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 .
Response to Amendment
The reply filed on December 5, 2025 has been entered into the prosecution for the application. Currently, claims 1-2, 4-6, and 9-10 are pending. Claims 1-2 and 4-6 have been amended. Claims 3 and 7-8 have been cancelled. Claims 9-10 are new.
The previous objections to claims 1, 2, and 6 are withdrawn as moot in view of the amendments to those claims.
All prior art grounds of rejection are withdrawn.
Applicant’s amendments necessitated the new ground(s) of rejection.
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 2 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.
The terms “densified,” “reduced,” and “fine” in claim 2 are relative terms which render the claim indefinite. The terms “densified,” “reduced,” and “fine” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 1-2, 4-6, and 9 are rejected under 35 U.S.C. 103 as being unpatentable over DD 247574 A3 to Berger et al. (with reference to the provided machine translation, hereinafter “Berger”) in view of U.S. Pat. Pub. 2004/0043053 to Yu et al. (hereinafter “Yu”), with evidence, as to claim 4, from U.S. Pat. Pub. 2004/0087429 to Ogawa et al. (hereinafter “Ogawa”).
Regarding claim 1, Berger teaches a glass ceramic comprising 30 wt% to 50 wt% CaO, 27 wt% to 53 wt% SiO2, and 2 wt% to 20 wt% P2O5 (Abstract); thus, for each of the listed component oxides, Berger teaches a range that overlaps the claimed range. In a case where claimed ranges “overlap or lie inside ranges disclosed by the prior art,” a prima facie case of obviousness exists (see MPEP 2144.05). Berger teaches that the glass ceramic is obtained by a method including melting and thermal decomposition of a glass composite (p. 2), cooling the glass (p. 3, “Example”), and subsequently sintering the glass at a temperature of 900°C to 1050°C (p. 3, line 2). (One of ordinary skill in the art would understand that the “further heating” at 900°C to 1050°C described on page 3 of Berger is synonymous with sintering.) Berger teaches wherein the glass ceramic comprises precipitated apatite crystals and wollastonite crystals (p. 2, “Features of the Invention”; Abstract).
Berger does not explicitly teach that the glass ceramic is obtained by a method that includes quenching the melted glass in water. However, Yu, in the same field of endeavor, teaches a process for obtaining a glass ceramic comprising CaO, SiO2, and P2O5 (see ¶¶ 0035, 0040; Table 1; claim 2), wherein the process includes quenching the melted glass in water (¶ 0035). It would have been obvious to one of ordinary skill in the art to modify Berger by adding a step in the method of obtaining the glass ceramic of quenching the melted glass in water, as taught by Yu. Motivation to add a water quenching step would come from a desire to accomplish cooling of the melted glass rapidly (see Yu at ¶ 0035). One of ordinary skill in the art would have recognized that applying the known technique of water quenching would have yielded predictable results and resulted in an improved method for obtaining the glass ceramic (see MPEP 2143(I)(D)).
Thus, in view of Berger as modified by Yu, a glass ceramic reading on every limitation of claim 1 would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention.
Regarding claim 2, Berger as modified by Yu teaches the glass ceramic of claim 1, as set forth above. Given the substantial similarity in composition between the prior art glass ceramic and the claimed invention, and given the substantially identical processes by which the glass ceramics are obtained (including in particular the substantially overlapping temperature range at which sintering takes place), one of ordinary skill in the art reasonably would expect that the glass ceramic of Berger as modified by Yu will exhibit the same material properties as the claimed invention, including a densified microstructure having reduced pore content and a fine crystal morphology, since products of identical composition are presumed not to have mutually exclusive properties (MPEP 2112.01(II)). 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 obviousness has been established (see MPEP 2112.01(I), first paragraph).
Regarding claim 4, Berger as modified by Yu teaches the glass ceramic of claim 1, as set forth above. Given the substantial similarity in composition between the prior art glass ceramic and the claimed invention, and given the substantially identical processes by which the glass ceramics are obtained (including in particular the substantially overlapping temperature range at which sintering takes place), one of ordinary skill in the art reasonably would expect that the glass ceramic of Berger as modified by Yu will exhibit the same material properties as the claimed invention—including precipitated wollastonite crystals comprising both α-wollastonite and β-wollastonite—since products of identical composition are presumed not to have mutually exclusive properties (MPEP 2112.01(II)). 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 obviousness has been established (see MPEP 2112.01(I), first paragraph). Here, that prima facie case is bolstered by evidence from Ogawa, which discloses that a glass ceramic comprising mostly CaO and SiO2, with some P2O5 (Comparative Example 4, p. 4, Table 2) includes precipitated wollastonite crystals comprising both α-wollastonite and β-wollastonite (see p. 5, Table 4).
Regarding claim 5, Berger as modified by Yu teaches the glass ceramic of claim 1, as set forth above. Given the substantial similarity in composition between the prior art glass ceramic and the claimed invention, and given the substantially identical processes by which the glass ceramics are obtained (including in particular the substantially overlapping temperature range at which sintering takes place), one of ordinary skill in the art reasonably would expect that the glass ceramic of Berger as modified by Yu will exhibit the same material properties as the claimed invention—including the precipitated apatite crystals comprising hydroxyapatite—since products of identical composition are presumed not to have mutually exclusive properties (MPEP 2112.01(II)). 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 obviousness has been established (see MPEP 2112.01(I), first paragraph).
Regarding claim 6, Berger as modified by Yu teaches wherein the glass ceramic is obtained from a homogenized mixture (Berger, p. 3), and therefore one of ordinary skill in the art reasonable would expect that the resulting glass ceramic comprising apatite and wollastonite crystals would have those apatite and wollastonite crystals uniformly distributed throughout the glass ceramic.
Regarding claim 9, Berger as modified by Yu teaches the glass ceramic according to claim 1, as set forth above. Given the substantial similarity in composition between the prior art glass ceramic and the claimed invention, and given the substantially identical processes by which the glass ceramics are obtained (including in particular the substantially overlapping temperature range at which sintering takes place), one of ordinary skill in the art reasonably would expect that the glass ceramic of Berger as modified by Yu will exhibit the same material properties as the claimed invention—including wherein crystallization of apatite and wollastonite occurs within a temperature range of from 900°C to 1100°C—since products of identical composition are presumed not to have mutually exclusive properties (MPEP 2112.01(II)). 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 obviousness has been established (see MPEP 2112.01(I), first paragraph). Here, that prima facie case is bolstered by evidence from Yu, which teaches that a glass ceramic comprising CaO, SiO2, and P2O5 (namely, the described “CERA glass” of Comparative Example 1) exhibits crystallization at 1000°C (see p. 4, Table 2), within the claimed range, with the crystals including apatite and wollastonite (see ¶¶ 0016-0017).
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Berger in view of Yu as applied to claim 1 above, and further in view of U.S. Pat. No. 4,652,534 to Kasuga (hereinafter “Kasuga”).
Regarding claim 10, Berger as modified by Yu teaches the glass ceramic according to claim 1, as set forth above. Berger as modified by Yu does not explicitly teach wherein the amount of wollastonite crystals is less than 50 wt% of the total precipitated crystalline phases. However, Kasuga, in the same field of endeavor, teaches that “apatite crystal contributes to biocompatibility and the wollastonite crystal contributes to mechanical strength” (Col. 1, lines 36-38) and that the amount of wollastonite crystal precipitated in the glass ceramic is influenced by the weight percent content of P2O5 and SiO2 (see Col. 2, lines 25-32). Thus, one of ordinary skill in the art, in the course of selecting component weight percentages from the taught ranges in Berger noted above (see p. 3), and in the course of routine experimentation and optimization, would find it obvious, in view of the teachings of Kasuga, to adjust the contents of P2O5 and SiO2 within the glass ceramic composition so as to produce a final product in which the amount of wollastonite crystals is less than 50 wt% of the total precipitated crystalline phases. One of ordinary skill in the art would be motivated to look to the teachings of Kasuga to modify further the glass ceramic of Berger as modified by Yu by a desire to adjust the mechanical strength of the glass ceramic, as taught by Kasuga (Col. 1, lines 37-38).
Response to Arguments
Applicant’s arguments with respect to the pending claim(s) have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument. In particular, Applicant’s arguments distinguishing the amended claim 1 from the teachings of Kasuga are moot because the new ground of rejection relies upon Kasuga only as a secondary reference in the rejection of dependent claim 10 and only for the limited teaching that the amount of wollastonite crystal precipitated in the glass ceramic is influenced by the weight percent content of P2O5 and SiO2 (see above)—matter not challenged in Applicant’s argument.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
U.S. Pat. No. 5,676,720 to Ducheyne et al. (“Ducheyne”) teaches a method of forming a porous glass ceramic substrate, comprising the steps of melting an admixture consisting essentially of 40-60 wt% SiO2, 5-30 wt% Na2O, 10-35 wt% CaO, and up to 12 wt% P2O5; quenching the melted admixture to form glass; and crystallizing the glass into a glass ceramic having more than one crystalline phase (see claim 9).
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.
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/P.A.F./Examiner, Art Unit 1731
/JENNIFER A SMITH/Primary Patent Examiner, Art Unit 1731