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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 7/31/2026 has been entered.
Status of Claims
This action is in reply to the Amendments/Response filed on July 31, 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 July 31, 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. In pursuit of compact prosecution, a new rejection is set forth applying Franke et al. (US PG Pub No. 20180126515) in view of Lowder et al. (US PG Pub No. 20060068358).
Response to Arguments
The applicant’s arguments, see pages 4-6, filed July 31, 2026 have been fully considered.
Claim Rejections under 35 U.S.C. 103: While applicant’s arguments are directed towards the prior art of Jensen in view of Gorokohovsky, no longer relied upon within the rejection set forth in present action, the thrust of the arguments are still considered while not found persuasive.
The applicant’s amendment, stating that the safety factor of 2 expresses the number of times of expected used before failure is accepted, yet presents 112(b) indefiniteness issues.
The applicant has not specified what constitutes/is required in order to “fully mill a dental prothesis…before failure.” The scope (number of teeth, sizing of each tooth, extent of the tooth whether partial or complete milling) of a dental prothesis has not been specified within the applicant’s disclosure. Further, it is unclear what defines failure of the bur, whether it is breaking, or not milling at an anticipated rate, or causing damage to a blank due to deterioration of the bur.
That being said, the remark that the safety factor is a “measured performance, not merely a proxy for physical dimensions” is ineffective as the applicant’s specification shows that the anticipated number of successfully milled blanks (i.e. the factor of safety) is correlated to the dimensions and characteristics of the bur being used. The amendment additionally is problematic as the safety factor in this instance is not actually known until the milling of blanks is attempted. The applicant remarking that tools with a factor of safety of “2 tend to exhibit certain average parameter values” almost gives the claim essentially a “product by process” standing, wherein what’s being claimed is a tool that has survived the milling of two blanks. Unless the milling of blanks is attempted, this safety factor would not be determinable.
For examination purposes, the recited factor safety a value which should only be found through use/experimentation, is being interpreted as a design parameter, such that the tool is designed to endure at least two millings.
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.
Claims 1-14 are 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.
Claim 1 recites in part “wherein the factor of safety is a number of times the milling bur can fully mill a dental prosthesis from a fully-sintered zirconia blank before failure…” However, the specification fails to describe what constitutes “failure” and what is required in terms of scope in order to “fully mill a dental prosthesis”.
As claims 2-14 depend upon claim 1, they are similarly rejected.
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 Franke et al. (US PG Pub No. 20180126515) in view of Lowder et al. (US PG Pub No. 20060068358).
In regards to claim 1, Franke discloses
a milling bur (dental bur 200, fig. 2) for milling a fully-sintered zirconia blank to create an on-demand dental prosthesis, the milling bur (dental bur 200, fig. 2) comprising:
a shaft region (shank 220, fig. 2), and
a tip region (head 230, fig. 2) comprising a plurality of grinding particles (abrasive particles 205, fig. 2; [0073]) embedded in a metal coating (metal bond 210, fig. 2; [0001-0002], [0070]) covering at least
a portion of the tip region (see abrasive coverage of head 230, fig. 2), wherein
a coverage-percentage of the grinding particles over a surface area of the tip region of the milling bur (see fig. 2, coverage of the tip shows particles), wherein
a mean height value of the grinding particles (abrasive particles 205, fig. 2; [0073]) on the tip region (head 230, fig. 2) of the milling bur is less than 35 microns ([0073]: preferably less than 80, of which less than 35 is a subset of the range).
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Franke fails to disclose explicitly that the coverage percentage of the grinding particles is at least 25%. However, Lowder discloses a rotary dental tool (100) with shaft (102) and tip (104), wherein the tip surface area is 35-65% covered by diamond grit ([0027], [0034-0035]) embedded in a nickel alloy coating ([0031]):
[0027] At step s16 the grit-coated blank 100 may optionally be inspected to ensure that the percentage of coverage and uniformity are within the desired parameters, preferably less than 65%...
[0031] In other embodiments a conventional electroplate composition, bonding diamond crystals with nickel or other compositions…
[0034] In a preferred embodiment of the present invention a diamond dental instrument produced by the process of FIG. 1… In one embodiment the concentration, of diamond grit is a single layer in the range of about 35-65% surface area coverage…Tools produced according to the present invention also provide a finish that is not only smoother than the coarser instruments but nearly that of prior art finer grit instruments…
[0035] …the lesser coverage and smaller mesh size of diamond crystals actually allows many more crystals to the contact the tooth structure. With more crystals engaged, dulling occurs more slowly and so the dental tool of the present invention initially cuts faster and lasts longer.
Franke and Lowder are considered to be analogous to the claimed invention because they are in the same field of endeavor, dental tools with diamond grit abrasives bonded within an metal alloy coating.
Therefore, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have modified Franke and provide diamond grit covering 35-65% of the surface area of the dental tool tip as taught by Lowder, in order to improve diamond contact with the workpiece, decreasing dulling and improve quality and consistency of the cuts (Lowder [0035]).
Franke fails to disclose explicitly that the milling bur (dental bur 200, fig. 2) has “a factor of safety of at least 2 for milling a dental prosthesis from a fully-sintered zirconia blank,
wherein the factor of safety is a number of times the milling bur (dental bur 200, fig. 2) can fully mill a dental prosthesis from a fully-sintered zirconia blank before failure and is derived from empirical data obtained by a measuring and testing process.”
However, the safety factor, per the applicant’s specification, a milling bur with the characteristics claimed will result in a safety factor 2. Franke as modified meets the required parameters within the applicant’s spec to meet those limitations. Franke as modified discloses a coverage percentage of between 35-65% (as taught by Lowder), which his at least 25%, and less than 80 microns (wherein less than 30 microns is within the range) for the height of the particles .
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. As this has been determined through experimentation, a skilled artisan would expect that the milling bur of Franke would accomplish the same put through the same tests.
Examiner’s Note: Pursuant of MPEP 2144.05, 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, as the ranges claimed lie within the ranges disclosed by Franke, prima facie obvious exists.
In regards to claim 2, Franke 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 (see abrasive particle coverage of head 230 in fig. 2) of the milling bur is at least 33% (wherein 33% or greater is within the range shown by Franke).
In regards to claim 3, Franke 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 (see abrasive particle coverage of head 230 in fig. 2) of the milling bur is at least 40% (wherein 40% or greater is within the range shown by Franke).
In regards to claim 4, Franke 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% (which is within the range of 35-65% disclosed by Franke as modified in view of Lowder).
In regards to claim 5, Franke 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% (which is within the range of 35-65% disclosed by Franke as modified in view of Lowder).
In regards to claim 6, Franke as modified discloses
the milling bur of claim 1, wherein the mean height value of the grinding particles (abrasive particles 205, fig. 2; [0073]) on the tip region (see abrasive particle coverage of head 230 in fig. 2) of the milling bur is less than 30 microns ([0047]: 30 microns or less lies within the range of 80 microns or less).
[0047] In order to achieve fine resolution, the loose powder particles are preferably sized (e.g., by screening) to have a maximum size…even less than or equal to 80 microns, although larger sizes may also be used.
In regards to claim 7, Franke as modified discloses
the milling bur of claim 4, wherein the mean height value of the grinding particles (abrasive particles 205, fig. 2; [0073]) on the tip region (see abrasive particle coverage of head 230 in fig. 2) of the milling bur is less than 30 microns ([0047]: 30 microns or less lies within the range of 80 microns or less).
In regards to claim 8, Franke as modified discloses
the milling bur of claim 5, wherein the mean height value of the grinding particles (abrasive particles 205, fig. 2; [0073]) on the tip region (see abrasive particle coverage of head 230 in fig. 2) of the milling bur is less than 30 microns ([0047]: 30 microns or less lies within the range of 80 microns or less).
In regards to claim 9, Franke as modified discloses
the milling bur of claim 1, wherein the mean height value of the grinding particles (abrasive particles 205, fig. 2; [0073]) on the tip region (see abrasive particle coverage of head 230 in fig. 2) of the milling bur is between 20-25 microns ([0047]: 20-25 microns lies within the range of 80 microns or less).
In regards to claim 10,
the milling bur of claim 4, wherein the mean height value of the grinding particles (abrasive particles 205, fig. 2; [0073]) on the tip region (see abrasive particle coverage of head 230 in fig. 2) of the milling bur is between 20-25 microns ([0047]: 20-25 microns lies within the range of 80 microns or less).
In regards to claim 11, Franke as modified discloses
the milling bur of claim 5, wherein the mean height value of the grinding particles (abrasive particles 205, fig. 2; [0073]) on the tip region (see abrasive particle coverage of head 230 in fig. 2) of the milling bur is between 20-25 microns ([0047]: 20-25 microns lies within the range of 80 microns or less).
In regards to claim 12, Franke as modified discloses
the milling bur of claim 1, wherein the metal coating (metal bond 210, fig. 2; [0001-0002], [0070]) comprises a metal alloy coating ([0001-0002], [0070]).
In regards to claim 13, Franke as modified discloses
the milling bur of claim 12, wherein the metal alloy comprises nickel ([0001], [0002], [0070]).
[0001] The present disclosure broadly relates to methods of making abrasive articles having abrasive particles in a metallic bonding matrix.
[0002] Traditionally, metal bond abrasive articles are made by mixing an abrasive grit, such as diamond, aluminum oxide, cubic boron nitride (cBN), or other abrasive grains with a non-melting metal powder (e.g., tungsten, stainless steel, or others), a melting metal powder (e.g., bronze or copper), or a combination thereof.
[0070] Metal bond abrasive articles and/or abrasive article preforms made according to the present disclosure may comprise a porous metal-containing matrix …Examples of suitable metals that can be made molten and infused into the abrasive article preform include aluminum, indium, brass, bronze, silver, copper, gold, lead, cobalt, magnesium, nickel, zinc, tin, iron, chromium, silicon alloys, alloys of the foregoing, and combinations thereof.
In regards to claim 14, Franke as modified discloses
the milling bur of claim 1, wherein the grinding particles (abrasive particles 205, fig. 2; [0073]) comprise diamond particles ([0045]).
[0045] Specific examples of suitable abrasive materials include aluminum oxide (e.g., alpha alumina) materials (e.g., fused, heat-treated, ceramic, and/or sintered aluminum oxide materials), silicon carbide, titanium diboride, titanium nitride, boron carbide, tungsten carbide, titanium carbide, aluminum nitride, diamond, cubic boron nitride, garnet, fused alumina-zirconia, sol-gel derived abrasive particles, cerium oxide, zirconium oxide, titanium oxide, and combinations thereof.
Conclusion
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
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