DETAILED ACTION
An Office Action was mailed 01/26/2026. Applicant filed a Response on 04/27/2026.
Claims 1-20 are pending. Claims 1-4 and 17-18 are rejected. Claims 5-16 and 19-20 are withdrawn from consideration.
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 .
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-4 and 17-18 in the reply filed on 04/27/2026 is acknowledged.
Claims 5-16 and 19-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 04/27/2026.
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 and 17-18 are rejected under 35 U.S.C. 103 as being unpatentable over Rampf et al, US 10,457,589 B2 (Rampf).
Regarding claims 1-4 and 17-18, Rampf teaches a glass ceramic (i.e., a ceramic material) which has good optical properties, particularly a controllable translucence, as well as good mechanical properties, and thus can be used as a restorative dental material (Rampf; col. 2, lines 31-34).
SiO2
The glass ceramic comprises 53.0 to 75.0, preferably 54.0 to 74.0, particularly 58.0 to 70.0 wt% SiO2 (Rampf; col. 3, lines 1-3). These weight percentages overlap with the claimed 54-68 wt% SiO2 of claims 2 and 17, and 55-65 wt% SiO2 of claims 3 and 18.
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).
Rampf further exemplifies glass ceramic compositions which comprise SiO2 in the proportions of claims 2-3 and 17-18, such as Example 4 in col. 10 which comprises 21.7 wt% SiO2 (Rampf; Table I in col. 9-16, Examples 1-7 and 9-22).
Examiner’s note
Examiner acknowledges that the ceramic materials of claims 17-18 further comprise a rare metal oxide of claim 4. Rampf’s teaching of the rare earth metal oxide is discussed on pages 6-8 below.
Li2O
The glass ceramic comprises 10.0 to 23.0, in particular 11.0 to 20.0 wt% Li2O (Rampf; col. 3, lines 1-3). These weight percentages overlap with the claimed 20-40 wt% Li2O of claims 2-3 and 17-18.
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).
Rampf further exemplifies a glass ceramic composition which comprise Li2O in an amount of 21.7 wt%, which overlaps with the claimed weight range 20-40wt% (Rampf; Table I in col. 9-10 Example 2).
P2O5
The glass ceramic preferably comprises 0 to 8.0, in particular 2.0 to 6.0, and preferably 3.0 to 6.0 wt% P2O5. P2O5 can act as a nucleating agent for the formation of lithium silicate (Rampf; col. 3, lines 17-20). These weight percentage ranges overlap with the claimed 0.2-8 wt% P2O5 of claims 2 and 17, and 0.4-6 wt% P2O5 of claims 3 and 18.
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).
Rampf further exemplifies glass ceramic compositions which comprise P2O5 in the proportions of claims 2-3 and 17-18, such as Example 1 in cols. 9 and 11 which comprises 3.1 wt% P2O5 (Rampf; Table I in col. 9-16, Examples 1 and 3-22).
Na2O
The glass ceramic, in addition to Li2O, comprises further alkali metal oxide MeI2O such as Na2O. The preferred proportion of Na2O is 0 to 3.0 wt%, in particular 0 to 2.0 wt% (Rampf; col. 3, lines 23-37).
0 to 3.0 wt% Na2O overlaps with the narrower claimed 3-6 wt% range of claims 3 and 18, and 0 to 2.0 wt% overlaps with the broader 2-10 wt% range of claims 2 and 17.
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).
Al2O3, B2O3, and rare earth oxides including La2O3
A glass ceramic is preferred which comprises oxide of trivalent elements MeIII2O3, in particular selected from Al2O3, B2O3, rare earth oxides including Y2O3 and the La2O3 of claim 4, and mixtures thereof (i.e., “and/or”) (Rampf; col. 3, lines 60-64).
Preferred amounts include:
0 to 8.0 wt% Al2O3, which overlaps with the 0.2-4 wt% range of claims 2 and 17, and the 0.8-3 wt% range of claims 3 and 18;
0-5 wt% Y2O3 and 0-5 wt% La2O3, which overlaps with the rare earth oxide ranges of 0-4 wt% of claims 2 and 17, and 0.4-3 wt% of claims 3 and 18, and includes the La2O3 of claim 4;
0 to 4.0 wt% B2O3, which overlaps with the 2-6 wt% range of claims 2 and 17, and the 3-5 wt% range of claims 3 and 18 (Rampf; col. 4, lines 1-8).
In a particularly preferred embodiment, the glass ceramic comprises 2.0 to 5.0 wt% Al2O3 (Rampf; col. 4, lines 10-13).
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).
Rampf further exemplifies compositions which comprises Al2O3 in the amounts of claims 2-3 and 17-18, such as Example 21 which comprises 2.9 wt% Al2O3 (Rampf; Table I in col. 9-16, Examples 1 and 3-22).
Rampf exemplifies a composition which comprises 3.1 wt% B2O3, which falls within the ranges of claims 2-3 and 17-18 (Rampf; Table I in col. 11-12, Example 7).
Rampf also exemplifies a composition which comprises the La2O3 of claim 4 in an amount of 1.2 wt%, which falls within the rare earth oxide ranges of claims 2-3 and 17-18. This composition also comprises 65.7wt% SiO2, 13.7wt% Li2O, 3.4 wt% Al2O3 and 4.0 wt% P2O5 (Rampf; Table I in col. 13-14, Example 19).
ZrO2 and Ge2O2
A glass ceramic is preferred which further comprises oxide of tetravalent elements MeIVO2, selected from a group which includes ZrO2, Ge2O2, and mixtures thereof (i.e., “and/or”) as claimed. Preferred amounts for the components are:
ZrO2 in an amount of 0 to 7.0 wt%, which overlaps with the claimed 0.1-5 wt% range of claims 2 and 17, and the 0.2-3 wt% range of claims 3 and 18; and
Ge2O2 in an amount of 0 to 14.0 wt%, which overlaps with the claimed 1-10 wt% of claims 2 and 17, and 2-6wt wt% of claims 3 and 18 (Rampf; col. 4, lines 14-32).
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).
Nb2O5
Moreover, a glass ceramic is preferred which comprises further oxide of pentavalent elements MeV2O5, including the claimed Nb2O5, wherein Nb2O5 is present in an amount of 0 to 3.0 wt% (Rampf; col. 4, lines 33-49). 0 to 3.0 wt% Nb2O5 overlaps with the claimed 2-10 wt% range of claims 2 and 17, and 3-8 wt% range of claims 3 and 18.
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).
The ceramic glass compositions are used in dentistry, in particular for the preparation of dental restorations such as crowns, bridges and abutments (Rampf; col. 9, lines 14-29). The invention further relates to a process for coating a substrate in which ground glass is applied and crystallized, wherein substrates include ZrO2 ceramic (i.e., surface adhesion to dental zirconia as claimed) (Rampf; col. 9, lines 30-41).
Regarding claim 1, while there is no embodiment exemplifying the claimed combination of components/oxides, because Rampf expressly contemplates all the claimed components/oxides may be used in one embodiment since the components/oxides are taught as being used together in the glass ceramics of Rampf, "It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art." In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) (citations omitted) (Claims to a process of preparing a spray-dried detergent by mixing together two conventional spray-dried detergents were held to be prima facie obvious.). See also In re Crockett, 279 F.2d 274, 126 USPQ 186 (CCPA 1960) (Claims directed to a method and material for treating cast iron using a mixture comprising calcium carbide and magnesium oxide were held unpatentable over prior art disclosures that the aforementioned components individually promote the formation of a nodular structure in cast iron.); and Ex parte Quadranti, 25 USPQ2d 1071 (Bd. Pat. App. & Inter. 1992) (mixture of two known herbicides held prima facie obvious).
Regarding claims 2-4 and 17-18, Rampf does not exemplify a ceramic material which comprises the claimed combination of components/oxides in the claimed weight% ranges.
Given that the glass ceramic compositions disclosed by Rampf include components identical to those presently claimed in overlapping weight% ranges as claimed, it would have been obvious to one of ordinary skill in the art to choose the claimed combination of components in the claimed amounts from the teachings of Rampf, including ceramic materials which comprise SiO2, B2O3, GeO2, Al2O3, Li2O, Nb2O5, Na2O, ZrO2, P2O5, and a rare earth oxide, including the claimed La2O3, each in the claimed weight% range, absent some evidence to the contrary. One of ordinary skill in the art would consider the ceramic glass components as disclosed by Rampf to be equivalent and interchangeable and equally suitable, absent a showing of criticality by applicant of the claimed combination.
In MPEP 2141, III, one of the rationales set forth as to “why” the claimed invention would be obvious is choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success. Therefore, given that Rampf discloses a finite number of components and given that the reference discloses all the components being equally applicable and/or preferred, there would be a reasonable expectation of success when using the combination as set forth by the examiner. It is further noted the fact that “..the [prior art] patent discloses a multitude of effective combinations does not render any particular formulation less obvious.….”; See, e.g., Merck & Co. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) See also In re Corkill, 771 F.2d 1496, 1500 (Fed. Cir. 1985) (affirming obviousness rejection of claims in light of prior art teaching that “hydrated zeolites will work” in detergent formulations, even though “the inventors selected the zeolites of the claims from among ‘thousands’ of compounds”).
While there is no disclosure that the ceramic glass of Rampf is “for improving surface adhesion of dental zirconia” as presently claimed (emphasis added), Applicants attention is drawn to MPEP 2111.02 which states that “if the body of a claim fully and intrinsically sets forth all the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction”. Further, MPEP 2111.02 states that statements in the preamble reciting the purpose or intended use of the claimed invention must be evaluated to determine whether the purpose or intended use results in a structural difference between the claimed invention and the prior art. Only if such structural difference exists, does the recitation serve to limit the claim. If the prior art structure is capable of performing the intended use, then it meets the claim.
It is the examiner’s position that the preamble does not state any distinct definition of any of the claimed invention’s limitations, and that the purpose or intended use, i.e. for improving surface adhesion of dental zirconia, recited in the present claims does not result in a structural difference between the presently claimed invention, and further that the prior art structure which is identical to that set forth in the present claims is capable of performing the recited purpose or intended use.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Beall et al, US 2019/0177210, discloses ZrO2-toughened glass ceramics which may comprise the following in mole%: 55-65% SiO2, 22-32% Li2O, 0-5% Na2O, 0-5% Al2O3, 0-5% B2O3, 0-3% La7O3, 5-10% ZrO2, 0-5% P2O5, 0-1% Nb2O5 and 0-5% GeO2 (Abstract and Table 3 on page 19).
Ritzberger et al, US 2020/0069399 A1, teaches a glass ceramic blank for dental purposes which may comprise SiO2, LiO2, Al2O3, P2O5, Na2O, ZrO2, B2O3, La2O3, GeO2 and Nb2O5 (Abstract; [0037], [0039], [0040], [0054]).
Hengst et al, US 2020/0262738 A1, teaches glass ceramic compositions which may comprise 46-77 wt% SiO2; 2.0-6.0 wt% Al2O3; 0.3-0.7 wt% terbium oxide; 0-18 wt% LiO2; 0-8 wt% Na2O; 0-5.0wt% B2O3; 0-2.0 wt% La2O3; 0-2.0 wt% Ga2O3; 0-8 wt% ZrO2; 0-5 wt% GeO2; 0-5 wt% P2O5 and 0-5.0 wt% Nb2O5 ([0016], [0017], [0021], [0022], [0023], [0026], [0027] and [0029]).
Ritzberger et al, US 10,501,366 B2, as relied upon in the restriction requirement mailed 01/26/2026.
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/CDL/Examiner, Art Unit 1732 /PAMELA H WEISS/Primary Patent Examiner, Art Unit 1732
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