DETAILED ACTION
Claim(s) 1-6 and 8-15 was/were rejected in Office Action mailed on 11/19/2025.
Applicant filed a response, amended claim(s) 1, 9-10 and 28, canceled claim(s) 16-18 and 20-22 and added claim(s) 23-28 on 02/05/2026.
Claim(s) 1-6, 8-15 and 23-28 are pending.
Claim(s) 1-6, 8-15 and 23-28 are rejected.
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.
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 1-6, 8-15 and 23-28 are rejected under 35 U.S.C. 103 as being unpatentable over Reinshagen et al., US 2014/0135200 A1 (Reinshagen), provided in IDS received on 04/27/2023.
Regarding claims 1 and 5, Reinshagen teaches a method of coloring ceramic, wherein a granular material is brought into contact with a solution which contains metal ions and/or metal complexes, in the production of a shaped body of dental ceramic (Reinshagen, Abstract), therefore the solution reads upon a coloring solution for coloring a dental ceramic.
Reinshagen further teaches the solution contains metal ions or metal complexes with as least one of the elements including cobalt (Co) and erbium (Er) (Reinshagen, [0036]).
Given that Reinshagen discloses the solution that overlaps the presently claimed coloring solution, including cobalt metal ions or complexes and erbium metal ions of complexes, it therefore would be obvious to one of ordinary skill in the art, to use the solution, which is both disclosed by Reinshagen and encompassed within the scope of the present claims and thereby arrive at the claimed invention.
Further regarding claims 1 and 9-10, as applied to claim 1, Reinshagen further teaches the metal ions are preferably contained in the solution in a concentration between 0.01 wt.% and 70 wt.% (Reinshagen, [0042]). i.e., in the case of Er and Co, Er ions in a concentration between 0.01 wt.% and 70 wt.%, and Co ions in a concentration between 0.01 wt.% and 70 wt.%.
Given elemental mass of Er (167 g/L) and Co (59 g/L), a density of solution of 1 g/L for estimation, it can be calculated the content of Er ions is: 0.6-4192 mmol/L (i.e., 0.01*10/167*1000=0.6 mmol/L; 70*10/167*1000=4192 mmol/L); and the content of Co ions is: 1.7-11864 mmol/L (0.01*10/59*1000=1.7 mmol/L; 70*10/59*1000=11864 mmol/L), which encompasses or overlaps the ranges of the presently claimed.
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).
Regarding claims 2-3, as applied to claim 1, the recitation in the claims that the wherein a dental ceramic after coloring with the coloring solution and sintering has an a* of 4.5 to 15.0, and a b* of -5.0 to 10 in (L*,a*,b*) according to L*a*b*color system, wherein L* in (L*,a*,b*) according to L*a*b*color system is 65 to 95, 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 Reinshagen discloses the coloring solution as presently claimed, it is clear that the coloring solution of Reinshagen would be capable of performing the intended use, i.e. used to treat a dental ceramic wherein a dental ceramic after coloring with the coloring solution and sintering has an a* of 4.5 to 15.0, and a b* of -5.0 to 10 in (L*,a*,b*) according to L*a*b*color system, and wherein L* in (L*,a*,b*) according to L*a*b*color system is 65 to 95, presently claimed as required in the above cited portion of the MPEP, and thus, one of ordinary skill in the art would have arrived at the claimed invention.
Regarding claim 4, as applied to claim 1, Reinshagen further teaches the solution which is provided for doping or coloring advantageously contains metal ions or metal complexes of alkaline earth metals, in particular of calcium and/or magnesium; alternatively or in addition, aluminium ions or aluminium complexes can also be contained (Reinshagen, [0037]).
Regarding claims 6 and 8, as applied to claim 1, it is noted that the present claims are drawn to a product and not drawn to a method of making. Thus, “[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). Further, “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.
Therefore, absent evidence of criticality regarding the presently claimed process, i.e., wherein the Er component is a component derived from at least one selected from the group consisting of erbium chloride hydrate, erbium perchlorate hydrate, erbium nitrate hydrate, erbium oxalate hydrate, and erbium acetate hydrate; and wherein the Co component is a component derived from at least one selected from the group consisting of cobalt(II) chloride hydrate, cobalt(II) perchlorate hydrate, cobalt(II) fluoride hydrate, cobalt(II) nitrate hydrate, cobalt(II) oxalate hydrate, and cobalt(II) acetate hydrate, and given that Reinshagen meets the requirements of the claimed product, Reinshagen clearly meets the requirements of the present claim.
However, the examiner still considers how the Er component and how the Co component are derived. Reinshagen further teaches the solution can be produced in that a corresponding metal salt is dissolved in the corresponding solvent; the corresponding salt, in particular nitrates, are preferably used as starting materials (Reinshagen, [0038]).
Reinshagen further teaches a very wide variety of solvents can be used as solvents, in particular, water on its own or water mixed with organic polar solvents, preferably alcohols (Reinshagen, [0040]).
Therefore, when the corresponding nitrates are dissolved in solvent comprising water, nitrate hydrate would necessarily be formed.
Regarding claims 11-12, as applied to claim 1, Reinshagen further teaches a very wide variety of solvents can be used as solvents, in particular, water on its own or water mixed with organic polar solvents, preferably alcohols (Reinshagen, [0040]).
Regarding claims 13-15, as applied to claim 1, the recitation in the claims wherein the dental ceramic comprises zirconia as a main component; wherein the dental ceramic further comprises yttria; and wherein the content of the yttria is 1.5 to 10 mol% relative to a total mole of the zirconia and the yttria, 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 Reinshagen discloses the coloring solution as presently claimed, it is clear that the coloring solution of Reinshagen would be capable of performing the intended use, i.e. used to color a dental ceramic, wherein the dental ceramic comprises zirconia as a main component, wherein the dental ceramic further comprises yttria; and wherein the content of the yttria is 1.5 to 10 mol% relative to a total mole of the zirconia and the yttria, presently claimed as required in the above cited portion of the MPEP, and thus, one of ordinary skill in the art would have arrived at the claimed invention.
Regarding claims 23-25 and 26-28, as applied to claims 2 and 3 respectively, however, the recitation in the claims that the color solution is for coloring a dental ceramic, wherein the dental ceramic comprises 50% or more by mass of zirconia, wherein the dental ceramic further comprises yttria, wherein the content of the yttria is 1.5 to 10 mol% relative to a total mole of the zirconia and the yttria, 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 Reinshagen discloses the coloring solution as presently claimed, it is clear that the coloring solution of Reinshagen would be capable of performing the intended use, i.e. for coloring a dental ceramic, wherein the dental ceramic comprises 50% or more by mass of zirconia, wherein the dental ceramic further comprises yttria, wherein the content of the yttria is 1.5 to 10 mol% relative to a total mole of the zirconia and the yttria, presently claimed as required in the above cited portion of the MPEP, and thus, one of ordinary skill in the art would have arrived at the claimed invention.
Response to Arguments
In response to the amended claim 1, specifically, wherein: a content of the Er component in the coloring solution is 110 to 310 mmol/L in terms of an Er ion, and a content of the Co component in the coloring solution is 0.0340 to 1.70 mmol/L in terms of a Co ion, the previous nonstatutory double patenting rejections are withdrawn from record.
Applicant primarily argues:
“Applicants submit that this bare disclosure is incapable of suggesting a coloring solution as presently claimed having an Er component in a content of 110 to 310 mmol/L and a Co component in a content of 0.0340 to 1.70 mmol/L. For example, Reinshagen is silent regarding suggested metal ion/metal complex amounts except for paragraph [0071], which uses 30 grams of iron (111) nitrate nonahydrate in 80 g demineralized water, providing a (30/404) / (80/1000) = 0,93 M. or 930 mmol/L, solution. This disclosure clearly does not suggest a solution containing both Er and Co in amounts of 110 to 310 mmol/L and 0.0340 to 1.70 mmol/L, respectively.”
Remarks, p. 9-10
The Examiner respectfully traverses as follows:
Firstly, “applicant must look to the whole reference for what it teaches. Applicant cannot merely rely on the examples and argue that the reference did not teach others.” In re Courtright,
377 F.2d 647, 153 USPQ 735,739 (CCPA 1967).
Secondly, Er and Co are from a list of metal ions, the fact remains that it would have been obvious to choose any at least one from the list, including Er and Co. Absent evidence to the contrary. Further, the mere fact that a reference teaches alternatives does not by itself render any particular alternative any less obvious. See Merck, 874 F.2d at 807; Susi, 440 F.2d at 445; Kubin, 561 F.3d at 1359.
Thirdly, Reinshagen further teaches the metal ions are preferably contained in the solution in a concentration between 0.01 wt.% and 70 wt.% (Reinshagen, [0042]). i.e., in the case of Er and Co, Er ions in a concentration between 0.01 wt.% and 70 wt.%, and Co ions in a concentration between 0.01 wt.% and 70 wt.%.
Given elemental mass of Er (167 g/L) and Co (59 g/L), a density of solution of 1 g/L for estimation, it can be calculated the content of Er ions is: 0.6-4192 mmol/L (i.e., 0.01*10/167*1000=0.6 mmol/L; 70*10/167*1000=4192 mmol/L); and the content of Co ions is: 1.7-11864 mmol/L (0.01*10/59*1000=1.7 mmol/L; 70*10/59*1000=11864 mmol/L), which encompasses or overlaps the ranges of the presently claimed, as set forth on page 18 of Office Action mailed
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, absent evidence to the contrary, 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).
Applicant further argues:
“Moreover, Applicants have shown unexpected and surprising results for their claimed combination of Er and Co components.”
Remarks, p. 10-12
“The data and results described in this application and in Comparative Examples 4 and 5 above are both surprising and unexpected, and show that the coloring solution described in Claim 1 above using particular amounts of Er and Co has provided a solution to a longstanding problem in the art regarding the provision of both pink coloration and strength in a dental ceramic, simultaneously.”
Declaration, p. 2-5
The Examiner respectfully traverses as follows:
The data to show advantageous effects by the coloring solution in the present invention is not persuasive for the following reasons.
Firstly, the data is not commensurate in scope with the scope of the claims. The data in the specification only provides support for a coloring solution for coloring a dental ceramic, comprising a coloring component and specific solvent with specific amounts, wherein the coloring component comprises an Er component and a Co component; while the claim broadly recites a coloring solution for coloring a dental ceramic, comprising a coloring component and any solvent with any amounts, wherein the coloring component comprises an Er component and a Co component.
Further, the data does not show using the upper- and lower-ends of a content of the Er component in the coloring solution is 110 to 310 mmol/L in terms of an Er ion, anda content of the Co component in the coloring solution is 0.0340 to 1.70 mmol/L in terms of a Co ion. 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 content of the Er component in the coloring solution is 110 to 310 mmol/L in terms of an Er ion, anda content of the Co component in the coloring solution is 0.0340 to 1.70 mmol/L in terms of a Co ion.
Therefore, the Examiner has fully considered Applicant’s arguments, but they are found unpersuasive.
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 KELING ZHANG whose telephone number is (571)272-8043. The examiner can normally be reached Monday - Friday: 9:00am-5:00pm EST.
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/KELING ZHANG/
Primary Examiner
Art Unit 1732
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