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
Claims 17-18 and 21-22 are objected to because of the following informalities:
In reference to claims 17-18 and 21-22, in line 1 it is suggested to amend “the third point is at a” to “the third point is at the”, in order to ensure consistency and proper antecedent basis in the claim language. Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-4, 7 and 11-22 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
In reference to claim 1, the claim has been amended to recite “the third point is at a distance that is more than 15 to less than 30%”, in line 59. While there is support in the originally filed disclosure for the third point B being in an interval from a position away from one end P by 20% of the entire length to a position 80% of the entire length from one end P. For example, the third point B may be at a distance that is 35% of the entire length from one end P ([0054]; [0059]). There does not appear to be support for the third point a distance lower than 20% the entire length of the entire length from one end of the upper end portion (i.e., 15% to less than 20%), as presently claimed. It is suggested to raise the lower limit of the distance to 20%.
Regarding dependent claims 2-4, 7 and 11-19, these claims do not remedy the deficiencies of parent claim 1 noted above, and are rejected for the same rationale.
In reference to claim 21, the new claim recites “the third point is at a distance that is more than 15 to less than 30%”, in line 59. While there is support in the originally filed disclosure for the third point B being in an interval from a position away from one end P by 20% of the entire length to a position 80% of the entire length from one end P. For example, the third point B may be at a distance that is 35% of the entire length from one end P ([0054]; [0059]). There does not appear to be support for the third point a distance lower than 20% the entire length of the entire length from one end of the upper end portion (i.e., 15% to less than 20%), as presently claimed. It is suggested to raise the lower limit of the distance to 20%.
Regarding dependent claims 21-22, these claims do not remedy the deficiencies of parent claim 20 noted above, and are rejected for the same rationale.
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 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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-4, 6-7, 11-16 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Leeson et al. (US 2017/0035537) (Leeson) in view of Kato et al. (WO 2019/131782) (Kato).
It is noted that when utilizing WO 2019/131782, the disclosures of the reference are based on US 2021/0061715 which is an English language equivalent of the reference. Therefore, the paragraphs cited with respect to WO 2019/131782 are found in US 2021/0061715.
In reference to claims 1 and 20, Leeson teaches a machinable preform for shaping a dental restoration comprising: a body comprised of a machinable dental material having a Vickers hardness value in the range of 4HV GPa to 20HV GPa (Abstract; [0006]; [0041]; claim 1; claim 7) (corresponding to a machinable preform for shaping into a dental restoration comprising: a body constituted of a machinable dental material having a Vickers hardness of 4 to 20 HV (GPa)). The body comprises an outer surface, a top end, a bottom end and a center portion between the top end and the bottom end (claim 1; claim 7; [0022]) (corresponding to a body that comprises an outer surface, an upper end portion, a lower end portion, and a central portion between the upper end portion and the lower end portion). A stem projects from the outer surface of the center portion of the body from a first stem end having a width less than or equal to 4 mm and optionally, an attaching member is connected to the stem at a second stem end, for attaching the sintered ceramic perform to a shaping machine during shaping (claim 1; claim 7; [0038]) (corresponding to a stem having a first stem-end and a second stem-end, the first stem-end having a width of 4 mm or less, and the stem being connected to the body at the first stem-end; and an optional attaching member connected to the stem at the second stem-end and with which the sintered ceramic perform is attached to a shaping machine while shaping).
Leeson further teaches the length of the preform body is less than 20 mm ([0024]; [0063]) (corresponding to a length of the body between the upper end portion and the lower end portion is in a range of from 10 to less than 20 mm). The center portion of the body has a cross-section geometry having an inscribed circle diameter greater than 12 mm and a circumscribed circle less than 20 mm at the location of the first stem end (claim 1; claim 7; [0025]) (corresponding to the central portion of the body, at a position of the first stem-end, having a cross-sectional geometric shape with an inscribed circle having a diameter of more than 12 mm. and a circumscribed circle having a diameter of less than 20 mm).
Leeson does not explicitly teach the preform shows a color change in a first direction from the top end to the bottom end, the preform shows unchanging patterns of increase and decrease of post-sinter L*, a*, b* in the L*a*b color system from the top end to the bottom end, as presently claimed. However, Leeson discloses colored materials can be used to make shaded machinable preforms having the color of natural or artificial dentition ([0043]).
Kato teaches a zirconia pre-sintered body that is fired into a sintered body that develops the shade suited for dental use, even with a short firing time ([0008];[0065]). The sintered body maintains translucency, even when the firing time is shot ([0008]; [0065]). Kato further the sintered body shows a color change from one end to the other end of the sintered body ([0110]) (corresponding to the preform shows a color change in a first direction from the upper end portion to the lower end portion). The values of (L*, a*, b*) of the L*a*b* color system after sintering show unchanging patterns of increase and decrease in a direction from the first point to the second point ([0024]) (corresponding to the preform shows unchanging patterns of increase and decrease of post-sinter L*, a*, b* in the L*a*b color system from the upper end portion to the lower end portion).
In light of the motivation of Kato, it would have been obvious to one of ordinary skill in the art before the effective filing date of the presently claimed invention to have the machinable preform of Leeson show a color change in a first direction from the top end to the bottom end and show unchanging patterns of increase and decrease of post-sinter (L*, a*, b*) of the L*a*b* color system from the top end to the bottom end, in order to provide a sintered body that develops the shade suited for dental use and maintains translucency, and thereby arriving at the presently claimed invention.
Leeson in view of Kato teaches the sintered body obtained by firing the zirconia pre-sintered body shows a color change from one end to the other end of the sintered body (Kato, [0110]). Kato further teaches the body satisfies L1 is 68.0 or more and 90.0 or less, a1 is −3.0 or more and 4.5 or less, b1 is 0.0 or more and 24.0 or less, L2 is 60.0 or more and 85.0 or less, a2 is −2.0 or more and 7.0 or less, b2 is 4.0 or more and 28.0 or less, L1>L2, a1<a2, and b1<b2, where (L1,a1,b1) represent values of (L*,a*,b*) of the L*a*b* color system after sintering as measured at a first point falling within an interval of a length from one end of the body to 25% of the entire length of a straight line extending along a first direction from one end to the other end of the body, and (L2,a2,b2) represent values of (L*,a*,b*) after sintering as measured at a second point falling within an interval of a length from the other end of the zirconia pre-sintered body to 25% of the entire length of the straight line (Abstract; [0010]-[0023]; claim 1) (corresponding to L1 is 68.0 or more and 90.0 or less, a1 is −3.0 or more and 4.5 or less, b1 is 0.0 or more and 24.0 or less, L2 is 60.0 or more and 85.0 or less, a2 is −2.0 or more and 7.0 or less, b2 is 4.0 or more and 28.0 or less, L1>L2, a1<a2, and b1<b2, where (L1,a1,b1) represent values of (L*,a*,b*) of the L*a*b* color system at a first point falling within an interval from one end of the upper end portion to 15% of the entire length on a straight line extending along a first direction from one end of the upper end portion to one end of the lower end portion, and (L2,a2,b2) represent post-sinter (L*,a*,b*) of the l*a*b* color system at a second point falling with an interval from one end of the lower end portion to 15% of the entire length on a straight line extending along the first direction from one end of the upper end portion to one end of the lower end portion).
Leeson in view of Kato further teaches in the sintered body values of (L*,a*,b*) of the L*a*b* color system at third point B are (L3,a3,b3), it is preferable that L3 be 66.0 or more and 89.0 or less, a3 be −2.5 or more and 6.0 or less, b3 be 1.5 or more and 25.0 or less, L1>L3>L2, a1<a3<a2, and b1<b3<b2 (Kato, [0112]; FIG. 1) (corresponding to L3 is 66.0 or more and 89.0 or less, a3 is −2.5 or more and 6.0 or less, b3 is 1.5 or more and 25.0 or less, L1>L3>L2, a1<a3<a2, and b1<b3<b2, where (L3,a3,b3) represent post-sinter (L*,a*,b*) of the L*a*b* color system at third point between the first point and the second point). The sintered body includes a fourth point C is a point lying between third point B and second point D, the values of (L*,a*,b*) of the L*a*b* color system at the fourth point are (L4,a4,b4), it is preferable that L4 be 62.0 or more and 86.0 or less, a4 be -2.2 or more and 7.0 or less, b4 be 3.5 or more and 27.0 or less, L1>L3>L4>L2, a1<a3<a4<a2, and b1<b3<b4<b2 (Kato, [0113]; claim 7) (corresponding to L4 is 62.0 or more and 86.0 or less, a4 is -2.2 or more and 7.0 or less, b4 is 3.5 or more and 27.0 or less, L1>L3>L4>L2, a1<a3<a4<a2, and b1<b3<b4<b2, where (L4,a4,b4) represent post-sinter (L*,a*,b*) of the L*a*b* color system at a fourth point between the third point and the second point on a straight line connecting the first point to the second point).
Leeson in view of Kato further teaches the third point B lies within an interval distance away from one end P by a distance of 30% of the entire length and extending no further than 70% of the entire length relative to one end P and the fourth point C lies within an interval distance away from the other end Q by a distance of 30% of the entire length and extending no further than 70% of the entire length relative to the other end Q (Kato, [0114]) (corresponding to the fourth point is at a distance that is 65% of the entire length from one end of the upper end portion; the fourth point is at a distance that is 65 to 80% of the entire length from one end of the upper end portion). 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).
While Leeson in view of Kato teaches the third point lies within an interval distance away from one end P by a distance of 30% of the entire length, and the present claims require the third point at a distance that is more than 15 to less than 30% of the entire length.
It is apparent, however, that the instantly claimed “less than 30%” (i.e., 29.999%) and that taught by Leeson in view of Kato (i.e., 30%) are so close to each other that the fact pattern is similar to the one in In re Woodruff , 919 F.2d 1575, USPQ2d 1934 (Fed. Cir. 1990) or Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed.Cir. 1985) where despite a “slight” difference in the ranges the court held that such a difference did not “render the claims patentable” or, alternatively, that “a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough so that one skilled in the art would have expected them to have the same properties”.
In light of the case law cited above and given that there is only a “slight” difference between the distance of the third point disclosed by Leeson in view of Kato and the distance disclosed in the present claims and further given the fact that no criticality is disclosed in the present invention with respect to the distance, it therefore would have been obvious to one of ordinary skill in the art that the distance disclosed in the present claims is but an obvious variant of the distance disclosed in Leeson in view of Kato and thereby one of ordinary skill in the art would have arrived at the claimed invention.
In reference to claim 2, Leeson in view of Kato teaches the limitations of claim 1, as discussed above. Leeson further teaches the preform has a cylindrical body including the center portion ([0022]; FIGS. 1A, 2A-2C; claim 2) (corresponding to the central portion comprises a cylindrical body). The center portion has a circular cross-section and an outer diameter of the circular cross-section of the center portion is about 12 mm to about 20 mm ([0022]; [0024]; claim 2) (corresponding to a circular cross-section geometric shape having a diameter of less than 20 mm at the position of the first stem-end).
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).
In reference to claim 3, Leeson in view of Kato teaches the limitations of claim 1, as discussed above. Leeson further teaches a cavity contained within the outer surface of the preform body that extends from a bottom end surface towards the center portion ([0022]; [0023]; claim 4) (corresponding to the body of the perform further comprises a cavity extending towards the central portion from the lower end, and included in the outer surface of the perform body).
In reference to claim 4, Leeson in view of Kato teaches the limitations of claim 1, as discussed above. Leeson further teaches the machinable dental material comprises sintered zirconia ceramic material that is 85% by weight or more of fully sintered zirconia or fully sintered yttria-stabilized zirconia (claim 6) (corresponding to the machinable dental material comprises a sintered zirconia ceramic material representing zirconia with at least 85 mass% fully sintered zirconia, or representing fully sintered yttria-stabilized zirconia).
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).
In reference to claim 6, Leeson in view of Kato teaches the limitations of claim 1, as discussed above. Leeson in view of Kato further teaches L1-L2 is more than 0 and 12.0 or less, a2-a1 is more than 0 and 6.0 or less, and b2-b1 is more than 0 and 12.0 or less (Kato, [0024]) (corresponding to L1-L2 is more than 0 and 12.0 or less, a2-a1 is more than 0 and 6.0 or less, and b2-b1 is more than 0 and 12.0 or less).
In reference to claim 7, Leeson in view of Kato teaches the limitations of claim 1, as discussed above. Leeson in view of Kato the zirconia pre-sintered body on a straight line connecting the first point and the second point comprises no interval in which the L* value increases by 1 or more in a direction from the first point to the second point after sintering, no interval in which the a* value decreases by 1 or more in a direction from the first point to the second point after sintering, and no interval in which the b* value decreases by 1 or more in a direction from the first point to the second point after sintering (Kato, [0027]; [0110]) (corresponding to when a L* value in a pattern of decrease from the first point to the second point, there exists no interval in which the L* value after sintering increases by 1 or more from the first point to the second point on a straight line connecting the first point and the second point, when an a* value is in a pattern of increase from the first point to the second point, there exists no interval in which the a* value after sintering decreases by 1 or more from the first point to the second point on a straight line connecting the first point and the second point, and when a b* value is in a pattern of increase from the first point to the second point, there exists no interval in which the b* value after sintering decreases by 1 or more from the first point to the second point on a straight line connecting the first point and the second point).
In reference to claim 11, Leeson in view of Kato teaches the limitations of claim 1, as discussed above. Leeson in view of Kato further teaches the machinable preform is a yttria stabilized zirconia sintered body (Kato, [0119]; [0129]-[0136]; Table 1) (corresponding to the machinable dental material comprises fully sintered yttria-stabilized zirconia).
In reference to claim 12, Leeson in view of Kato teaches the limitations of claim 1, as discussed above. Leeson further teaches the preform has a cylindrical body including the center portion ([0022]; FIGS. 1A, 2A-2C; claim 2) (corresponding to the central portion comprises a cylindrical body). The outer diameter of the circular cross-section of the center portion from which the restoration design is shaped may be from about 12 mm to about 20 mm ([0024]) (corresponding to a circular cross-section geometric shape having a diameter in a range of from more than 12 to less than 20 mm at the position of the first stem-end).
In reference to claim 13, Leeson in view of Kato teaches the limitations of claim 2, as discussed above. Leeson further teaches a ratio of stem length to the first stem end width is greater than or equal to 1.5:1 and less than 6:1 ([0039]) (corresponding to a ratio of the stem length to the width at the first stem-end, at an end adjacent the cylindrical body is in a range of from 1.5:1 to less than 6:1).
In reference to claim 14, Leeson in view of Kato teaches the limitations of claim 2, as discussed above. Leeson further teaches a ratio of stem length to the first stem end width is greater than or equal to 2:1 and less than 5:1 ([0039]) (corresponding to a ratio of the stem length to the width at the first stem-end, at an end adjacent the cylindrical body is in a range of from more than 2:1 to less than 5:1).
In reference to claim 15, Leeson in view of Kato teaches the limitations of claim 2, as discussed above. Leeson further teaches a ratio of stem length to the first stem end width is greater than or equal to 3:1 and less than 4.5:1 ([0039]) (corresponding to a ratio of the stem length to the width at the first stem-end, at an end adjacent the cylindrical body is in a range of from more than 3:1 to 4.5:1).
In reference to claim 16, Leeson in view of Kato teaches the limitations of claim 2, as discussed above. Leeson further teaches a ratio of stem length to the first stem end width is greater than or equal to 3.5:1 and less than or equal to about 4:1 ([0039]) (corresponding to a ratio of the stem length to the width at the first stem-end, at an end adjacent the cylindrical body is in a range of from more than 3.5:1 to less than 4.5:1).
Claims 1-4, 6-7, 11-16 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Leeson in view of Yamada et al. (US 2014/0328746) (Yamada).
In reference to claim 1, Leeson teaches a machinable preform for shaping a dental restoration comprising: a body comprised of a machinable dental material having a Vickers hardness value in the range of 4HV GPa to 20HV GPa (Abstract; [0006]; [0041]; claim 1; claim 7) (corresponding to a machinable preform for shaping into a dental restoration comprising: a body constituted of a machinable dental material having a Vickers hardness of 4 to 20 HV (GPa)). The body comprises an outer surface, a top end, a bottom end and a center portion between the top end and the bottom end (claim 1; claim 7; [0022]) (corresponding to a body that comprises an outer surface, an upper end portion, a lower end portion, and a central portion between the upper end portion and the lower end portion). A stem projects from the outer surface of the center portion of the body from a first stem end having a width less than or equal to 4 mm and optionally, an attaching member is connected to the stem at a second stem end, for attaching the sintered ceramic perform to a shaping machine during shaping (claim 1; claim 7; [0038]) (corresponding to a stem having a first stem-end and a second stem-end, the first stem-end having a width of 4 mm or less, and the stem being connected to the body at the first stem-end; and an optional attaching member connected to the stem at the second stem-end and with which the sintered ceramic perform is attached to a shaping machine while shaping).
Leeson further teaches the center portion of the body has a cross-section geometry having an inscribed circle diameter greater than 12 mm and a circumscribed circle less than 20 mm at the location of the first stem end (claim 1; claim 7; [0025]) (corresponding to the central portion of the body, at a position of the first stem-end, having a cross-sectional geometric shape with an inscribed circle having a diameter of more than 12 mm. and a circumscribed circle having a diameter of less than 20 mm).
Leeson does not explicitly teach the preform showing a color change in a first direction from the top end to the bottom end, the preform showing unchanging patterns of increase and decrease of post-sinter (L*, a*, b*) in the L*a*b color system from the top end to the bottom end, as presently claimed. However, Leeson discloses colored materials can be used to make shaded machinable preforms having the color of natural or artificial dentition ([0043]).
Yamada teaches a zirconia sintered body having an appearance like a natural tooth (Abstract; [0002]; [0007]; [0016]). On a straight line extending in a first direction from one end to the other end, when a chromaticity (L*, a*, b*) by a L*a*b* colorimetric system of a first point positioned in a section from the one end (i.e., bottom end) to 25% of a whole length is (L1, a1, b1) and a chromaticity (L*, a*, b*) by the L*a*b* colorimetric system of a second point positioned in a section from the other end (i.e., top end) to 25% of the whole length is (L2, a2, b2), L1 ranges from 58.0 to 76.0, a1 ranges from −1.6 to 7.6, b1 is a range from 5.5 to 26.3, L2 ranges from 71.8 to 84.2, a2 ranges from −2.1 to 1.8, b2 ranges from 1.9 to 16.0, L1<L2, a1>a2, b1>b2, and a tendency to increase or decrease the chromaticity by the L*a*b* colorimetric system from the first point to the second point does not change ([0009]) (corresponding to the preform showing a color change in a first direction from the upper end portion to the lower end portion, the perform showing unchanging patterns of increase and decrease of post-sinter (L*,a*,b*) in the L*a*b* color system from the upper end portion to the lower end portion; L1 is 68.0 or more and 90.0 or less, a1 is −3.0 or more and 4.5 or less, b1 is 0.0 or more and 24.0 or less, L2 is 60.0 or more and 85.0 or less, a2 is −2.0 or more and 7.0 or less, b2 is 4.0 or more and 28.0 or less, L1>L2, a1<a2, and b1<b2, where (L1, a1, b1) represent post-sinter (L*, a*, b*) of the L*a*b* color system at a first point falling within an interval from one end of the upper end portion to 15% of the entire length on a straight line extending along a first direction from one end of the upper end portion to one end of the lower end portion, and (L2, a2, b2) represent post-sinter (L*, a*, b*) of the L*a*b* color system at a second point falling within an interval from one end of the lower end portion to 15% of the entire length on a straight line extending along the first direction from one end of the upper end portion to one end of the lower end portion).
In light of the motivation of Yamada, it would have been obvious to one of ordinary skill in the art before the effective filing date of the presently claimed invention to have the preform of Leeson include on a straight line extending in a first direction from top end to the bottom end, when a chromaticity (L*, a*, b*) by a L*a*b* colorimetric system of a first point positioned in a section from said bottom end to 25% of a whole length is (L1, a1, b1) and a chromaticity (L*, a*, b*) by the L*a*b* colorimetric system of a second point positioned in a section from said top end to 25% of the whole length, is (L2, a2, b2), L1 ranges from 58.0 to 76.0, a1 ranges from −1.6 to 7.6, b1 ranges from 5.5 to 26.3, L2 ranges from 71.8 to 84.2, a2 ranges from −2.1 to 1.8, b2 ranges from 1.9 to 16.0, L1<L2, a1>a2, b1>b2, and a tendency to increase or decrease the chromaticity by the L*a*b* colorimetric system from said first point to said second point does not change, in order to provide the preform with an appearance like a natural tooth.
Leeson in view of Yamada further teaches on the straight line connecting from the first point to the second point, when a chromaticity (L*, a*, b*) by the L*a*b* colorimetric system of a third point between the first point and the second point is (L3, a3, b3), L3 ranges from 65.9 to 80.5, a3 ranges from −1.8 to 5.5, b3 ranges from 4.8 to 20.7, L1<L3<L2, a1>a3>a2, and b1>b3>b2 (Yamada, [0022]) (corresponding to L3 is 66.0 or more and 89.0 or less, a3 is −2.5 or more and 6.0 or less, b3 is 1.5 or more and 25.0 or less, L1>L3>L2, a1<a3<a2, and b1<b3<b2, where (L3,a3,b3) represent post-sinter (L*,a*,b*) of the L*a*b* color system at third point between the first point and the second point). On the straight line connecting from the first point to the second point, when a chromaticity (L*, a*, b*) by the L*a*b* colorimetric system of a fourth point between the third point and the second point is (L4, a4, b4), L4 ranges from 69.1 to 82.3, a4 ranges from −2.1 to 1.4, b4 ranges from 3.5 to 16.2, L1<L3<L4<L2, a1>a3>a4>a2, and b1>b3>b4>b2 (Yamada, [0023]) (corresponding to L4 is 62.0 or more and 86.0 or less, a4 is -2.2 or more and 7.0 or less, b4 is 3.5 or more and 27.0 or less, L1>L3>L4>L2, a1<a3<a4<a2, and b1<b3<b4<b2, where (L4,a4,b4) represent post-sinter (L*,a*,b*) of the L*a*b* color system at a fourth point between the third point and the second point on a straight line connecting the first point to the second point). The third point is placed in a section from a point away from the one end by 30% of the whole length to 70% of the while length from one end and the fourth point is placed in a section from a point away from the other end by 30% or the whole length to 70% or the whole length ([0055]-[0059]) (corresponding to the fourth point is at a distance that is 65% of the entire length from one end of the upper end portion; the fourth point is at a distance that is 65 to 80% of the entire length from one end of the upper end portion). 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).
While Leeson in view of Yamada teaches the third point lies within an interval distance away from one end P by a distance of 30% of the entire length, and the present claims require the third point at a distance that is more than 15 to less than 30% of the entire length.
It is apparent, however, that the instantly claimed “less than 30%” (i.e., 29.999%) and that taught by Leeson in view of Kato (i.e., 30%) are so close to each other that the fact pattern is similar to the one in In re Woodruff , 919 F.2d 1575, USPQ2d 1934 (Fed. Cir. 1990) or Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed.Cir. 1985) where despite a “slight” difference in the ranges the court held that such a difference did not “render the claims patentable” or, alternatively, that “a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough so that one skilled in the art would have expected them to have the same properties”.
In light of the case law cited above and given that there is only a “slight” difference between the distance of the third point disclosed by Leeson in view of Yamada and the distance disclosed in the present claims and further given the fact that no criticality is disclosed in the present invention with respect to the distance, it therefore would have been obvious to one of ordinary skill in the art that the distance disclosed in the present claims is but an obvious variant of the distance disclosed in Leeson in view of Yamada and thereby one of ordinary skill in the art would have arrived at the claimed invention.
In reference to claim 2, Leeson in view of Yamada teaches the limitations of claim 1, as discussed above. Leeson further teaches the preform has a cylindrical body including the center portion ([0022]; FIGS. 1A, 2A-2C; claim 2) (corresponding to the central portion comprises a cylindrical body). The center portion has a circular cross-section and an outer diameter of the circular cross-section of the center portion is about 12 mm to about 20 mm ([0022]; [0024]; claim 2) (corresponding to a circular cross-section geometric shape having a diameter of less than 20 mm at the position of the first stem-end).
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).
In reference to claim 3, Leeson in view of Yamada teaches the limitations of claim 1, as discussed above. Leeson further teaches a cavity contained within the outer surface of the preform body that extends from a bottom end surface towards the center portion ([0022]; [0023]; claim 4) (corresponding to the body of the perform further comprises a cavity extending towards the central portion from the lower end, and included in the outer surface of the perform body).
In reference to claim 4, Leeson in view of Yamada teaches the limitations of claim 1, as discussed above. Leeson further teaches the machinable dental material comprises sintered zirconia ceramic material that is 85% by weight or more of fully sintered zirconia or fully sintered yttria-stabilized zirconia (claim 6) (corresponding to the machinable dental material comprises a sintered zirconia ceramic material representing zirconia with at least 85 mass% fully sintered zirconia, or representing fully sintered yttria-stabilized zirconia).
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).
In reference to claim 6, Leeson in view of Yamada teaches the limitations of claim 1, as discussed above. Leeson in view of Yamada teaches L1 (i.e., L2) ranges from 58.0 to 76.0, a1 (i.e., a2) ranges from −1.6 to 7.6, b1 (i.e., b2) ranges from 5.5 to 26.3, L2 (i.e., L1) ranges from 71.8 to 84.2, a2 (i.e., a1) ranges from −2.1 to 1.8, b2 (i.e., b1) ranges from 1.9 to 16.0, L1<L2, a1>a2 and b1>b2 (Yamada, [0009]).
Within the overlapping ranges of L1, a1, b1, L2, a2 and b2, as those set forth in the instant claims, L2-L1 will overlap the claimed range of more than 0 and 12.0 or less, a1-a2 will overlap the claimed range of more than 0 and 6.0 or less, and b1-b2 will overlap the claimed range of more than 0 and 12.0 or less.
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).
In reference to claim 7, Leeson in view of Yamada teaches the limitations of claim 1, as discussed above. Leeson in view of Yamada further teaches on the straight line connecting the first point and the second point, there is no section where the L* value decreases by 1 or more from the first point toward the second point, there is no section where the a* value increases by 1 or more from the first point toward the second point, and there is no section where the b* value increases by 1 or more from the first point toward the second point (Yamada, [0021]) (corresponding to when a L* value in a pattern of decrease from the first point to the second point, there exists no interval in which the L* value after sintering increases by 1 or more from the first point to the second point on a straight line connecting the first point and the second point, when an a* value is in a pattern of increase from the first point to the second point, there exists no interval in which the a* value after sintering decreases by 1 or more from the first point to the second point on a straight line connecting the first point and the second point, and when a b* value is in a pattern of increase from the first point to the second point, there exists no interval in which the b* value after sintering decreases by 1 or more from the first point to the second point on a straight line connecting the first point and the second point).
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).
In reference to claim 11, Leeson in view of Yamada teaches the limitations of claim 1, as discussed above. Leeson in view of Yamada further teaches the machinable preform comprises a zirconia sintered body including a stabilizing agent, such as yttria (Yamada, [0002]; [0040]) (corresponding to the machinable dental material comprises fully sintered yttria-stabilized zirconia).
In reference to claim 12, Leeson in view of Yamada teaches the limitations of claim 1, as discussed above. Leeson further teaches the preform has a cylindrical body including the center portion ([0022]; FIGS. 1A, 2A-2C; claim 2) (corresponding to the central portion comprises a cylindrical body). The outer diameter of the circular cross-section of the center portion from which the restoration design is shaped may be from about 12 mm to about 20 mm ([0024]) (corresponding to a circular cross-section geometric shape having a diameter in a range of from more than 12 to less than 20 mm at the position of the first stem-end).
In reference to claim 13, Leeson in view of Yamada teaches the limitations of claim 2, as discussed above. Leeson further teaches a ratio of stem length to the first stem end width is greater than or equal to 1.5:1 and less than 6:1 ([0039]) (corresponding to a ratio of the stem length to the width at the first stem-end, at an end adjacent the cylindrical body is in a range of from 1.5:1 to less than 6:1).
In reference to claim 14, Leeson in view of Yamada teaches the limitations of claim 2, as discussed above. Leeson further teaches a ratio of stem length to the first stem end width is greater than or equal to 2:1 and less than 5:1 ([0039]) (corresponding to a ratio of the stem length to the width at the first stem-end, at an end adjacent the cylindrical body is in a range of from more than 2:1 to less than 5:1).
In reference to claim 15, Leeson in view of Yamada teaches the limitations of claim 2, as discussed above. Leeson further teaches a ratio of stem length to the first stem end width is greater than or equal to 3:1 and less than 4.5:1 ([0039]) (corresponding to a ratio of the stem length to the width at the first stem-end, at an end adjacent the cylindrical body is in a range of from more than 3:1 to 4.5:1).
In reference to claim 16, Leeson in view of Yamada teaches the limitations of claim 2, as discussed above. Leeson further teaches a ratio of stem length to the first stem end width is greater than or equal to 3.5:1 and less than or equal to about 4:1 ([0039]) (corresponding to a ratio of the stem length to the width at the first stem-end, at an end adjacent the cylindrical body is in a range of from more than 3.5:1 to less than 4.5:1).
Claims 1-4, 11-17 and 19-20 are rejected under 35 U.S.C. 103 as being unpatentable over Leeson in view of Ito et al. (US 2018/0002235) (Ito).
In reference to claims 1, 17 and 20, Leeson teaches a machinable preform for shaping a dental restoration comprising: a body comprised of a machinable dental material having a Vickers hardness value in the range of 4HV GPa to 20HV GPa (Abstract; [0006]; [0041]; claim 1; claim 7) (corresponding to a machinable preform for shaping into a dental restoration comprising: a body constituted of a machinable dental material having a Vickers hardness of 4 to 20 HV (GPa)). The body comprises an outer surface, a top end, a bottom end and a center portion between the top end and the bottom end (claim 1; claim 7; [0022]) (corresponding to a body that comprises an outer surface, an upper end portion, a lower end portion, and a central portion between the upper end portion and the lower end portion). A stem projects from the outer surface of the center portion of the body from a first stem end having a width less than or equal to 4 mm and optionally, an attaching member is connected to the stem at a second stem end, for attaching the sintered ceramic perform to a shaping machine during shaping (claim 1; claim 7; [0038]) (corresponding to a stem having a first stem-end and a second stem-end, the first stem-end having a width of 4 mm or less, and the stem being connected to the body at the first stem-end; and an optional attaching member connected to the stem at the second stem-end and with which the sintered ceramic perform is attached to a shaping machine while shaping).
Leeson further teaches the length of the preform body is less than 20 mm ([0024]; [0063]) (corresponding to a length of the body between the upper end portion and the lower end portion is in a range of from 10 to less than 20 mm). The center portion of the body has a cross-section geometry having an inscribed circle diameter greater than 12 mm and a circumscribed circle less than 20 mm at the location of the first stem end (claim 1; claim 7; [0025]) (corresponding to the central portion of the body, at a position of the first stem-end, having a cross-sectional geometric shape with an inscribed circle having a diameter of more than 12 mm. and a circumscribed circle having a diameter of less than 20 mm).
Leeson does not explicitly teach the preform shows a color change in a first direction from the top end to the bottom end, the preform shows unchanging patterns of increase and decrease of post-sinter L*, a*, b* in the L*a*b color system from the top end to the bottom end, as presently claimed. However, Leeson discloses colored materials can be used to make shaded machinable preforms having the color of natural or artificial dentition ([0043]).
Ito teaches a dental product containing a zirconia sintered body having an appearance equivalent to natural teeth ([0014]; [0015]). The sintered body includes a first region and a second region laminated ([00026]). A third region is between the first region and the second region and a further region is between the third region and the second region ([0027]; [0029]; [0065]). Ito teaches the sintered body has transparency similar to a natural tooth ([0066]; [0067]).
The color degree (color space) in L*a*b* color system measured on a white background of the zirconia sintered body is as follows for each of the regions: the first region has a L* of 79.62 to 85.47, an a* of -1.38 to 1.19 and a b* of 2.17 to 21.94, the second region has a L* of 72.38 to 85.56, an a* of -0.73 to 5.34 and a b* of 5.46 to 26.26, the third region has a L* of 76.49 to 85.21, an a* of -1.16 to 3.30 and a b* of 4.70 to 23.57 and the fourth region has a L* of 75.40 to 85.21, an a* of -0.95 to 4.5 and a b* of 3.91 to 25.39 (Tables 1-25). The L* of the first region is greater than the L* of the third region which is greater than the L* of the fourth region which is greater than the L* of the second region (Tables 1-25). Further each of the a* and b* of the first region is less than the a* and b* of third region which is less than the a* and b* of the forth region which is less than the a* and b* of the second region (Tables 1-25).
The third region is tacked on the first region, the fourth region is stacked on the third region and the second region is stacked on the fourth region (FIG. 2; [0026]-[0029]). The body including four layers (i.e., regions) has a first layer with a predetermined thickness of 25 to 45% the entire thickness, a second layer on the first layer, wherein the second layer has a predetermined thickness of 5 to 25% the entire thickness, a third layer on the second layer having a predetermined thickness of 5 to 25% the entire thickness and a fourth layer on the third layer having a predetermined thickness of 25 to 45% the entire thickness ([0102]). Thus, it is clear the thickness of the first region and second region can be 25 to 45% the entire thickness and a point will fall within an interval from one end of the upper end portion to 15% of an entire length on a straight line extending along a first direction from one end of the upper end portion to one end of the lower end portion having the L*, a* and b* values associated with the first region. A second point will fall within an interval from one end of the lower end portion to 15% of the entire length on the straight line extending along the first direction from one end of the upper end portion to one end of the lower end portion having the L*, a* and b* values associated with the second region. A third point will be at a distance within 25 to 50% the entire thickness having the L*, a* and b* values associated with the third region and a fourth point will be at a distance within 50% to 75% the entire thickness having the L*, a* and b* values associated with the fourth region.
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).
In light of the motivation of Ito, it would have been obvious to one of ordinary skill in the art before the effective filing date of the presently claimed invention to have the machinable preform of Leeson include the four regions including the color degrees, in order to provide a machinable preform having an appearance equivalent to natural teeth and a transparency variation similar to a natural tooth.
In reference to claim 2, Leeson in view of Ito teaches the limitations of claim 1, as discussed above. Leeson further teaches the preform has a cylindrical body including the center portion ([0022]; FIGS. 1A, 2A-2C; claim 2) (corresponding to the central portion comprises a cylindrical body). The center portion has a circular cross-section and an outer diameter of the circular cross-section of the center portion is about 12 mm to about 20 mm ([0022]; [0024]; claim 2) (corresponding to a circular cross-section geometric shape having a diameter of less than 20 mm at the position of the first stem-end).
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).
In reference to claim 3, Leeson in view of Ito teaches the limitations of claim 1, as discussed above. Leeson further teaches a cavity contained within the outer surface of the preform body that extends from a bottom end surface towards the center portion ([0022]; [0023]; claim 4) (corresponding to the body of the perform further comprises a cavity extending towards the central portion from the lower end, and included in the outer surface of the perform body).
In reference to claim 4, Leeson in view of Ito teaches the limitations of claim 1, as discussed above. Leeson in view of Ito further teaches the machinable dental material comprises sintered zirconia ceramic material that is 85% by weight or more of fully sintered zirconia or fully sintered yttria-stabilized zirconia (Leeson, claim 6; Ito, [0090]-[0092]) (corresponding to the machinable dental material comprises a sintered zirconia ceramic material representing zirconia with at least 85 mass% fully sintered zirconia, or representing fully sintered yttria-stabilized zirconia).
In reference to claim 6, Leeson in view of Ito teaches the limitations of claim 1, as discussed above. Leeson in view of Ito teaches in working example 1 the first region has an L* of 81.30, a* of 0.13 and b* of 18.97 and the second region has an L* of 78.22, a* of 4.16 and b* of 25.85 (Table 1). Thus, it is clear a difference between L*s is 3.08, a*s is 4.03 and b*s is 6.88 (corresponding to L1-L2 is more than 0 and 12.0 or less, a2-a1 is more than 0 and 6.0 or less, and b2-b1 is more than 0 and 12.0 or less).
In reference to claim 11, Leeson in view of Ito teaches the limitations of claim 1, as discussed above. Leeson in view of Ito further teaches the machinable preform comprises a zirconia sintered body including a stabilizing agent, such as yttria (Ito, [0051]; Tables 1-25) (corresponding to the machinable dental material comprises fully sintered yttria-stabilized zirconia).
In reference to claim 12, Leeson in view of Ito teaches the limitations of claim 1, as discussed above. Leeson further teaches the preform has a cylindrical body including the center portion ([0022]; FIGS. 1A, 2A-2C; claim 2) (corresponding to the central portion comprises a cylindrical body). The outer diameter of the circular cross-section of the center portion from which the restoration design is shaped may be from about 12 mm to about 20 mm ([0024]) (corresponding to a circular cross-section geometric shape having a diameter in a range of from more than 12 to less than 20 mm at the position of the first stem-end).
In reference to claim 13, Leeson in view of Ito teaches the limitations of claim 2, as discussed above. Leeson further teaches a ratio of stem length to the first stem end width is greater than or equal to 1.5:1 and less than 6:1 ([0039]) (corresponding to a ratio of the stem length to the width at the first stem-end, at an end adjacent the cylindrical body is in a range of from 1.5:1 to less than 6:1).
In reference to claim 14, Leeson in view of Ito teaches the limitations of claim 2, as discussed above. Leeson further teaches a ratio of stem length to the first stem end width is greater than or equal to 2:1 and less than 5:1 ([0039]) (corresponding to a ratio of the stem length to the width at the first stem-end, at an end adjacent the cylindrical body is in a range of from more than 2:1 to less than 5:1).
In reference to claim 15, Leeson in view of Ito teaches the limitations of claim 2, as discussed above. Leeson further teaches a ratio of stem length to the first stem end width is greater than or equal to 3:1 and less than 4.5:1 ([0039]) (corresponding to a ratio of the stem length to the width at the first stem-end, at an end adjacent the cylindrical body is in a range of from more than 3:1 to 4.5:1).
In reference to claim 16, Leeson in view of Ito teaches the limitations of claim 2, as discussed above. Leeson further teaches a ratio of stem length to the first stem end width is greater than or equal to 3.5:1 and less than or equal to about 4:1 ([0039]) (corresponding to a ratio of the stem length to the width at the first stem-end, at an end adjacent the cylindrical body is in a range of from more than 3.5:1 to less than 4.5:1).
In reference to claim 19, Leeson in view of Ito teaches the limitations of claim 1, as discussed above. Leeson in view of Ito further teaches the machinable dental material comprises sintered zirconia ceramic material that is 85% by weight or more of fully sintered zirconia or fully sintered yttria-stabilized zirconia (Leeson, claim 6; Ito, [0090]-[0092]) (corresponding to the machinable dental material comprises a sintered zirconia ceramic material comprising at least 85 mass% fully sintered zirconia).
Response to Arguments
Applicant primarily argues:
“Kato should not be available as a reference against the claims, but it is noted that Kato describes that its ‘the third point B lies within an interval distance away from one end P by a distance of 30% of the entire length and extending no further than 70% of the entire length relative to one end P.’ As discussed in the interview, the ‘third point [being] at a distance that is more than 15 to less than 30% of the entire length from one end of the upper end of the upper portion,’ or narrower, as recited in claim 17, should not be obvious.”
Remarks, p. 10
The examiner respectfully traverses as follows:
Kato is available as prior art under 35 USC 102(a)(1) and 102(a)(2). If the Applicant wishes to disqualify Kato as prior art the Applicant must first perfect the foreign priority date. When an English language translation of a non-English language foreign application is required, the translation must be that of the certified copy (of the foreign application as filed) submitted together with a statement that the translation of the certified copy is accurate. See MPEP §§ 215 and 216.
Once the foreign priority date has been perfected the Applicant can file a declaration to show Kato is not the prior art under USC 102(a)(1) because the 35 USC 102(b)(1)(B) exception applies. See MPEP 2153.02. Further, Applicant would need to disqualify Kato as prior art under 35 USC 102(a)(2) by including a written statement of common ownership and thereby invoking the exception under 35 USC 102(b)(2)(C). See MPEP 2154.02(c).
The only deficiency of Leeson in view of Kato is that the third point lies within an interval distance away from one end P by a distance of 30% of the entire length, while the present claims require the third point at a distance that is more than 15 to less than 30% of the entire length.
It is apparent, however, that the instantly claimed “less than 30%” (e.g., 29.999%) and that taught by Leeson in view of Kato (i.e., 30%) are so close to each other that the fact pattern is similar to the one in In re Woodruff , 919 F.2d 1575, USPQ2d 1934 (Fed. Cir. 1990) or Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed.Cir. 1985) where despite a “slight” difference in the ranges the court held that such a difference did not “render the claims patentable” or, alternatively, that “a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough so that one skilled in the art would have expected them to have the same properties”.
In light of the case law cited above and given that there is only a “slight” difference between the distance of the third point disclosed by Leeson in view of Kato and the distance disclosed in the present claims and further given the fact that no criticality is disclosed in the present invention with respect to the distance, it therefore would have been obvious to one of ordinary skill in the art that the distance disclosed in the present claims is but an obvious variant of the distance disclosed in Leeson in view of Kato and thereby one of ordinary skill in the art would have arrived at the claimed invention.
Applicant further argues:
“As mentioned above, the premises in Leeson are significantly different from those in the conventional techniques of Kato and Yamada.
Therefore, a person skilled in the art would not have been motivated to refer to the inventions of Kato and Yamada, which relate to pre-sintered bodies based on premises different from those of Leeson, when considering Leeson, which does not employ pre-sintered bodies, to overcome the problems of the conventional techniques.
Consequently, Leeson teaches away from the premises of Kato and Yamada.”
Remarks, p. 11
The examiner respectfully traverses as follows:
While Leeson teaches a machinable preform that may be shaped chair-side into a final dental restoration without requiring sintering after shaping ([0007]), such disclosure does not criticize, discredit, or otherwise discourage the preform having a color change in a first direction from the upper end portion to the lower end portion. Further, Leeson teaches unsintered materials are shaped into an intermediate form having substantially the same geometry as the sintered preform, wherein the intermediate form is shaped by milling or grinding ([0042]). The intermediate form may include colored material ([0043]). Therefore, Leeson teaches machining is performed on a pre-sintered body.
Given that Leeson, Kato and Yamada are all drawn to dental products and Kato and Yamada provide proper motivation to combine. Specifically, in order to provide the preform shades suited for dental use. It is the examiner’s position, absent evidence to the contrary, one of ordinary skill in the art would be motivated to combine Leeson with Kato or Yamada with a reasonable expectation of success when combing the references.
Applicant further argues:
“Beyond the above, the claims are believed to cover unexpectantly superior results, as evidence by the experimental examples in the present application.”
Remarks, p. 12
The examiner respectfully traverses as follows:
The data to establish unexpected results is unpersuasive for the reasons below.
Firstly, the data is not commensurate in scope with the scope of the present claims. Specifically, the data only provides using (1) a specific material having four specific powder compositions at four specific locations; (2) a preform having a specific body length, cross sectional outer diameter, cavity breakout diameter at the lower end surface, first stem-end width and stem length; (3) a specific L*, a* and b* value for each specific powder composition; and (4) a specific processing time.
While the present claims broadly encompass (1) any composition at any of the upper end portion, lower end portion and central portion between the upper end portion and lower end portion; (2) any body length, any cross sectional outer diameter with an inscribed circle having any diameter of more than 12 mm and a circumscribed circle having any diameter of less than 20 mm, any first stem-end width of 4 mm or less and any stem length; (3) any L*, a*, b* values for central portions, any L1 of 68 or more and 90 or less, any al of -3.0 or more and 4.5 or less, any b1 of 0.0 or more and 24.0 or less, any L2 of 60.0 or more and 85.0 or less, any a2 of -2.0 or more and 7.0 or less, any b2 of 4.0 or more and 28.0 or less, any L3 of 66 or more and 89 or less, any a3 of -2.5 or more and 6.0 or less, any b3 of 1.5 or more and 25.0 or less, any L4 of 62.0 or more and 86.0 or less, any a4 of -2.2 or more and 7.0 or less, any b4 of 3.5 or more and 27.0 or less, where L1>L3>L4> L2, al<a3<a4< a2, b1<b3<b4< b2, L1, a1 and b1 are taken at any point falling anywhere within an interval from one end of the upper end portion to 15% of an entire length on a straight line extending along a first direction from one end of the upper end portion to one end on the lower end portion, L2, a2 and b2 are taken at any point falling anywhere within an interval from one end of the lower end portion to 15% of the entire length of the straight line, where (L3, a3, b3) represent post-sinter (L*, a*, b*) of the L*a*b* color system at a third point between the first point and the second point on a straight line connecting the first point to the second point, where (L4, a4, b4) represent post-sinter (L*, a*, b*) of the L*a*b* color system at a fourth point between the third point and the second point on a straight line connecting the first point to the second point, the third point is at a distance that is more than 15 to less than 30% of the entire length from one end of the upper end portion, and the fourth point is at a distance that is 65% of the entire length from one end of the upper end portion; and (4) any processing time.
Additionally, the data does not show using the upper and lower claimed limits of (a) L1, (b) a1, (c) b1, (d) L2, (e) a2, (f) b2, (g) L3, (h) a3, (i) b3, (j) L4, (k) a4 and (l) b4. As set forth in MPEP 716.02(d), whether unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, “objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support”. In other words, the showing of unexpected results must be reviewed to see if the results occurred over the entire claimed range, In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980). Applicants have not provided data to show that the unexpected results do in fact occur over the entire claimed range of (a)-(l).
Secondly, there is no proper side-by-side comparison between the working examples and the comparative examples. The “closest” side-by-side comparison appears to be Example 4 and Comparative Example 2. However, the second powder and the third powder of Example 4 and Comparative Example 2 differ in composition and L*, a* and b* values differ. It is unclear if the disadvantageous property (i.e., poor visual inspection) is due to the variation in the second powder, variation in the third powder, the L1, a1, L2 and a2, values being outside the claim range or a combination of the composition of the second powder, the composition of the third powder, L1 value, a1 value, L2 value and a2 value.
Even if there were proper side-by-side comparisons,, the data to establish unexpected results remains unpersuasive for the reasons set forth above, i.e., the data is not commensurate in scope with the scope of the claims.
Therefore, Applicant's arguments filed 01/26/2026 have been fully considered but they are not persuasive.
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 Mary I Omori whose telephone number is (571)270-1203. The examiner can normally be reached M-F 8am-4pm.
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/MARY I OMORI/Primary Examiner, Art Unit 1784