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 .
Election/Restrictions
Applicant's election with traverse of group I invention with species A4 (claim 1-10 and 14-15) in the reply filed on 10/20/2025 is acknowledged. The traversal is on the ground(s) that there is no serious search burden. This is not found persuasive because the restriction of different inventions is based on such inventions are not so linked to form a single general inventive concept under PCT rule 13.1 as set forth in previous rejections.
The requirement is still deemed proper and is therefore made FINAL.
Claim 11-13 and 16-18 are thus withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention and non-elected species, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 10/20/2025.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 5 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. In this case, claim 5 recites “the V component is a component derived from at least one selected from the group consisting of vanadyl oxalate, vanadyl nitrate, and vanadyl acetate”, one of ordinary skill in the art is uncertain what specific V component (e.g. what vanadium compound) being derived from at least one selected from the group consisting of vanadyl oxalate, vanadyl nitrate, and vanadyl acetate. The specification does not give a clear explanation what derivation or modification being adopted onto such precursor material of vanadyl oxalate, vanadyl nitrate, and vanadyl acetate to obtain the claimed V component either. Therefore, such limitation renders claim indefiniteness. For broadest and reasonable interpretation, such V component is interpreted as any vanadium containing material.
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.
Claim(s) 1-10 and 14-15 are rejected under 35 U.S.C. 103 as obvious over Franke JP2010/534245 (for applicant’s convenience, English equivalent US2010/0221683 has been used for citations).
Franke teaches a coloring solution (for colouring a dental ceramic article) comprising a solvent and a colouring agent (claim 1, para [0068]), wherein the coloring agent comprising rare earth element metals or ions being present in the solution in an amount of at least about 0.05 mol/l solvent, and transition metals or ions being different from the rare earth element metals or ions and being present in the solution in an amount of about 0.00001 to about 0.05 mol/l solvent. Franke further teaches the transition metals are selected from the columns of the Periodic Table of Elements starting with the elements Sc, Ti, V, Cr, Mn, Fe, Co, Ni, Cu and Zn (claim 4, para. [0035]).
Regarding claim 1, it would have been "obvious to try" V (vanadium) as the transition metal elements in the coloring agent because choosing V (vanadium) from a finite number of identified, predictable transition metal elements for help obtaining a desired coloring agent for dental ceramic application would have a reasonable expectation of success (see MPEP § 2143 KSR).
Regarding claim 2 and 5-6, Franke already teaches such limitation as discussed above.
Regarding claim 3, Franke further discloses the metal (including transition metal) ion with valency of +4 can be used in the coloring solution (para. [0036], claim 1-2).
Regarding claim 4, Franke also teaches the colouring agent is a salt comprising metal cations (including transition metal V) and anions, wherein the anions are selected from the group consisting of Cl-, OAc-, N, ONC-, SO42-, gluturate, lactate, gluconate, propionate, butyrate, glucuronate, benzoate and phenolate (para. [0077], claim 2) wherein vanadium acetate, vanadium carboxylate (like gluturate, lactate, etc.) all having at least one vanadium bonded to oxygen atom, therefore, such compounds read onto the instantly claimed oxidovanadium.
Regarding claim 7-8, Franke further teaches the coloring solution having L*, a* and b* within the claimed ranges (para. [0160]-[0162], table 1). Furthermore, Franke already teaches a same or substantially the same composition, therefore, same or substantially the same properties, i.e. the coloring solution having same or substantially the same L*, a* and b* would be expected.
Regarding claim 9-10, Franke further disclosed solvent can be water and/or alcohol or their mixtures (para [0064],[0169], claim 5).
Regarding claim 14, Franke discloses rare earth element selected from include La, Ce, Pr, Nd, Sm, Eu, Gd, Tb, Dy, Ho, Er, Tm, Yb and Lu (para. [0034], [0067], claim 1, 3), wherein Pr or Tb only two alternative choices for rare earth elements. It would have been obvious for one of ordinary skill in the art to "obvious to try" La, Ce, Nd, Sm, Eu, Gd, Dy, Ho, Er, Tm, Yb and Lu as the rare earth elements in the coloring agent because choosing such rare earth elements from a finite number of identified, predictable transition metal elements for help obtaining a desired coloring agent for dental ceramic would have a reasonable expectation of success (see MPEP § 2143 KSR). Therefore, Franke disclosed such coloring solution not having a Pr or a Tb component is envisioned.
Regarding claim 15, Franke also teaches the dental ceramic comprises zirconia as main component (para. [0055], [0138], [0156], claim 14). It is also noted that such dental ceramic component does not structurally limit the instantly claimed coloring solution, thus it cannot render the coloring solution patentable distinct.
Claim(s) 4 and 5 are rejected under 35 U.S.C. 103 as obvious over Franke JP2010/534245 (for applicant’s convenience, English equivalent US2010/0221683 has been used for citations) as applied above, and in view of Matsuura (CA3079805).
Regarding claim 4-5, in arguendo about Franke does not expressly teach vanadium compound being oxidovandium or being derived from vanadyl oxalate.
Matsuura teaches vanadium compound such as vanadium (IV) oxide, vanadium (IV)oxy acetylacetonate, vanadyl oxalate, vanadyl sulfate can be used in dental composition (para. [0084], [0100]).
It would have been obvious for one of ordinary skill in the art to adopt such well-known oxidovanadium compound of vanadyl oxalate and/or vanadyl sulfate as shown by Matsuura to practice the vanadium compound of Franke because adopting such well-known oxidovanadium compound used in dental composition to modify the coloring solution for improvement would have predictable results (see MPEP § 2143 KSR).
It would have been obvious for one of ordinary skill in the art to adopt such well-known V component derived from vanadyl oxalate and/or vanadyl sulfate as shown by Matsuura to practice the vanadium compound of Franke because adopting such well-known V component (in dental composition) derived from vanadyl oxalate and/or vanadyl sulfate to modify the coloring solution for improvement would have predictable results (see MPEP § 2143 KSR).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claim 1-2 and 5, 7-10, 14-15 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-10 and 17 of co-pending Application No. 18/029,692 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because co-pending application’692 teaches a substantially the same coloring solution comprising a solvent, a coloring component (claim 1) which can be at least one selected from a V component, a Ni component, an Al component, a Co component, an Er component, a Cr component and a Mn component (claim 10). It would have been "obvious to try" V component in the coloring agent because choosing V component from a finite number of identified, predictable coloring components for help obtaining a desired coloring agent for dental ceramic would have a reasonable expectation of success (see MPEP § 2143 KSR). As for the claimed L*, a* and b* in claim 7-8, co-pending application’692 already teaches a same or substantially the same composition, therefore, same or substantially the same properties, i.e. the coloring solution having same or substantially the same L*, a* and b* would be expected. As for claim 14 recited not having Pr or Tb, it is noted that such component just alternative choices for coloring component, therefore, a coloring component not having such component (e.g. having a V component) is envisioned.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim 3-4 and 6 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-10 and 17 of co-pending Application No. 18/029,692 (reference application) as applied above, and in view of Franke JP2010/534245 (for applicant’s convenience, English equivalent US2010/0221683 has been used for citations). Co-pending applicatoin’692 does not expressly teach the V component having IV or V valency or V component being an oxidovanadium compound or V component content. Franke teaches such limitations as discussed above. It would have been obvious for one of ordinary skill in the art to adopt a V component having valency of IV and V component being oxidovanadium as shown by Franke to practice the V component of co-pending application’692 because adopting such well-known IV valency of vanadium compound and/or oxidovanadium or V component content as shown by Franke to modify a well-known coloring solution for improvement would have predictable results (see MPEP § 2143 KSR).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim 1-2 and 5, 7-10, 14-15 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-2, 11-15 and 17, 21, 36-38 of co-pending Application No. 18/037,644 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because co-pending application’644 teaches a substantially the same coloring solution comprising a solvent, a coloring component which can be at least one component selected from “Al, K….. V……Tb and Er” (claim 1). It would have been "obvious to try" V component in the coloring agent because choosing V from a finite number of identified, predictable coloring components for help obtaining a desired coloring agent for dental ceramic would have a reasonable expectation of success (see MPEP § 2143 KSR). As for the claimed L*, a* and b* in claim 7-8, co-pending application’644 already teaches a same or substantially the same composition, therefore, same or substantially the same properties, i.e. the coloring solution having same or substantially the same L*, a* and b* would be expected. As for claim 14 recited not having Pr or Tb, it is noted that such component just alternative choices for coloring component, therefore, a coloring component not having such component (e.g. having a V component) is envisioned.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim 3-4 and 6 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-2, 11-15 and 17, 21, 36-38 of co-pending Application No. 18/037,644 (reference application) as applied above, and in view of Franke JP2010/534245 (for applicant’s convenience, English equivalent US2010/0221683 has been used for citations). Co-pending applicatoin’644 does not expressly teach the V component having IV or V valency or V component being an oxidovanadium compound or V component content. Franke teaches such limitation as discussed above. It would have been obvious for one of ordinary skill in the art to adopt a V component having valency of IV and V component being oxidovanadium as shown by Franke to practice the V component of co-pending application’644 because adopting such well-known IV valency of vanadium compound and/or oxidovanadium or V component content as shown by Franke to modify a well-known coloring solution for improvement would have predictable results (see MPEP § 2143 KSR).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
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/JUN LI/ Primary Examiner, Art Unit 1732