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 Rejections - 35 USC § 103
2. 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.
3. Claims 1-2, 4-6, and 8-13, are rejected under 35 U.S.C.103 as being unpatentable over Gratz (6,267,595) in view of Sonoi et al. (2009/0068614) and
Starling (2008/0172951).
Regarding claim 1, Gratz discloses: a dental grinding instrument (Figs. 1-2) comprising a shaft 1/2/3 and a grinding area 1 disposed on the shaft 1/2/3 (Figs. 1-2).
The grinding area 1 (Fig. 2) is shown to include a bonding/nickel layer 4 fixed to the shaft 1/2/3 and grinding elements comprising abrasive grains 5 which are partially embedded in the bonding/nickel layer 4, and that the bonding/nickel layer 4 fixes the grinding elements to the shaft (Fig. 2; column 2 lines 5-10 “machining portion 1 is covered by a nickel layer 4. A plurality of diamond particles 5 are embedded in the nickel layer 4. The diamond particles… protrude from the nickel layer 4”; column 1 lines 15-16 “The nickel layer… bonds the diamond particles to the machining portion”).
Gratz discloses the grinding elements 5 comprising abrasive diamond grains 5 (column 2 lines 5-10), but fail to disclose that the grinding elements further comprises spheres that are hollow and made of ceramic material.
Sonoi discloses a dental grinding instrument comprising: a shaft 20 and a grinding area 10 disposed on the shaft 20 (Figs. 1a-1b); wherein the grinding area 10 includes binder 11, grains 12, and spheres 13 (Fig. 3; paragraphs 21-24). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify Gratz by including spheres along with the abrasive diamond grains in the grinding elements in order to achieve excellent polishability while reducing an amount of expensive diamond grains as explicitly taught by Sonoi (¶0019]-¶0020]).
Gratz/Sonoi fails to disclose the spheres being hollow and made of ceramic material. Starling discloses abrasive aggregates (Figs. 1-6; title; abstract), which are for dental applications (paragraphs [0005], [0054], [0070] “abrasive product… containing… aggregates… for finishing tooth and dental prosthetics”). Starling discloses the abrasive aggregates being hollow spheroids (paragraph [0051]) and made of ceramic material (paragraphs [0032], [0044], [0079]). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify Gratz/Sonoi by utilizing spheres that are hollow and made of ceramic material as taught by Starling to be alternative suitable abrasive materials for such dental application while yielding the same and/or predictable results.
Regarding the limitation(s) “the grinding area is free of an external coating such that outer surfaces of the grinding elements are directly exposed to an exterior of the dental grinding instrument”, note that such limitation(s) are well known. For example, both Sonoi (Fig. 2) and Starling (Figs. 1-6) show the griding area being free of a an external coating such that the embedded abrasive materials are exposed.
Furthermore, although Gratz teaches a coating layer 6 of chrominum nitride covering the grinding elements 5 (fig. 2; abstract), such coating layer is an improvement over the well known feature "free of an external coating" (see Gratz, abstract "diamond particles protruding... are covered by a layer of chrominum nitride. The duration of the tool is considerably increased by the chromium nitride layer"). That is, Gratz teaches it is well known the grinding area to be free of an external coating; Gratz added the external coating in order to improve the durability of the device. Therefore, it would have been obvious to manufacture the device without external coating so that the diamond particles protrude therefrom in order to lower manufacturing time and cost, e.g. for manufacturing of one-time use abrasive devices that durability is not a need.
Note that eliminating Gratz’ external coating layer would not defunct the device, that the device's abrasive area would still be operational to grind/polish as intended.
As to claims 2, 11-13, Gratz/Sonoi discloses the invention substantially as claimed according to claim 1 as detailed above, particularly Sonoi teaches that the grinding elements 12/13 comprising abrasive grains 12 and spheres 13. However, Sonoi fails to disclose the recited ranges of a proportion of the spheres in the grinding elements by volume. Nonetheless, note that Sonoi discloses “in the polishing portion of this embodiment, 50 to 200 parts by weight of polishing grains having a particle size of 1 to 6 µm and 50 to 150 parts by weight of spherical resin particles having a particle size of 10 to 100 µm are compounded relative to 100 parts by weight of the binder” (paragraph 44). As such, Sonoi effectively indicates that such proportion of the spheres in the grinding elements by volume is of optimizable variable. Therefore, such claimed ranges of proportion of the spheres in the grinding elements by volume as recited in claims 2 and 11-13 would have been obvious to one having ordinary skill in art at the time the invention was made since it has been held that discovering an optimum or workable ranges is well within the skill of an artisan via routine experimentation in order to improve upon what is already generally known. See MPEP §§ 2144.05.
As to claim 4, Starling the abrasive spheres being hollow particles having a wall thickness ranging about 0.08 to 0.4 times the average particles size of the aggregates (paragraph [0051]), which overlaps with the claimed range of 1/7 to 1/5 of the spheres’ diameter. Therefore, such claimed range would have been obvious to one having ordinary skill in art at the time the invention was made since it has been held that discovering an optimum or workable ranges is well within the skill of an artisan via routine experimentation in order to improve upon what is already generally known. See MPEP §§ 2144.05
As to claim 5, Gratz/Sonoi discloses the invention substantially as claimed according to claim 1 as detailed above, particularly Sonoi teaches that the grinding elements 12/13 comprising abrasive grains 12 and spheres 13. In the embodiment shown in Fig. 3, Sonoi discloses the first diameter of spheres 13 is smaller than a second average diameter of the abrasive grains 12 (see Fig. 3; paragraph [0045] ‘spherical resin particles much smaller than the polishing grains”; paragraph [0046] “Polishing grains having an average particle size of 10 to 20 µm and one or more types of resin particles having an average particle size of 0.5 to 10 µm which is smaller than that of the polishing grains, are combined to provide excellent polishability”. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to include grinding elements of spheres having a first diameter that is smaller than a second average diameter of the abrasive grains as explicitly taught by Sonoi to provide optimum abrasion for excellent polishability (paragraphs 45-46).
As to claim 6, Gratz discloses the abrasive grains 5 being diamond particles (Gratz: Fig. 2, column 2 lines 5-7). Note that Sonoi also discloses the abrasive grains 12 are diamond grains and/or carbide grains (Sonoi: paragraph 29 “as the polishing grains, diamond, boron nitride, aluminium oxide, silicon carbide may be used”).
As to claim 8, Gratz/Sonoi fails to disclose the spheres being made of ceramic material, particularly alumina or ziconium oxide, or mixed ceramic material of alumina and zirconia. Starling discloses the abrasive aggregates being hollow spheroids (paragraph [0051]) and made of ceramic material, particularly alumina or zirconia, or a mixed combination ceramic (paragraphs [0008], [0027]). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify Gratz/Sonoi by utilizing hollow spheres of alumina and/or zirconia ceramic material as taught by Starling to be alternative suitable abrasive materials for such dental application while yielding the same and/or predictable results.
As to claim 9, Gratz discloses the bonding layer 4 comprises nickel (Figs. 1-2; column 2 lines 5-10] “machining portion 1 is covered by a nickel layer 4. A plurality of diamond particles 5 are embedded in the nickel layer 4”; and [column 1 lines 15-16] “The nickel layer… bonds the diamond particles to the machining portion”).
As to claim 10, Sonoi discloses the spheres 13 are evenly distributed across a surface of the grinding area 10 (paragraph 24: “homogeneously kneading”). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify Gratz by evenly distributing the spheres along with abrasive diamond grains across a surface of the grinding area in order to achieve homogeneous and uniform grinding surface for optimum abrasion as taught by Sonoi.
Response to Arguments
4. Applicant’s arguments filed 01/30/2026 have been fully considered but are not found persuasive. Applicant’s arguments cited that grinding and polishing are different processes, that the claimed invention is directed to a dental grinding instrument whereas the cited references Sonoi and Starling are directed to polishing instruments, that “the Office has merely selectively picked elements from the different references that may appear to be related but which are , in fact, directed to very different instruments which the person of ordinary skill in the art would never combine for the purpose of a grinding instrument” (Applicant’s Remarks pages 5-8).
The Declaration of Inventor Michael Kullmer, filed on 01/30/2026, also include similar statements amounting to the same arguments as presented in Applicant’s Remarks, that grinding and polishing are different processes, that Sonoi and Starling are directed to polishing and therefore are nonanalogous to the invention which is directed to grinding.
In response, note that it has been held that a prior art reference must either be in the field of the inventor’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). In this case, both Sonoi and Starling are maintained to be within the field of the inventor’s endeavor, i.e. dental instruments using abrasive particles for the purpose abrading away microscopic materials off surface layer(s) of teeth or prostheses.
Regarding grinding versus polishing, it is maintained that grinding and polishing are fundamentally the same mechanism or process- i.e. controlled abrasion. Both grinding and polishing rely on abrasive particles for cutting microscopic chips from the surface of a substrate. Even similar abrasive particles, e.g. diamonds, are commonly used in both grinding and polishing tools. In fact, Applicant’s device uses diamonds as abrasive grains, same as Sonoi and Starling.
Furthermore, note that at least Sonoi is pertinent to the particular problem with which the inventor was concerned. That is, both Applicant and Sonoi includes the spheres in order to manufacturing costs (see Application ¶0001]-¶0004] “inexpensive manufacturability ”; Sonoi ¶0001] “reducing an amount of expensive diamond grains”).
In view of the foregoing, when all of the evidence is considered, the totality of the rebuttal evidence of nonobviousness fails to outweigh the evidence of obviousness.
Conclusion
5. THIS ACTION IS MADE FINAL. 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 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
/ERIC J ROSEN/Supervisory Patent Examiner, 3772
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