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 .
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.
Continued Examination Under 37 CFR 1.114
2. A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 06/13/2025 has been entered.
Claim Rejections - 35 USC § 112(b)
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 5-15-18 and 20 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 pre-AIA the applicant regards as the invention.
Claim 5 recites “an artificial tooth element” (line 2), “each of the artificial tooth elements comprises” (line 3, note that the subject is plural but the verb “comprises” indicate singular), and “each artificial tooth element” (line 6), which are confusing as to whether such element is singular or plural.
Claim 9 recites “the surface roughness” should be “the defined surface roughness” in order to be consistent and avoid issue of indefiniteness.
Claims 15-18 each recites “Ra” without a preceding definite article “the” or “said”, rendering the claims indefinite because it is unclear whether these recitations are the same or different from the limitation “Ra of >0 to 30 µm” previously defined in the base claim 1.
Other dependent claims rejected herein are based on dependency.
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 1-3 and 5-20 are rejected under 35 U.S.C.103 as being unpatentable over Sagolla et al. (2017/0367798) in view of Yeh et al. (2013/0216787).
Claims 1-3 and 15-19:
Regarding claims 1 and 15-18, Sagolla et al. discloses an artificial tooth element 4 for direct insertion into a cavity 2 of a prosthesis base 1 (Figs. 1-2). The artificial tooth element 4 (Fig. 2) comprises: an outer part 10 visible in the inserted state and an inner part (basal side 12) not visible in the inserted state (Figs. 1-2). The inner part 12 comprises a defined surface roughness at least in part. See paragraphs [0047]-[0050] emphasis added: “the basal surfaces of the prosthesis teeth are swelled… with a solvent… The abrading or roughing of the surface can be incurred by the solvent”. Also see paragraph [0084]: “at least the basal sides 12 of the prosthesis teeth 4 are cleaned and, to improve the connection with the connecting means 8, are abraded and swelled with a solvent”.
As to the specifically claimed ranges of average roughness value Ra as recited in claims 1 and 15-19, Sagolla et al. discloses the inner part/basal surface 12 having a roughness as detailed above, but fails to disclose an arithmetic average roughness value Ra of > 0 to 30 µm (as recited in claim 1), or Ra of >0 to 10 µm, about 0.5 to about 5 µm, about 1 to about 4 µm, and about 2 to 3 µm (as recited in claims 15-18).
Yeh et al. discloses an artificial tooth element 304 for direct insertion into a cavity of a prosthesis base 306 so that the artificial tooth element 304 is in an inserted state, comprising: an outer part visible (exterior surface 304) in the inserted state, and
an inner part 312/330 not visible in the inserted state, wherein the inner part 312/330 comprises an inner surface 320 having an arithmetic average roughness value Ra of >0 to 30 µm (Fig. 3; paragraph [0049] ”average surface roughness of the composite porous layer is … about 0.85-1.7 µm”; paragraph [0054] ”engagement surface 312 defining the insertion recess 330 is treated … to form a composite, porous layer 320”).
Note that the base ceramic body 304 with outer part’s outer surface 304 inherently has a surface roughness, i.e. smooth ceramic body. Yeh et al. teaches that only the inner part’s inner surface 312/330 is treated to increase the surface roughness 320 thereof (paragraph [0049]). Therefore, the increased surface roughness value of treated inner surface 320 is greater than the roughness value of the untreated outer surface 304.
Note that Yeh et al. discloses: “average surface roughness of the composite porous layer is … about 0.85-1.7 µm” (paragraph [0049]) which is within the recited ranges Ra of > 0 to 30 µm (as recited in claim 1), Ra of >0 to 10 µm, about 0.5 to about 5 µm, about 1 to about 4 µm, and about 2 to 3 µm (as recited in claims 15-18).
It would have been obvious to make increase the surface roughness of the inner surface and therefore making the roughness Ra of the inner surface greater than that of the outer surface as taught by Yeh et al. in order to increase the contact surface to achieve optimum bonding properties at the inner surface.
Furthermore, considering Yeh et al. indicating that such range of average roughness is of optimizable variables, such claimed ranges of roughness Ra (as recited in claims 1 and 15-18) and that the roughness Ra of inner surface being 50% greater than the Ra of the outer surface roughness (as recited in claim 19) 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 claims 2-3, Sagolla et al. discloses the inner part/basal surface 12 having the surface roughness across the entire basal surface 12 to bond to adhesive 8 (Figs. 2-3; paragraph [0050] “The abrading or roughing of the surface… effective surface area for connection to the connection means is enlarged and therefore the retention of the prosthesis teeth in the prosthesis base is improved).
Claims 5-14 and 20:
Regarding claims 5 and 20, Sagolla et al. discloses a prosthesis 1/4 with a prosthesis base 1 having a plurality of cavities 2, wherein in each of which an artificial tooth element 4 is inserted (Figs. 1-2). The artificial tooth element 4 (Fig. 2) comprises: an outer part 10 visible in the inserted state and an inner part (basal side 12) not visible in the inserted state (Figs. 1-2). The inner part 12 comprises a defined surface roughness at least in part (paragraphs [0047]-[0050] “the basal surfaces of the prosthesis teeth are swelled… roughed up…”; paragraph [0084] “at least the basal sides 12 of the prosthesis teeth 4 are cleaned and, to improve the connection with the connecting means 8, are abraded and swelled with a solvent”). However, Sagolla et al. fails to disclose an arithmetic average roughness value Ra of > 0 to 30 µm as claimed.
Yeh et al. discloses an artificial tooth element 304 for direct insertion into a cavity of a prosthesis base 306 so that the artificial tooth element 304 is in an inserted state, comprising: an outer part visible (exterior surface 304) in the inserted state, and
an inner part 312/330 not visible in the inserted state, wherein the inner part 312/330 comprises an inner surface 320 having an arithmetic average roughness value Ra of >0 to 30 µm (Fig. 3; paragraph [0049] ”average surface roughness of the composite porous layer is … about 0.85-1.7 µm”; paragraph [0054] ”engagement surface 312 defining the insertion recess 330 is treated … to form a composite, porous layer 320”).
Note that the base ceramic body 304 with outer part’s outer surface 304 inherently has a surface roughness, i.e. smooth ceramic body. Yeh et al. teaches that only the inner part’s inner surface 312/330 is treated to increase the surface roughness 320 thereof (paragraph [0049]). Therefore, the increased surface roughness value of treated inner surface 320 is greater than the roughness value of the untreated outer surface 304.
Note that Yeh et al. discloses: “average surface roughness of the composite porous layer is … about 0.85-1.7 µm” (paragraph [0049]) which is within the recited ranges Ra of > 0 to 30 µm (as recited in claim 1), Ra of >0 to 10 µm, about 0.5 to about 5 µm, about 1 to about 4 µm, and about 2 to 3 µm (as recited in claims 15-18).
It would have been obvious to make increase the surface roughness of the inner surface and therefore making the roughness Ra of the inner surface greater than that of the outer surface as taught by Yeh et al. in order to increase the contact surface to achieve optimum bonding properties at the inner surface.
Furthermore, considering Yeh et al. indicating that such range of average roughness is of optimizable variables, such claimed ranges of roughness Ra (as recited in claims 1 and 15-18) and that the roughness Ra of inner surface being 50% greater than the Ra of the outer surface roughness (as recited in claim 20) 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 claims 6-8, Sagolla et al. discloses that each of the plurality of cavities 2 having an inner surface (best pointed to by reference numeral 2 in Fig. 2) which has a defined surface roughness in the region of a bonding surface (paragraph [0049] “the tooth sockets of the prosthesis base are roughed up…”; paragraph [0084] “the tooth sockets 2… are cleaned and, to improve the connection with the connection means 9, are abraded and swelled with a solvent”).
As to claim 9, Sagolla et al. fails to disclose an arithmetic average roughness value Ra of > 0 to 30 µm for the inner surface of cavity 2. However, Yeh et al. discloses: “average surface roughness of the composite porous layer is … about 0.85-1.7 µm” (paragraph [0049]) which is within the recited range Ra of > 0 to 30 µm. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify Sagolla et al. by forming the inner part/basal surface of the artificial tooth prothesis having the disclosed range of roughness Ra as taught by Yeh et al. in order to achieve optimum holding stable adhesive strength to denture base glue. Furthermore, considering Yeh et al. indicating that such range of average roughness is of optimizable variables, such claimed ranges of roughness Ra 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 claims 10-12, Sagolla et al. discloses the cavities 2 being free from undercuts and are formed with different shapes complementary to the inner part/basal surface 12 of the artificial teeth 4 (Figs. 1-3, paragraph 24). Note that there is a gap (intermediate space) between the cavity 2 and the inner part 12 of tooth 4; such gap/intermediate space is filled with connecting means 8 of self-hardening cement (paragraphs [0085]-[0088] “the intermediate spaces between the tooth sockets 2 and the prosthesis teeth 4 are filled with the connecting means 8”). Note that the width of such gap would have been obvious 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 claims 13-14, Sagolla et al. discloses the cavities 2 are formed taking into consideration of the artificial tooth 4’s neck area 12 and height; and having a minimum inner radius that is equal to or greater than the minimum outer radius of the inner part 12 of tooth 4 in order to receive the inner/basal part 12 of tooth 4 therein ( Fig. 2; paragraphs [0084] “tooth sockets 2 are somewhat larger than… the basal side 12 of the prosthesis teeth 4”).
Response to Arguments
7. Applicant's arguments regarding the amended claims have been fully considered, but are moot in view of the newly applied reference Yeh et al.
Regarding the newly recited limitation, Yeh et al. discloses an artificial tooth element 304 for direct insertion into a cavity of a prosthesis base 306 so that the artificial tooth element 304 is in an inserted state, comprising: an outer part visible (exterior surface 304) in the inserted state, and an inner part 312/330 not visible in the inserted state, wherein the inner part 312/330 comprises an inner surface 320 having an arithmetic average roughness value Ra of >0 to 30 µm (Fig. 3; paragraph [0049] ”average surface roughness of the composite porous layer is … about 0.85-1.7 µm”; paragraph [0054] ”engagement surface 312 defining the insertion recess 330 is treated … to form a composite, porous layer 320”).
Note that the base ceramic body 304 with outer part’s outer surface 304 inherently has a surface roughness, i.e. smooth ceramic body. Yeh et al. teaches that only the inner part’s inner surface 312/330 is treated to increase the surface roughness 320 thereof (paragraph [0049]). Therefore, the increased surface roughness value of treated inner surface 320 is greater than the roughness value of the untreated outer surface 304.
Note that Yeh et al. discloses: “average surface roughness of the composite porous layer is … about 0.85-1.7 µm” (paragraph [0049]) which is within the recited ranges Ra of > 0 to 30 µm (as recited in claim 1), Ra of >0 to 10 µm, about 0.5 to about 5 µm, about 1 to about 4 µm, and about 2 to 3 µm (as recited in claims 15-18).
It would have been obvious to make increase the surface roughness of the inner surface and therefore making the roughness Ra of the inner surface greater than that of the outer surface as taught by Yeh et al. in order to increase the contact surface to achieve optimum bonding properties at the inner surface.
Furthermore, considering Yeh et al. indicating that such range of average roughness is of optimizable variables, such claimed ranges of roughness Ra (as recited in claims 1 and 15-18) and that the roughness Ra of inner surface being 50% greater than the Ra of the outer surface roughness (as recited in claim 19) 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.
Conclusion
8. Any inquiry concerning this communication or earlier communications from the examiner should be directed to HAO D MAI whose telephone number is (571)270-3002. The examiner can normally be reached 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