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
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.
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.
Claim(s) 10-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Oldenburger et al. (US 2019/0247168).
Regarding claims 10-12 and 15: Oldenburger et al. (US ‘168) discloses a milling blank having a continuous shade gradient [abstract], wherein Example 3 [Ex. 3; 0186-0198] prepares colored pastes 2-A1, 2-A2 and 2-A3 from uncolored composite paste 2 [Ex. 1; 0180; Table 1, paste 2] by coloring with pigments and homogenizing in a kneader at 50 rpm [Ex. 3; 018; 0186-0198]. Oldenburger et al. (US ‘168) discloses composite paste 2 was prepared by kneading a mixture until homogenous containing dental glass 1 (barium aluminum borosilicate, silanized; D50 0.8 µm [0171]), dental glass 2 (barium aluminum borosilicate, silanized; D50 2.7 µm [0172]), 40 nm SiO2 (silanized [0173]), Bis-EMA2.6, TCDDMA, UDMA (urethane dimethacrylate; 7,7,9-trimethyl-4,13-dioxo-3,14-dioxa-5,12-diazahexadecane 1,16-dioxydimethacrylate [0169]), HDDMA, and BPO (dibenzoyl peroxide [0174]) [Ex. 1; 0180; Table 1, paste 2]. Oldenburger et al. (US ‘168) discloses the colored paste were introduced into molds at a pressure of 100 bar (10 MPa) and a reduced pressure of -0.85 bar (-0.085 MPa). The resulting layered block was cured at 250 bar (25 MPa) and 120 oC [Ex. 3; 0186-0198].
Oldenburger et al. (US ‘168) does not specifically disclose the colored materials having a particle size of 0.1 mm to 5 mm. However, one of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to have employed a particle size of 0.1 mm to 5 mm in the product of Oldenburger et al. (US ‘168) since such a modification would have involved a change in the size of the component and a change of size is generally recognized as being within the level of ordinary skill in the art. In re Rose , 220 F.2d 459, 105 USPQ 237 (CCPA 1955) [see MPEP 2144.04]. See also In Gardner v. TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984), the Federal Circuit held that, where the only difference between the prior art and the claims was a recitation of relative dimen-sions of the claimed device and a device having the claimed relative dimensions would not perform differ-ently than the prior art device, the claimed device was not patentably distinct from the prior art device [see MPEP 2144.04].
“[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) [See MPEP 2113].
Regarding claim 13: Oldenburger et al. (US ‘168) discloses ~20:80 ratio of monomers (b) to filler (a); 1.5 wt% initiator (c) to monomers (b) [Ex. 1; 0180; Table 1, paste 2]. Oldenburger et al. (US ‘168) discloses adding pigments to achieve VITA colors [0165; 0180; 0186].
Oldenburger et al. (US ‘168) does not specifically disclose adding 0.01 wt% to 3 wt% pigments. However, differences in concentration will not support the patentability of subject mat-ter encompassed by the prior art unless there is evidence indicating such concentration is critical. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to dis-cover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955); see also Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382; In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969). For more recent cases applying this principle, see Merck & Co. Inc. v. Biocraft Laboratories Inc., 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989); In re Kulling, 897 F.2d 1147, 14 USPQ2d 1056 (Fed. Cir. 1990); and In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997) [see MPEP 2144.05].
Regarding claim 14: Oldenburger et al. (US ‘168) discloses photosensitizers [0142], accelerators [0143] ad UV absorbers [0164]. Oldenburger et al. (US ‘168) discloses amines {accelerator [0143]} (ex. N,N-dihydroxyethyl-p-toluidine [0152]) used in combination with dibenzoyl peroxide [0151-0152] in a 1:1 ratio {corresponding to ~ 0.30 wt% in Paste 2} (1:1 ratio via DE 10 2006 019 092, [0234; Tables 1-2]).
Claim(s) 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Oldenburger et al. (US 2019/0247168) as applied to claim 10 above, when taken with Fukudome et al. (US 2019/0192386) and Yano et al. (US 2009/0305033).
Regarding claim 16: Oldenburger et al. (US ‘168) discloses the basic claimed material [as set forth above with respect to claim 10]; wherein Oldenburger et al. (US ‘168) discloses UDMA having a refractive index nP of the polymer of 1.509; Bis-EMA2.6 nP of 1.567; TCDDMA nP of 1.53 [Ex. 1; 0180; Table 1, paste 2].
Fukudome et al. (US ‘386) provides evidence for UDMA having a refractive index nP of the polymer [0382] of 1.509 [0396-0399]; Bis-EMA2.6 nP of 1.567 [0392-0395].
Yano et al. (US ‘033) provides evidence for TCDDMA nP of 1.53 [0176].
Claim(s) 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Oldenburger et al. (US 2019/0247168) as applied to claim 10 above, when taken with Lu et al. (US 2015/0099821) and Willner et al. (US 2023/0192295).
Regarding claim 17: Oldenburger et al. (US ‘168) discloses the basic claimed material [as set forth above with respect to claim 10]; wherein Oldenburger et al. (US ‘168) discloses dental glass 1 (barium aluminum borosilicate, silanized; D50 0.8 µm; nD = 1.550 [0171]), dental glass 2 (barium aluminum borosilicate, silanized; D50 2.7 µm; nD = 1.550 [0172]), and 40 nm SiO2 (silanized; nD = 1.46 [0173]) [Ex. 1; 0180; Table 1, paste 2].
Lu et al. (US ‘821) provides evidence for barium aluminum borosilicate having a refractive index of 1.550 [0052].
Willner et al. (US ‘295) provides evidence for SiO2 having a refractive index of 1.46 [0254; Table 9, (B1)].
Claim(s) 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Oldenburger et al. (US 2019/0247168) as applied to claim 10 above, and further in view of Okubayashi et al. (US 2011/0046260).
Regarding claim 18: Oldenburger et al. (US ‘168) discloses the basic claimed material [as set forth above with respect to claim 10]; wherein Oldenburger et al. (US ‘168) discloses dental glass 1 (barium aluminum borosilicate, silanized; D50 0.8 µm; nD = 1.550 [0171]), dental glass 2 (barium aluminum borosilicate, silanized; D50 2.7 µm; nD = 1.550 [0172]), and 40 nm SiO2 (silanized; nD = 1.46 [0173]), and BPO (dibenzoyl peroxide [0174]) [Ex. 1; 0180; Table 1, paste 2]. Oldenburger et al. (US ‘168) discloses titanium dioxide (white) pigment [0165, 0180]. Oldenburger et al. (US ‘168) discloses methacryloyloxypropyltrimethoxysilane surface treated glasses [0124-0125] and methacryloyloxypropyltrimethoxysilane surface treated silica [0128-0129].
Oldenburger et al. (US ‘168) does not specifically disclose surface treating the fillers with 0.1-50 parts by weight of methacryloyloxypropyltrimethoxysilane. However, Okubayashi et al. (US ‘260) discloses dental composites [abstract], wherein 100 parts by weight barium glass was treated with 4 parts by weight methacryloyloxypropyltrimethoxysilane [0186], and 100 parts by weight silica was treated with 7 parts by weight methacryloyloxypropyltrimethoxysilane [0190]. Oldenburger et al. (US ‘168) and Okubayashi et al. (US ‘260) are analogous art because they are concerned with a similar technical difficulty, namely the preparation of dental composites. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have combined treating barium glass with 4 parts by weight methacryloyloxypropyltrimethoxysilane and silica with 7 parts by weight methacryloyloxypropyltrimethoxysilane, as taught by Okubayashi et al. (US ‘260) in the invention of Oldenburger et al. (US ‘168), and would have been motivated to do so since Okubayashi et al. (US ‘260) suggests such a treatment affords silane surface treated particles that improves the affinity between the monomer and the filler [0044; 0186; 0190].
Allowable Subject Matter
Claims 1-9 are allowable.
The following is a statement of reasons for the indication of allowable subject matter: Oldenburger et al. (US 2019/0247168) discloses a method for preparing a milling blank having a continuous shade gradient [abstract], wherein Example 3 [Ex. 3; 0186-0198] prepares colored pastes 2-A1, 2-A2 and 2-A3 from uncolored composite paste 2 [Ex. 1; 0180; Table 1, paste 2] by coloring with pigments and homogenizing in a kneader at 50 rpm [Ex. 3; 018; 0186-0198]. Oldenburger et al. (US ‘168) discloses composite paste 2 was prepared by kneading a mixture until homogenous containing dental glass 1 (barium aluminum borosilicate, silanized; D50 0.8 µm [0171]), dental glass 2 (barium aluminum borosilicate, silanized; D50 2.7 µm [0172]), 40 nm SiO2 (silanized [0173]), Bis-EMA2.6, TCDDMA, UDMA (urethane dimethacrylate; 7,7,9-trimethyl-4,13-dioxo-3,14-dioxa-5,12-diazahexadecane 1,16-dioxydimethacrylate [0169]), HDDMA, and BPO (dibenzoyl peroxide [0174]) [Ex. 1; 0180; Table 1, paste 2]. Oldenburger et al. (US ‘168) discloses the colored paste were introduced into molds at a pressure of 100 bar (10 MPa) and a reduced pressure of -0.85 bar (-0.085 MPa). The resulting layered block was cured at 250 bar (25 MPa) and 120 oC [Ex. 3; 0186-0198]. Oldenburger et al. (US 2019/0247168) does not disclose a process employing different colored materials having a particle size of 0.1 mm to 5 mm and combining the at least two layers at a pressure of 0.5 MPa to 5 MPa with sufficient specificity. Such a reconstruction of the claims would be based on improper hindsight reasoning.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-18 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Oldenburger et al. (US 2019/0247168) was relied on for disclosing a milling blank having a continuous shade gradient [abstract], wherein Example 3 [Ex. 3; 0186-0198] prepares colored pastes 2-A1, 2-A2 and 2-A3 from uncolored composite paste 2 [Ex. 1; 0180; Table 1, paste 2] by coloring with pigments and homogenizing in a kneader at 50 rpm [Ex. 3; 018; 0186-0198]. Oldenburger et al. (US ‘168) discloses composite paste 2 was prepared by kneading a mixture until homogenous containing dental glass 1 (barium aluminum borosilicate, silanized; D50 0.8 µm [0171]), dental glass 2 (barium aluminum borosilicate, silanized; D50 2.7 µm [0172]), 40 nm SiO2 (silanized [0173]), Bis-EMA2.6, TCDDMA, UDMA (urethane dimethacrylate; 7,7,9-trimethyl-4,13-dioxo-3,14-dioxa-5,12-diazahexadecane 1,16-dioxydimethacrylate [0169]), HDDMA, and BPO (dibenzoyl peroxide [0174]) [Ex. 1; 0180; Table 1, paste 2]. Oldenburger et al. (US ‘168) discloses the colored paste were introduced into molds at a pressure of 100 bar (10 MPa) and a reduced pressure of -0.85 bar (-0.085 MPa). The resulting layered block was cured at 250 bar (25 MPa) and 120 oC [Ex. 3; 0186-0198].
While Oldenburger et al. (US ‘168) does not specifically disclose the colored materials having a particle size of 0.1 mm to 5 mm, one of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to have employed a particle size of 0.1 mm to 5 mm in the product of Oldenburger et al. (US ‘168) since such a modification would have involved a change in the size of the component and a change of size is generally recognized as being within the level of ordinary skill in the art. In re Rose , 220 F.2d 459, 105 USPQ 237 (CCPA 1955) [see MPEP 2144.04]. See also In Gardner v. TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984), the Federal Circuit held that, where the only difference between the prior art and the claims was a recitation of relative dimen-sions of the claimed device and a device having the claimed relative dimensions would not perform differ-ently than the prior art device, the claimed device was not patentably distinct from the prior art device [see MPEP 2144.04].
The examiner notes claim 10 is a dental gradient color-resin ceramic restoration material prepared by the method of claim 1; i.e. a product-by-process claim. “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) [See MPEP 2113].
“The Patent Office bears a lesser burden of proof in making out a case of prima facie obviousness for product-by-process claims because of their peculiar nature” than when a product is claimed in the conventional fashion. In re Fessmann, 489 F.2d 742, 744, 180 USPQ 324, 326 (CCPA 1974). Once the examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product. In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1983) [see MPEP 2113].
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.
See attached form PTO-892.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL F PEPITONE whose telephone number is (571)270-3299. The examiner can normally be reached on 7:00 AM - 3:30 PM.
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/MICHAEL F PEPITONE/Primary Examiner, Art Unit 1767