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 .
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.
Invitation for an Interview with the Examiner
If Applicant believes anything herein is incorrect or unclear the Examiner encourages Applicant to schedule a telephonic interview.
Response to Arguments
Applicant's arguments filed 12/17/2025 have been fully considered but they are not persuasive.
Applicant first argues that the “socket 120” of Okumura does not necessarily constitute a recess and, therefore, is not a receptacle within the meaning of the process step A) of present claim 1 and there is not insertion of the prosthetic teeth into the receptacle with in meaning of process step D), and no subsequent pressing of the prosthetic teeth into the receptacle within the meaning of process step E) (pg 9 last paragraph through pg 10 para 3). The Examiner respectfully disagrees. During examination, the pending claims must be given their broadest reasonable interpretation consistent with the specification. See MPEP 2111. Fig. 15C appears to show a receptacle within the meaning stated in the claim, with areas 114 functioning as the sides of the receptacle.
Applicant next argues that Okumura teaches injecting the acrylic resin into the interstices between the sockets and the artificial teach and contradicts the sequence of steps C), D), and E) and the application of adhesive to the surfaces after step C) (pg 10 para 3). The Examiner respectfully disagrees. In addition to the injection pointed out by Applicant, Okumura further discloses a step of “preliminary adhesion” (paras 0129-0138). Okumura further discloses the preliminary adhesion step as “after the artificial teeth 200 are removed it is easy to apply the composite resin to the sockets 120 of the denture base 100 and re-adhere (preliminarily adhere) the artificial teeth 200 to the denture base 100” (para 0138, emphasis added) and that “putty (e.g., model putty, dental putty), tack label, wheat flour clay, and adhesive metal foil tape, for example, may also be used as the adhesive material” (para 0142). It is the Examiner’s position that at least some of these materials would not be used via injection.
Applicant next argues that Okumura does not disclose that the prosthetic teeth are pressed into the receptacles as required in process step E) (pg 10 para 4). The Examiner respectfully disagrees. As discussed above, Fig. 15C appears to show a receptacle within the meaning stated in the claim, with areas 114 functioning as the sides of the receptacle and Okumura further discloses the preliminary adhesion step as “after the artificial teeth 200 are removed it is easy to apply the composite resin to the sockets 120 of the denture base 100 and re-adhere (preliminarily adhere) the artificial teeth 200 to the denture base 100” (para 0138, emphasis added).
Applicant next argues that Shima teaches a lost wax process and does not glue the prosthetic teach into a finished prosthetic base, therefore not using an adhesive and not teaching “excess adhesive exiting through the lateral opening” (pg 10 last paragraph through pg 11 para 3). The Examiner respectfully disagrees. A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including nonpreferred embodiments. See MPEP 2123.I. As applied to the instant application, the through-hole 3 and air-vent 4 of Shima allow material, such as air or excess flowable material, to escape rather than be trapped under the artificial tooth. It is the Examiner’s position that a person having ordinary skill in the art before the effective filing date of the claimed invention would recognize applying the through-hole and air-vent design of Shima to the preliminary adhesion step of Okumura would enable material, such as air or excess flowable material, to escape rather than be trapped under the artificial tooth.
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 23 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.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 23 recites the broad recitation “has a cross-section of at least 0.3 mm”, and the claim also recites or at least 0.5 mm which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claim 23 further recites the broad recitation “a cross-section of at most 4 mm”, and the claim also recites at most 2 mm which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
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.
Claim(s) 1-8, 10, 18-20, 22, and 23 is/are rejected under 35 U.S.C. 103 as being unpatentable over Okumura (US20190388198A1 – previously of record) in view of Shima (US20160171588A1 – previously of record).
In reference to claims 1, 8, 10, 23, and partially claim 18:
Okumura discloses a method for producing dental prostheses in the form of partial or full dental prostheses (para 0001), wherein each dental prosthesis has a prosthetic base (denture base, para 0001) and at least one dental molding (artificial tooth, para 0001) and wherein the method comprises the following steps:
A) producing a prosthetic base from a gum-colored plastic material (para 0093), wherein the prosthetic base is created with at least one receptacle for at least one dental molding and wherein a protruding pin is created in the at least one receptacle (paras 0105-0108, 0158-0163, Figs. 8A, 8B, 11A, 11B), or
providing a prosthetic base of a gum-colored plastic material (para 0093), wherein the prosthetic base has at least one receptacle for at least one dental molding and wherein a protruding pin is arranged in the at least one receptacle (paras 0105-0108, 0158-0163, Figs. 8A, 8B, 11A, 11B);
B) producing at least one dental molding (para 0119), wherein a basal cavity for receiving the pin is created in the at least one dental molding or the at least one dental molding has a basal cavity for receiving the pin (paras 0158-0163, Fig. 9B showing recessed portion 202);
C) subsequently applying an adhesive into the basal cavity of the at least one dental molding or into the at least one receptacle of the prosthetic base or into the basal cavity of the at least one dental molding and into the at least one receptacle of the prosthetic base (para 0127);
D) subsequently inserting the at least one dental molding into the at least one receptacle of the prosthetic base, such that the protruding pin is arranged inside the basal cavity (paras 0113, 0120-123, Figs. 5 and 7B);
E) subsequently pushing the at least one dental molding into the at least one receptacle (paras 0113, 0120-123, Figs. 5 and 7B; As the dental molding is inserted into the receptacle prior to being fully seated it is the Examiner’s position that the dental molding is subsequently pushed into the receptacle); and
F) subsequently curing the adhesive to definitively connect the at least one dental molding to the prosthetic base (para 0138).
Okumura does not disclose wherein a lateral opening is created in a circumferential surface of the at least one dental molding, such that the basal cavity is accessible via the lateral opening in the circumferential surface of the at least one dental molding and excess adhesive exiting through the lateral opening in the circumferential surface of the at least one dental molding, wherein the lateral opening in the circumferential surface of the at least one dental molding protrudes at least in places in a coronal direction beyond an adjoining gingival margin of the prosthetic base (claim 1), wherein the lateral opening is arranged in the circumferential surface of the at least one dental molding orally (claim 8), wherein the lateral opening in the circumferential surface of the at least one dental molding has a cross-section of at least 0.1 mm (claim 10), wherein the lateral opening is added in such a way in the circumferential surface of the at least one dental molding that the lateral opening in the circumferential surface of the at least one dental molding projects in the coronal direction beyond the gingival margin of the prosthetic base when the at least one dental molding is inserted fully into the receptacle assigned thereto (applies to claim 18 through claim 2), or wherein the lateral opening in the circumferential surface of the at least one dental molding has a cross-section of at least 0.3 mm or at least 0.5 mm and/or the lateral opening in the circumferential surface of the at least one dental molding has a cross-section of at most 4 mm or at most 2 mm (claim 23). However, this would have been obvious in view of Shima. Shima teaches a method for producing dental prostheses (claim 33) and providing a vent to allow air and excess resin to escape from the dental molding (para 00053) providing a dental prostheses without voids and increased adhesion between the base and the dental molding (paras 0035, 0056) wherein the vent is arranged in the circumferential surface orally in order for the vent to not be seen from the outside (para 0028, Fig. 7) and has an inside diameter of 1-3mm (para 0033) and the vent projects in the coronal direction beyond the gingival margin of the prosthetic base when the at least one dental molding is inserted fully into the receptacle (Fig. 7). It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to combine the method of Okumura with the vent of Shima in order to obtain a method which provides a dental prostheses without voids and increased adhesion between the base and the dental molding.
In reference to claim 2 and the remaining elements of claim 18:
In addition to the discussion of claim 1, above, Okumura further discloses wherein, in step B), when producing or basally machining the at least one dental molding, and in step A), when producing the prosthetic base, a virtual 3D model of a dental prosthesis is created or provided with a virtual model of the prosthetic as imitation gum and with at least one virtual model of the at least one dental molding to be arranged in the prosthetic base to reproduce at least one tooth (paras 0099-0100, 0103-0105, 0119).
In reference to claim 3:
In addition to the discussion of claim 2, above, Okumura discloses wherein the dental molding is formed by 3D printing (para 0119). It is the Examiner’s position that Okumura, as modified by Shima, would disclose to a person having ordinary skill in the art wherein the lateral opening in the circumferential surface of the at least one dental molding is added computationally in the virtual model or in the virtual models within the scope of the method.
In reference to claim 4:
In addition to the discussion of claim 1, above, Okumura further discloses wherein in step E) the at least one dental molding is pushed into the at least one receptacle up to a limit stop (para 0161 discussing raised portion 140 mating with cutout portion 210).
In reference to claim 5:
In addition to the discussion of claim 1, above, Okumura further discloses wherein on pushing the at least one dental molding into the at least one receptacle, in step E) the pin is guided in the basal cavity and the at least one dental molding is thereby oriented and positioned relative to the prosthetic base (paras 0162-0163).
In reference to claim 6:
In addition to the discussion of claim 1, above, Okumura further discloses wherein the pin of the at least one receptacle and the basal cavity of the at least one dental molding is produced with rounded structures (para 0069) but does not disclose wherein the rounded structures have a radius of curvature of at least 0.3 mm or has rounded structures with a radius of curvature of at least 0.3 mm. However, it would have been an obvious matter of design choice to that skilled artisan to select a radius of curvature of at least 0.3mm because such a modification would have involved a mere change in the shape of a component. A change in shape is generally recognized as being within the level of ordinary skill in the art. In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966). See MPEP 2144.04 (IV).
In reference to claim 7:
In addition to the discussion of claim 1, above, Okumura further discloses wherein a top surface of the pin of the at least one receptacle and a coronal base surface in the basal cavity of the at least one dental molding have a non-rotationally symmetrical profile or are produced with a non-rotationally symmetrical profile (para 0069).
In reference to claim 19:
In addition to the discussion of claim 18, above, modified Okumura does not explicitly disclose wherein the lateral opening in the circumferential surface the at least one dental molding projects in the coronal direction by at least 0.1 mm beyond the gingival margin of the prosthetic base. However, “where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). As applied to the instant application, Shima discloses the lateral opening projects in the coronal direction beyond the gingival margin of the prosthetic base but does not disclose the distance (Fig. 7). It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to determine the optimum or workable distance by routine experimentation.
In reference to claim 20:
In addition to the discussion of claim 18, above, modified Okumura does not explicitly disclose wherein the lateral opening in the circumferential surface of the at least one dental molding projects in the coronal direction by at least 0.3 mm beyond the gingival margin of the prosthetic base. However, “where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). As applied to the instant application, Shima discloses the lateral opening projects in the coronal direction beyond the gingival margin of the prosthetic base but does not disclose the distance (Fig. 7). It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to determine the optimum or workable distance by routine experimentation.
In reference to claim 22:
In addition to the discussion of claim 1, above, modified Okumura does not explicitly disclose wherein the pin of the at least one receptacle and the basal cavity of the at least one dental molding is produced with rounded structures with a radius of curvature of at least 0.5 mm or has a radius of curvature of at least 0.5 mm. However, “where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). As applied to the instant application, Okumura discloses the use of a pin and a basal cavity having rounded structures and, therefore, a radius of curvature (paras 0158-0163, Figs. 8A, 8B, 9B, 11A, 11B). It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to determine the optimum or workable radius of curvature of the structures by routine experimentation.
Claim(s) 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Okumura and Shima as applied to claim 1, above, and further in view of Weigel (WO2019145100A1 – previously of record).
In addition to the discussion of claim 1, above, modified Okumura does not explicitly teach wherein the adhesive exiting from the lateral opening in the circumferential surface of the at least one dental molding is removed after step E) or before step F) and after step E). However, a rationale to support a conclusion that a claim would have been obvious is that all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would have yielded nothing more than predictable results to one of ordinary skill in the art. KSR Int'l Co. v. Teleflex Inc., 550 U.S. 538, 416, 82 USPQ2d 1385, 1395 (2007) (See MPEP 2143 and 2143.02). As applied to the instant application, Weigel teaches a method for producing a dental prosthesis (title). Weigel further teaches using a slight excess of adhesive and removing any excess adhesive which has oozed out during placement of the dental molding before or after hardening (para 0134-0135). It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to combine the method of modified Okumura with the slight excess of adhesive and removal of excess adhesive which has oozed out, as taught by Weigel, because all of the claimed elements are known in the prior art and the combination yields predictable results, e.g. the excess adhesive is removed for aesthetic or functional reasons.
Claim(s) 21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Okumura and Shima as applied to claim 4, above, and further in view of Pfeiffer (US20060257823A1).
In addition to the discussion of claim 4, above, modified Okuma does not teach wherein the limit stop is formed by a coronal end of the pin and by a mating stop at the coronal base in the basal cavity. However, this would have been obvious in view of Pfeiffer. Pfeiffer teaches a method of producing a dental prosthetic item (abstract). Pfeiffer further teaches using the coronal end of a pin and a mating stop at the coronal base in the basal cavity in order to ensure alignment, desired adhesive layer thickness, and to adjust the adhesive layer according to the desired color profile (spacer 10, paras 0015, 0016, 0023, 0042, 0046; Fig. 2)
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 ANDREW L SWANSON whose telephone number is (571)272-1724. The examiner can normally be reached M-Th 0800-1900 and every other Friday 0800-1600.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Phillip Tucker can be reached at (571)272-1095. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANDREW L SWANSON/Examiner, Art Unit 1745