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 .
Response to Arguments
Applicant's arguments filed 01/27/2026 have been fully considered but they are not persuasive. Applicant primarily argues Hauptman does not teach the range of undissolved yttria, fy, in the blank and that the range of fy gives unexpected results.
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). Ito et al. (WO 2018056330 A1), herein Ito. Is used to teach the motivation to modify Hauptman to meet the fy limitation. As Ito teaches the range and its benefits, the arguments of unexpected results are unpersuasive.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Hauptmann et al. (US 20200405586 A1), herein Hauptmann, in view of Ito et al. (WO 2018056330 A1) (previously presented), herein Ito.
US A1US .
US 20200317581 A1 is used as the English equivalent of WO 2018056330 A1. The citations herein refer to US 20200317581 A1 for Ito.
In regards to claim 8, Hauptmann teaches a pre-sintered dental zirconia restoration [Abstract, 0058, claim 9]. The zirconia comprises 3, 4 or 5 mol% yttria [0274]. The thickness of the blank may be 1 mm or 10 mm or more up to 20 mm [0033, 0178, 0293, claim 9]. The pre-sintered blank has a density of 2.8 g/cm3 to 3.5 g/cm3 [0132]. This overlaps the claimed range.
Hauptman does not teach the fy.
Ito teaches pre-sintered zirconia body which further comprises a stabilizer capable of suppressing phase transition of the zirconia [0012, claim 14]. Ito further teaches the stabilizer is yttria [0003, 0036, claim 18]. The yttria is present at 3 to 7.5 mol% [0037]. Ito teaches the fy is 1 % or more [0039, claim 21].
Ito teaches fy is 1 % or more to help in maintaining the translucency of the sintered body [0010, 0039, claim 21].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have ensured the pre-sintered body of Hauptmann has an fy of 1% or more as taught by Ito. One would have been motivated to do so as Ito teaches it helps maintain translucency in the sintered body. Further as Ito teaches this is a conventionally known range, one would have had a reasonable expectation of success.
Although Hauptmann does not explicitly teach “firing for 30 minutes” as presently claimed, it is noted that the present claims are drawn to a product and not drawn to a method of making. Thus, “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process”, In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). Further, “although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product’, In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir.1983). See MPEP 2113.
Additionally, as modified Hauptmann teaches a substantially similar composition of zirconia blank with the fy in the claimed range as well as the density, it is expected that the resultant translucency ratios are expected to be met, see In re Best [0132, 0174, 0428].
As stated in In re Best, 562 F.2d 1252, 1255 (CCPA 1977): Where, as here, the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product. [citation omitted] Whether the rejection is based on "inherency" under 35 U.S.C. § 102, on “prima facie obviousness” under 35 U.S.C. § 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO’s inability to manufacture products or to obtain and compare prior art.
As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ELIZABETH A COLLISTER whose telephone number is (571)270-1019. The examiner can normally be reached Mon.-Fri. 9 am-5 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Humera Sheikh can be reached at 571-272-0604. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ELIZABETH COLLISTER/Primary Examiner, Art Unit 1784
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