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 .
Examiner Notes
Claims 1, 3-20 are currently pending. Claim 1 has been amended, claim 2 has been cancelled and claims 18-20 are newly added.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-9, 14, 16 and 18-20 are rejected under 35 U.S.C. 102(a)(1) and/or 35 U.S.C. 102(a)(2) as being anticipated by Volkl et al. (US 2017/0189146).
Regarding claim 1, Volkl discloses a dental restoration blank (0010; instant to-be-processed body) for density and for preparing a dental prosthesis (0023). Volkl teaches the blank comprising an incisal region (32) and dentin core (34; cervical region) (0112). Volkl does not expressly teach satisfying L3>L1 and L3>L2 on a straight line extending along a first direction from one end P corresponding to an incisal region to the other end Q corresponding to a cervical region of the to-be-processed body where L1, L2, and L3 are the final L* according to L*a*b* color system over a black background across the line as claimed. However, applicants specification teaches that final L* means a value of L* being exhibited by dental prosthesis fitted to a patient after being prepared by processing and firing of the to-be-processed body (0017). The claimed invention is directed to a to-be-processed body, and not the final product after processing. Consequently, the recitation in the claims of L3>L1 and L3>L2 on the straight line extending from one end P to the other end Q and L3-L1 is 0.2 or more and 5.0 or less and L3-L2 is 0.2 or more and 4.0 or less are merely an intended use. Applicants attention is drawn to MPEP 2111.02 which states that intended use statements must be evaluated to determine whether the 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 intended use recited in the present claims does not result in a structural difference between the presently claimed invention and the prior art and further that the prior art structure is capable of performing the intended use. Given that Volkl discloses to-be-processed body as presently claimed including have an incisal and cervical region, well as comprising the same material (e.g., zirconia and yttria: 0037), it is clear that the dental blank of Volk would be capable of performing the intended use, i.e. satisfying the claimed color system relationships, presently claimed as required in the above cited portion of the MPEP.
Regarding claims 3-4 and 18-20, as discussed above, applicants specification teaches that final L* means a value of L* being exhibited by dental prosthesis fitted to a patient after being prepared by processing and fibbing of the to-be-processed body (0017). The claimed invention is directed to a to-be-processed body, and not the final product after processing. Claims 3-4 and 18-20 are directed to final L* values which are an intended use of the claimed to-be-processed body.
Applicants attention is drawn to MPEP 2111.02 which states that intended use statements must be evaluated to determine whether the 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 intended use recited in the present claims does not result in a structural difference between the presently claimed invention and the prior art and further that the prior art structure is capable of performing the intended use. Given that Volkl discloses to-be-processed body as presently claimed, it is clear that the dental blank of Volk would be capable of performing the intended use, i.e. satisfying the claimed color system relationships, presently claimed as required in the above cited portion of the MPEP.
Regarding claim 5, Volkl does not expressly teach a1<a3<a2 and b1<b3<b2 where a1, a2, a3, b1, b2, and b3 are the final a* and b* according to L*a*b* color system over a black background across the line as claimed. However, applicants specification teaches that final a* and final b* mean values of a* and b* exhibited by a dental prosthesis fitted to a patient after preparation (0022). The claimed invention is directed to a to-be-processed body, and not the final product after processing. Consequently, claim 5 is merely an intended use. Applicants attention is drawn to MPEP 2111.02 which states that intended use statements must be evaluated to determine whether the 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 intended use recited in the present claims does not result in a structural difference between the presently claimed invention and the prior art and further that the prior art structure is capable of performing the intended use. Given that Volkl discloses to-be-processed body as presently claimed, it is clear that the dental blank of Volk would be capable of performing the intended use, i.e. satisfying the claimed color system relationships, presently claimed as required in the above cited portion of the MPEP.
Regarding claim 6, Volkl teaches the blank having a multilayer structure comprising three different layer compositions (Fig. 4, 0103).
Regarding claim 7, Volkl teaches the blanks having a cuboid or disk shape (0109).
Regarding claim 8, as the first point can be anywhere from the one end to 25% of the entire length, the second point can be anywhere from the other end to 25% of the entire length and the third point is anywhere laying between the first and second points, from Fig. 4 of Volkl, each layer of the different composition can comprise the first, second, and third points as claimed. E.g., the first point lies in the uncolored region, the second point lies in the dentin core, and the third point lies in the little colored/uncolored region.
Regarding claims 9 and 16, Volkl teaches the blank comprising a molded/pre-sintered zirconium dioxide stabilized with yttrium oxide (0037, 0045).
Regarding claim 14, Volkl further teaches wherein the amount of stabilizer different in each layer (0045, 0048-0049).
Claim Rejections - 35 USC § 103
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.
Claims 10-11 are rejected under 35 U.S.C. 103 as being unpatentable over Volkl as applied to claim 9 above, and further in view of Yamada et al. (US 2016/0081777).
Regarding claim 10, Volkl discloses the limitations of claim 9 as discussed above. Volkl does not teach the zirconia being predominantly monoclinic in crystal system.
Yamada, in the analogous field of to-be-processed dental bodies (0013), teaches a pre-sintered zirconia body comprising predominately monoclinic crystals (0085, 0123, Table 38).
A person of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious for the zirconia of Volkl to be pre-sintered and predominately monoclinic crystal phase as taught by Yamada, to increase the flexural strength of the body (0010).
Regarding claim 11, as Yamada teaches monoclinic zirconia at least a part of the stabilizer would not be dissolved in the zirconia as a solid solution as claimed, otherwise the monoclinic form would not be present.
Claims 12-13, and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Volkl.
Regarding claim 12, Volkl discloses the limitations of claim 1 as discussed above. Volkl further teaches wherein the Y2O3 content in the first layer ranges from 4.5 to 7.0 wt% and in the second layer from 7.0 to 9.5 wt% (0044). As both layers include a common value (e.g., 7.0 wt%) there is an overlapping range in which the two layers will comprise substantially the same content of stabilizer relative to the total mole of the zirconia and the stabilizer.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have selected the overlapping portion of the ranges disclosed by the reference because overlapping ranges have been held to be a prima facie case of obviousness, In re Wertheim, 191 USPQ 90, In re Woodruff, 16 USPQ2d 1934, and In re Peterson, 65 USPQ2d 1379. MPEP 2144.05.
Regarding claim 13, Volkl teaches the layers being colored with at least one color-imparting oxide (0038) and that the second layer is less-colored than the first layer (0045, 0048).
Regarding claim 15, Volkl discloses the limitations of claim 9 as discussed above. Volkl further teaches wherein the Y2O3 content in the first layer ranges from 4.5 to 7.0 wt% and in the second layer from 7.0 to 9.5 wt% (0044). As both layers include a common value (e.g., 7.0 wt%) there is an overlapping range in which the two layers will comprise substantially the same content of stabilizer relative to the total mole of the zirconia and the stabilizer.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have selected the overlapping portion of the ranges disclosed by the reference because overlapping ranges have been held to be a prima facie case of obviousness, In re Wertheim, 191 USPQ 90, In re Woodruff, 16 USPQ2d 1934, and In re Peterson, 65 USPQ2d 1379. MPEP 2144.05.
Claim 17 is rejected under 35 U.S.C. 103 as being unpatentable over Volkl as applied to claim 16 above and further in view of Yamada et al. (US 2014/03528746).
Regarding claim 17, Volkl discloses the limitations of claim 16 as discussed above. Volkl teaches where the yttria content in one layer is higher than in the other (0048-0049), thus, in a line from one end P to the other end Q, the one end P would have a higher yttria content (e.g., Fig. 4). Volkl however does not teach the content of yttria in the layer including the one end P is 3.5 mol% to 6.5 mol% or that the content of yttria in the layer including said other end Q is 2.5 mol% to 4.5 mol% relative to the total mole of the zirconia and the yttria.
Yamada, in the analogous field of dental bodies (0002), teaches a zirconia sintered body comprising yttria stabilizing agent, where the yttria content is 2.5 mol% to 5 mol% relative to the total mole of zirconia and yttria (0040), overlapping each of the claimed ranges at one end P and other end Q.
A person of ordinary still in the art before the effective filing date of the claimed invention would have found it obvious to have selected from the yttria range as taught in Yamada, for the yttria amount in the layers of Volkl, to achieve good flexural strength and fracture toughness without inhibit phase transition.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have selected the overlapping portion of the ranges disclosed by the reference because overlapping ranges have been held to be a prima facie case of obviousness, In re Wertheim, 191 USPQ 90, In re Woodruff, 16 USPQ2d 1934, and In re Peterson, 65 USPQ2d 1379. MPEP 2144.05.
Response to Arguments
Applicant’s arguments and the Declaration filed 10/03/2025 have been fully considered but they are not persuasive.
Applicant argues that the L1, L2, and L3 values in the claims are not intended uses but describe intrinsic characteristics of the claimed body.
Applicant has not provided evidence tying the claimed final L* values to a structure in the to-be-process body such that the final L* values would be an intrinsic property as argued. The specification defines the values as being those exhibited by a dental prosthesis fitted to a patient after being prepared by processing and firing of the to-be-processed body for dentistry (0017). Indeed, the specification teaches that the L* values of the to-be-processed body may be different from the final L* values (0017). There does not appear to be any correlation between structures of the to-be-processed body and that of the final L* values. Even in cases where the L* values of the to-be-processed body are the same as those of the final L* values, it is not clear what structure of the to-be-processed body must be necessarily present to achieve the claimed values.
The arguments and the Declaration further argue that Volkl does not meet the claimed limitations.
As discussed above, the claimed L1, L2, and L3 values are maintained as an intended use of the to-be-processed body. Volkl teaches a blank having incisal and cervical region (0112) and thus as best understood, meets all the claimed structural features. Please note while applicant appears to have a specific interpretation of the claimed line, it is not structural, and may be arbitrarily placed anywhere on a blank surface extending from any incisal region to any cervical region.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALICIA WEYDEMEYER whose telephone number is (571)270-1727. The examiner can normally be reached M-Th 9-4.
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/ALICIA J WEYDEMEYER/Primary Examiner, Art Unit 1781