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 Objections
Claims 21-22 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claim 21 is directed towards the glass ceramic according to claim 2, wherein the elemental copper is present in the form of particles which have an average size D50 of 0.1 to 100 nm.
Claim 22 is directed towards the glass ceramic according to claim 16, wherein the elemental copper is present in the form of particles which have an average size D50 of 0.1 to 100 nm.
The closest prior art is Beall et al. (US20200377404, hereinafter referred to as Beall). Beall is directed towards a glass ceramic based on lithium disilicate (see Beall at [0003]). Beall discloses CuO (see Beall at [0009]) and SnO (see Beall at [0058]). However, Beall does not disclose or make obvious the elemental copper is present in the form of particles which have an average size D50 of 0.1 to 100 nm.
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.
Claim(s) 16 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Stookey et al.
Regarding claim 16, Stookey discloses a lithium silicate glass ceramic comprising 0.001 to 1.0 wt.% copper, calculated as CuO (see Stookey at Col. 2, lines 8-9, disclosing 0.001-1% of copper computed as Cu2O, which is the claimed range.).
While Stookey does not explicitly disclose the copper is at least partially present as elemental copper, this is a function of the presence of a reducing agent such as SnO or SnO2 as detailed by the instant specification at [0025]. Stookey discloses copper oxide as detailed in the rejection of claim 1 above, and discloses small amounts of SnO2 (See Stookey at Col. 2, line 32), which would inherently cause the copper to be at least partially present as elemental copper as detailed by the instant specification at [0025]. Therefore the invention of Stookey inherently possesses the claimed feature. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established (see MPEP 2112.01(I) first paragraph).
While Stookey does not explicitly disclose the glass ceramic is in the form of a dental restoration, wherein the dental restoration comprises a bridge, inlay, onlay, veneer, abutment, partial crown, crown, or facet, the intended use of the claimed composition does not patentably distinguish the composition, per se, since such undisclosed use is inherent in the reference composition. In order to be limiting, the intended use must create a structural difference between the claimed composition and the prior art composition. In the instant case, the intended use does not create a structural difference, thus the intended use is not limiting. Please note that where applicant claims a composition in terms of a function, property or characteristic and the composition of the prior art is the same as that of the claim but the function is not explicitly disclosed by the reference, the examiner may make a rejection under both 35 U.S.C. 102 and 103 (See MPEP 2112(III)).
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.
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.
Claim(s) 1-4 and 6-16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Beall et al. (US20200377404, hereinafter referred to as Beall).
Regarding claim 1, Beall discloses a lithium silicate (see Beall at [0003], disclosing glass ceramics based on ... lithium disilicate) glass ceramic (see Beall at the Abstract, disclosing a glass-ceramic) comprising 0.001 to 1.0, wt.-% copper, calculated as CuO (see Beall at [0009], disclosing in wt.%, 0.01 to 5 of ... CuO, which overlaps with the claimed range.) In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists (see MPEP 2144.05), and 0.05 to 1.5 wt.-% tin, calculated as SnO (see Beall at [0058], disclosing the composition further comprises from 0.05 to 0.5 wt.% SnO, which is within the claimed range.).
Regarding claim 2, While Beall does not explicitly disclose the copper is at least partially present as elemental copper, this is a function of the presence of a reducing agent such as SnO or SnO2 as detailed by the instant specification at [0025]. Beall discloses copper oxide as detailed in the rejection of claim 1 above, and discloses SnO per the rejection of claim 1 above, which would inherently cause the copper to be at least partially present as elemental copper as detailed by the instant specification at [0025]. Therefore the invention of Beall inherently possesses the claimed feature. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established (see MPEP 2112.01(I) first paragraph).
Regarding claim 3, Beall discloses which comprises 67.0 to 89.0 wt.-% SiO2 (see Beall at [0008], disclosing in wt %: SiO2 in an amount of from 55 to 80, which overlaps with the claimed range.).
Regarding claim 4, Beall discloses which comprises 7.0 to 22.0 wt.-% Li2O (see Beall at [0008], disclosing Li2O in an amount of from 5 to 20, which overlaps with the claimed range.).
Regarding claim 6, Beall discloses which comprises 0.1 to 6.0 wt.-% Al2O3 (see Beall at [0008], disclosing Al2O3 in an amount of from 2 to 20, which overlaps with the claimed range.).
Regarding claim 7, Beall discloses which comprises 1.0 to 11.0 wt.-% oxide of monovalent elements MeI2O selected from the group of K2O, Na2O, Rb2O, Cs2O and mixtures thereof (see Beall at [0047], disclosing the glass or glass-ceramic composition can comprise from 0 to 5 wt % ... K2O which overlaps with the claimed range.).
Regarding claim 8, Beall discloses which comprises 0 to 11.0 wt.% K2O (see Beall at [0047], disclosing the glass or glass-ceramic composition can comprise from 0 to 5 wt % ... K2O which is within the claimed range.).
Regarding claim 9, Beall discloses which comprises 0 to 10.0 wt.-% oxide of divalent elements MeIIO selected from the group of CaO, MgO, SrO, ZnO and mixtures thereof (see Beall at [0052], disclosing glass-ceramics described herein can comprise from 0 to 8 wt % MgO, which is within the claimed range.).
Regarding claim 10, Beall discloses which comprises 0.1 to 12.0 wt.-% oxide of trivalent elements MeIII2O3 selected from the group of Al2O3, B2O3, Y2O3, La2O3 and mixtures thereof (see Beall at [0008], disclosing Al2O3 in an amount of from 2 to 20, which overlaps with the claimed range.).
Regarding claim 11, Beall discloses which comprises lithium disilicate or lithium metasilicate as main crystal phase (see Beall at [0040], disclosing the lithium silicate crystalline phase may be lithium disilicate or lithium metasilicate ... the weight percentage of the lithium silicate crystalline phase in the glass-ceramic compositions can be in a range from 20 to 60 wt %, which overlaps with the claimed range.).
Regarding claim 12, Beall discloses which comprises at least 10 wt.-% lithium metasilicate crystals (see Beall at [0040], disclosing the lithium silicate crystalline phase may be lithium disilicate or lithium metasilicate ... the weight percentage of the lithium silicate crystalline phase in the glass-ceramic compositions can be in a range from 20 to 60 wt %, which overlaps with the claimed range.).
Regarding claim 13, Beall discloses comprising at least 50 wt.-% lithium disilicate crystals (see Beall at [0040], disclosing the lithium silicate crystalline phase may be lithium disilicate or lithium metasilicate ... the weight percentage of the lithium silicate crystalline phase in the glass-ceramic compositions can be in a range from 20 to 60 wt %, which overlaps with the claimed range.).
Regarding claim 14, Beall discloses a starting glass, which comprises the components of the glass ceramic (see Beall at [0003], disclosing precursor glass).
Regarding claim 15, Beall discloses which comprises nuclei for the crystallization of lithium metasilicate and/or lithium disilicate (see Beall at [0048], disclosing P2O5 can function as a nucleating agent to produce bulk nucleation of the crystalline phase(s) from the glass).
Regarding claim 16, Beall discloses a lithium silicate glass ceramic comprising 0.001 to 1.0 wt.% copper, calculated as CuO (see Beall at [0009], disclosing in wt.%, 0.01 to 5 of ... CuO, which overlaps with the claimed range.).
While Beall does not explicitly disclose the copper is at least partially present as elemental copper, this is a function of the presence of a reducing agent such as SnO or SnO2 as detailed by the instant specification at [0025]. Beall discloses copper oxide as detailed in the rejection of claim 1 above, and discloses SnO per the rejection of claim 1 above, which would inherently cause the copper to be at least partially present as elemental copper as detailed by the instant specification at [0025]. Therefore the invention of Beall inherently possesses the claimed feature. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established (see MPEP 2112.01(I) first paragraph).
While Beall discloses dental applications (see Beall at [0041], Beall does not explicitly disclose the glass ceramic is in the form of a dental restoration, wherein the dental restoration comprises a bridge, inlay, onlay, veneer, abutment, partial crown, crown, or facet. However, Examiner notes [t]he intended use of the claimed composition does not patentably distinguish the composition, per se, since such undisclosed use is inherent in the reference composition. In order to be limiting, the intended use must create a structural difference between the claimed composition and the prior art composition. In the instant case, the intended use does not create a structural difference, thus the intended use is not limiting. Please note that where applicant claims a composition in terms of a function, property or characteristic and the composition of the prior art is the same as that of the claim but the function is not explicitly disclosed by the reference, the examiner may make a rejection under both 35 U.S.C. 102 and 103 (See MPEP 2112(III)). In the instant case, the undisclosed use of being a dental restoration comprises a bridge, inlay, onlay, veneer, abutment, partial crown, crown, or facet would be inherent in the glass ceramic of Beall.
Response to Arguments
Applicant’s arguments, see Page 5 of the Remarks, filed 01/07/2025, with respect to the rejection(s) of claim(s) 1 in view of Stookey and Jingwen under 103 have been fully considered and are persuasive. Therefore, the rejection of claim 1 has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Beall as detailed above.
At page 5 of the Remarks, Applicant further argues that Stookey and Jingwen do not anticipate or make obvious claim 16. Examiner agrees that Jingwen does not disclose the SnO or SnO2 content required for elemental copper to be present in a composition comprising CuO, and therefore the rejection of claim 16 over Jingwen is withdrawn. However, for the reasons stated in the 102 rejection above, Examiner respectfully disagrees that claim 16 as amended has avoided Stookey as prior art because the intended use of a claimed composition does not distinguish the composition since the undisclosed use is inherent in Stookey. Additionally, claim 16 is rejected in view of Beall as detailed above.
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 CAMERON K MILLER whose telephone number is (571)272-4616. The examiner can normally be reached M-F 8:00am - 5:00pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Amber Orlando can be reached at (571) 270-3149. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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CAMERON K MILLER
Examiner
Art Unit 1731
/CAMERON K MILLER/Examiner, Art Unit 1731