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 .
Status of Claims
This action is in reply to the Amendments/Response filed on March 16, 2026. Claim 1 has been amended. No additional claims have been added. No claims have been cancelled. Claims 1-14 are currently pending and have been examined.
Response to Amendments
The examiner fully acknowledges the amendments to claim 1 filed on March 16, 2026.
The applicant’s amendments to claim 1 are sufficient to overcome the 35 U.S.C. 103 as being unpatentable over Jensen (US PG Pub No. 20110207081) in view of Gorokhovsky (US PG Pub No. 20040018468) as presented in the previous action. However, the amendment is not sufficient to overcome the art applied.
Response to Arguments
The applicant’s arguments, see pages 4-5, filed March 16, 2026 have been fully considered.
Claim Rejections under 35 U.S.C. 103: Applicant remarks on page 4 that “factor of safety” is a number of times the milling bur can fully mill a dental prosthesis from a fully sintered zirconia blank. Applicant’s amendment requires the apparatus of claim 1 to have “a factor of safety of at least 2”. While “factor of safety” is typically understood to detail the ratio between the yield stress of a component compared with the working stress, the applicant may be their own lexicographer. Per the applicant’s specification, a factor of safety of 2 comprises “a coverage percentage of at least 25% of the surface area of the tip….a mean tip height of grinding particles which can be less than 30 microns.”
As those are parameters that are required to obtain a safety factor of, Jensen in view of Gorokhovsky meets those limitations. Jensen discloses a coverage percentage of 50% or more ([0024]), and between 10-40 microns for the height of the particles (Table 1) in a rough dimension finish. As those fall with the specified range, a skilled artisan would recognize that tool of Jensen as modified would have a safety factor of 2 when put through the same stresses that occur will milling zirconia blanks. The applicant’s arguments have been fully considered, but not persuasive.
As previously state, while not explicitly called a milling bur, the tool of Jensen has the particles and structure for being used with dental workpieces, including the applicant’s recited material. A skilled artisan would recognize the tool of Jensen as been capable of being used to mill zirconia blanks due to the materials employed, and meeting the description of the elements recited within the claim.
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.
6. Claim(s) 1-14 are rejected under 35 U.S.C. 103 as being unpatentable over Jensen (US PG Pub No. 20110207081) in view of Gorokhovsky (US PG Pub No. 20040018468).
In regards to claim 1, Jensen discloses
a milling bur (endodontic drill bit 100, fig. 1) for milling a fully-sintered zirconia blank to create an on-demand dental prosthesis, the milling bur (endodontic drill bit 100, fig. 1) comprising:
a shaft region (shank 102, fig. 1), and
a tip region (cutting portion 104, fig. 1) comprising a plurality of grinding particles (abrasive grit 112, fig. 1) embedded in
a coverage-percentage of the grinding particles over a surface area of the tip region of the milling bur is at least 25% ([0024]; 50% is greater than at least 25%).
[0024] The surface density of the abrasive grit 112 can vary from one embodiment to the next to achieve various degrees of abrasiveness. As illustrated in FIG. 1, the surface density of the abrasive grit 112 can be about 50% or more of the land portion's 108 surface area. In other example embodiments, the surface density of the abrasive grit 112 can be higher such that up to about 100% of the surface area of the land portion 108 is the abrasive grit 112.
Jensen fails to explicitly disclose “a metal coating covering at least a portion of the tip region.” However, Jensen does disclose metal being used for the structure of the dentistry tool, as well as metal bonding being a means for attaching abrasive grit:
[0007] Conventional endodontic drill bits used to make the postholes are similar to what can be considered conventional metal or wood drill bits.
[0023] The material with which the abrasive grit 112 is formed can vary from one embodiment to the next. For example, in one embodiment the abrasive grit 112 is formed from a diamond material. For example, the diamond material, such as diamond powder, can be positioned on the land 108 by sintering, metal bonding, resin bonding or any other bonding technique.
Gorokhovsky, which is directed towards protective coatings for abrasive dental tools and Burs, discloses :
[0004] The abrasive polycrystalline layer of polycrystalline diamond particles can be formed or deposited on the metallic shank in known ways, such as polycrystalline diamonds embedded in a nickel or nickel alloy matrix, or alternatively, embedded in a coating of polyurethane or similar hard polymer applied as a base coating onto the appropriate portion of the shank.
[0009] In one embodiment of the invention a tough polymer coating, which is capable of withstanding the conditions of sterilization, is applied to encapsulate the polycrystalline diamond layer directly after manufacturing, or after depositing the diamond layer over the appropriate surface of the shank or substrate. The protective capabilities of the polymer coating can be further increased by admixing hard ceramic materials of very small particles size in amounts up to 40 wt. % based on the weight of the polymer in the coating.
[0010] In another embodiment of the invention a malleable metallic layer, such as nickel, copper or an alloy of nickel or/and copper, or an alloy of copper-tin-titanium, which is softer than diamonds, is deposited by known means over the layer of polycrystalline diamond directly after manufacturing and/or subsequent to depositing the diamond layer over the appropriate surface of the shank or substrate.
Gorokhovsky teaches nickel alloy ([0010]) as means for providing coating for depositing abrasive diamonds on dentistry tools, including bur tools.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective date of the claimed invention to have applied the teaching of Gorokhovsky and provide nickel coating as the means for metal bonding in the dentistry tool of Jensen, providing a protective coating for the tool and means for adhering the abrasive grit, since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice (see MPEP 2144.07 In re Leshin, 125 USPQ 416).
Jensen fails to explicitly disclose that “wherein a mean height value of the grinding particles on the tip region (cutting portion 104, fig. 1) of the milling bur is less than 35 microns.”
However, Jensen does teach certain ranges for particle dimensions of abrasives, particularly that abrasives used in Rough Dimension Finish will range between 10-40 microns, see Table 1.
TABLE-US-00001
Grain Size Surface Finish
0.25 to 2 micron Super Fine
2 to 4 micron General Polish
4-10 micron Course Finish
10-40 micron Rough Dimension Finish
40-120+ micron Very Rough Finish
The ranges of less than 35 microns and 10-40 microns overlap. As such, pursuant of MPEP 2144.05.I, In the case where the claimed ranges “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). Therefore, the claimed range is considered obvious in view of Jensen, as it discloses range values that overlap with the claimed range.
Jensen fails to explicitly disclose “a factor of safety of at least 2.” However, Jensen in view of Gorokhovsky meets the required parameters within the applicant’s spec to meet those limitations. Jensen discloses a coverage percentage of 50% or more, which his at least 25% ([0024]), and between 10-40 microns (wherein less than 30 microns is within the range) for the height of the particles (Table 1) in a rough dimension finish. As those fall with the specified range, a skilled artisan would recognize that tool of Jensen as modified would have a safety factor of 2 when put through the same stresses that occur will milling zirconia blanks.
Examiner’s Note:
The preamble recites a milling bur “for milling a fully-sintered zirconia blank to create an on-demand dental prosthesis.” The recitation of the limitation “for milling a fully-sintered zirconia blank to create an on-demand dental prosthesis” and later “for milling a dental prosthesis from a full-sintered zirconia blank” is being examined as a term of intended use, see MPEP 2111.02-II, In re Otto, 312 F.2d 937, 938, 136 USPQ 458, 459. (PRIOR ART) discloses the structure of a shaft region, tip region, diamond abrasives, and a metal coating seating the diamond abrasives--. Therefore, the (prior art device) of (prior art) is hereinafter interpreted to be a milling bur capable of “milling a fully-sintered zirconia blank to create an on-demand dental prosthesis”, meeting therefore the claim limitations.
Pursuant of MPEP 2115, claim analysis is understood as highly fact-dependent, thus is only limited by positively recited elements. Therefore, the inclusion of the material or article worked upon by a structure being claimed does not impart patentability to the claims. In re Otto, 312 F.2d 937, 136 USPQ 458, 459; see also In re Young, 75 F.2d 996, 25 USPQ 69. As such, Jensen as modified does not need to explicitly disclose “a fully-sintered zirconia blank,” though its disclosure does present the structure and configuration capable of performing dental work upon the zirconia blank.
In regards to claim 2, Jensen as modified discloses
the milling bur of claim 1, wherein the coverage-percentage of the grinding particles over a surface area of the tip region of the milling bur is at least 33% ([0024]: the surface density of the abrasive grit 112 can be about 50% or more of the land portion’s 108 surface area).
In regards to claim 3, Jensen as modified discloses
the milling bur of claim 1, wherein the coverage-percentage of the grinding particles over a surface area of the tip region of the milling bur is at least 40% ([0024]: the surface density of the abrasive grit 112 can be about 50% or more of the land portion’s 108 surface area).
In regards to claim 4, Jensen as modified discloses
the milling bur of claim 1, wherein the coverage-percentage of the grinding particles over a surface area of the tip region of the milling bur is between 25% - 55% ([0024]: the surface density of the abrasive grit 112 can be about 50% or more of the land portion’s 108 surface area, which overlaps with the range of 25-55%).
In regards to claim 5, Jensen as modified discloses
the milling bur of claim 1, wherein the coverage-percentage of the grinding particles over a surface area of the tip region of the milling bur is between 35% - 60% ([0024]: the surface density of the abrasive grit 112 can be about 50% or more of the land portion’s 108 surface area, which overlaps with the range of 25-60%).
In regards to claim 6, Jensen as modified discloses
the milling bur of claim 1, wherein the mean height value of the grinding particles on the tip region of the milling bur is less than 30 microns (which overlaps with the range of 10-40 microns of Rough Dimension Finish, see Table 1).
In regards to claim 7, Jensen as modified discloses
the milling bur of claim 4, wherein the mean height value of the grinding particles on the tip region of the milling bur is less than 30 microns (which overlaps with the range of 10-40 microns of Rough Dimension Finish, see Table 1).
In regards to claim 8, Jensen as modified discloses
the milling bur of claim 5, wherein the mean height value of the grinding particles on the tip region of the milling bur is less than 30 microns (which overlaps with the range of 10-40 microns of Rough Dimension Finish, see Table 1).
In regards to claim 9, Jensen as modified discloses
the milling bur of claim 1, wherein the mean height value of the grinding particles on the tip region of the milling bur is between 20-25 microns (which overlaps with the range of 10-40 microns of Rough Dimension Finish, see Table 1).
In regards to claim 10, Jensen as modified discloses
the milling bur of claim 4, wherein the mean height value of the grinding particles on the tip region of the milling bur is between 20-25 microns (which overlaps with the range of 10-40 microns of Rough Dimension Finish, see Table 1).
In regards to claim 11, Jensen as modified discloses
the milling bur of claim 5, wherein the mean height value of the grinding particles on the tip region of the milling bur is between 20-25 microns (which overlaps with the range of 10-40 microns of Rough Dimension Finish, see Table 1).
In regards to claim 12, Jensen as modified discloses
the milling bur of claim 1, wherein the metal coating comprises a metal alloy coating (per teaching provided by Gorokhovsky).
In regards to claim 13, Jensen as modified discloses
the milling bur of claim 12, wherein the metal alloy comprises nickel (per teaching provided by Gorokhovsky).
In regards to claim 14, Jensen as modified discloses
the milling bur of claim 1, wherein the grinding particles comprise diamond particles ([0023]).
[0023] The material with which the abrasive grit 112 is formed can vary from one embodiment to the next. For example, in one embodiment the abrasive grit 112 is formed from a diamond material. For example, the diamond material, such as diamond powder,
Conclusion
THIS ACTION IS MADE FINAL. 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 JASON KHALIL HAWKINS whose telephone number is (571)272-5446. The examiner can normally be reached M-F; 8-5PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Brian Keller can be reached at (571) 272-8548. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JASON KHALIL HAWKINS/Examiner, Art Unit 3723
/BRIAN D KELLER/Supervisory Patent Examiner, Art Unit 3723
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