al. (US
5,883,153; issued Mar. 16, 1999) in view of Omura et al. (US
4,539,382; issued Sep. 3, 1985) (Ans. 4-7 and 10-11);
Appeal 2010-002382
Application 11/220,004

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2. The rejection of claim 28 under 35 U.S.C. § 103(a) over Roberts in
view of Omura, and further in view of Schmitt et al. (US
4,544,742; issued Oct. 1, 1985) (Ans. 7-8);
3. The rejection of claims 32 and 33 under 35 U.S.C. § 103(a) over
Roberts in view of Omura, and further in view of Yamagishi et al.
(US 6,048,913; issued Apr. 11, 2000) (Ans. 8-9);
4. The rejection of claim 36 under 35 U.S.C. § 103(a) over Roberts in
view of Omura, in further view of Zeng et al. (US 5,670,559;
issued Sep. 23, 1997) (Ans. 9-10).
OPINION
For all the rejections, the Examiner relies upon Roberts as describing
a filler having the properties required by the claims.
For the claims requiring at least one filler capable of reacting with
component (A), e.g., claim 1, the Examiner finds that Roberts describes a
dental composition including a filler capable of reacting with an acid
component (Ans. 4 and 9, citing Roberts, col. 4, ll. 35-47). According to the
Examiner, the fact that Roberts reacts glass with a polyalkenoic acid to form
a glass ionomer is “a clear indication of a filler {alkaline earth metal
aluminofluorosilicate glass} capable of reacting with an acid component
(polyalkenoic acid).” (Ans. 12.)
However, as correctly pointed out by Appellants, Roberts’ alkaline
earth metal aluminofluorosilicate glass is a starting material for making pre-
formed glass ionomer fillers that are later mixed with a radical
polymerizable compound and curing agent to form a dental composition (Br.
7; Roberts, col. 3, ll. 18-22). The reaction of aluminofluorosilicate glass
with acid has already taken place before the glass ionomer filler is added to
Appeal 2010-002382
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the dental composition. The glass ionomer filler is an inert ingredient within
Roberts’ dental composition, it does not undergo a reaction. Moreover,
while there is no dispute that alkaline earth metal aluminofluorosilicate glass
is capable of reacting as claimed, the Examiner offers no convincing
evidence that the pre-formed glass ionomer filler of Roberts will contain
22.8 to 85 wt% of residual non-reacted alkaline earth metal
aluminofluorosilicate glass at the time the glass ionomer filler is added to the
dental composition, i.e., at the time the composition contains the other
claimed ingredients of the dental composition. As pointed out by
Appellants, Roberts desires that the acid/glass reaction proceed to
completion when forming the glass ionomer filler (Reply Br. 3). Therefore,
the Examiner has not established that Roberts teaches a dental composition
including the required filler capable of reacting with component (A) along
with the other ingredients required by the claims.
Claims 38-40 do not require that the filler be capable of reacting with
component (A). However, these claims require the filler include “at least
one basic glass powder having a high fraction of divalent and trivalent ions.”
In the rejection of these claims, the Examiner merely states that Roberts
teaches such a filler, and cites to column 4, lines 35-47. Column 4, lines 35-
47 merely recites the types of glasses that are useful for forming the pre-
formed ionomer filler. The Examiner offers no convincing evidence that the
pre-formed ionomer filler, once formed, includes a significant amount of
basic glass, i.e., a glass that can react with acidic components of the
composition. Therefore, the Examiner has not established that Roberts
teaches or suggests a dental composition having the ingredients required by
claims 38-40.
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CONCLUSION
The Examiner does not apply the additional prior art references in a
manner that cures the defects discussed above. Therefore, we do not sustain
any of the rejections.
DECISION
For the above reasons, the decision of the Examiner is reversed.

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