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 .
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-13 in the reply filed on 03/30/2026 is acknowledged.
Claim Rejections - 35 USC § 102
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 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) 1, 3-5, and 8-12 is/are rejected under 35 U.S.C. 102(a)(1)as being anticipated by EP2868634B1 (submitted by applicants on 02/01/2024; for convenience, US20160236971A1 is cited).
Regarding claims 1, 4-5 and 8, US20160236971A1 discloses lithium disilicate-apatite glass ceramic for dental application, which comprises lithium disilicate as main crystal phase and apatite as further crystal phase. See abstract, [0065], [0066] and examples 14-18
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Regarding claim 3, US20160236971A1 discloses the glass ceramic in the form of dental restorations, such as bridges, inlays, onlays, crowns, veneers, facets or abutments. See [0065-66].
Regarding claims 9 - 10, US20160236971A1 discloses that the lithium disilicate-apatite glass ceramic has in particular a fracture toughness, measured as KIC value, of at least about 1.5 MPa·m0.5 and in particular at least about 1.8 MPa·m0.5. See [0040].
Regarding claim 11-12, 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. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
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.
Claim(s) 1-6, 8-13 is/are rejected under 35 U.S.C. 103 as being unpatentable over EP2868634B1 (for convenience, US20160236971A1 is cited).
Regarding claims 1-2, and 4-6, US20160236971A1 discloses Lithium disilicate-apatite glass ceramic, which comprises lithium disilicate as main crystal phase and apatite as further crystal phase, and which comprises:
52.0 to 75.0 wt.-% SiO2,
0 to 4.0 wt.-% Al2O3,
4.0 to 8.0 wt.-% P2O5,
2.5 to 8.5 wt.-% CaO,
10.0 to 20.0 wt.-% Li2O,
Na2O, K2O, Rb2O, Cs2O and mixtures thereof in an amount of from 0 to 12.0 wt.-%, and
0.5 to 8.5 wt.-% transition metal oxide such as ZrO2..See claims 1-11 and [0033].
The reference differs from Applicant's recitations of claims by not disclosing identical ranges. However, the reference discloses "overlapping" ranges, and overlapping ranges have been held to establish prima facie obviousness (MPEP 2144.05).
Regarding claim 3, US20160236971A1 discloses the glass ceramic in the form of dental restorations, such as bridges, inlays, onlays, crowns, veneers, facets or abutments. See [0065]. The reference differs from Applicant's recitations of claims by not disclosing identical ranges. However, the reference discloses "overlapping" ranges, and overlapping ranges have been held to establish prima facie obviousness (MPEP 2144.05).
Regarding claim 8, US20160236971A1 discloses that the glass ceramic comprises 0.1 to 1.5 wt.-% F. See claim 8.
Regarding claims 9 - 10, US20160236971A1 discloses that the lithium disilicate-apatite glass ceramic has in particular a fracture toughness, measured as KIC value, of at least about 1.5 MPa·m0.5 and in particular at least about 1.8 MPa·m0.5. See [0040].
Regarding claim 11-12, US20160236971A1 discloses that the glass ceramic has a high biaxial breaking strength of in particular at least about 200 and preferably at least about 300 MPa. The biaxial breaking strength was determined according to ISO 6872 (2008). The Examiner respectfully submits that although the prior art does not disclose the claimed properties, the claimed properties are deemed to naturally flow from the structure in the prior art, since the prior art combination teaches an invention with a substantially similar structure and chemical composition as the claimed invention. The burden is on the Applicants to prove otherwise. Furthermore, the Examiner respectfully submits that the U.S. Patent Office is not equipped with analytical instruments to test prior art compositions for the infinite number of ways that a subsequent applicant may present previously unmeasured characteristics. When as here, the prior art appears to contain the substantial ingredients and applicant's own disclosure supports the suitability of the prior art composition as the inventive composition component, the burden is properly shifted to applicant to show otherwise.
Regarding claim 13, The term “main crystal phase” refers to the crystal phase which has the highest proportion by volume compared with other crystal phases. See [0011]. The apatite crystal phase makes up 0.5 to 10, in particular 1 to 10 and preferably 2 to 8 wt.-% of the glass ceramic. Thus, the lithium disilicate crystal phase is larger than 10%.
Claim(s) 1, 3 and 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over US20140322503A1.
US20140322503A1 a lithium silicate glass a three-dimensional article comprising at least two layers (I) and (II), each layer (I) and (II) comprising a lithium silicate glass ceramic, the lithium silicate glass ceramics of layer (I) having a different translucency than the lithium silicate glass ceramic of layer (II). The lithium disilicate glass does not comprise either of the following crystal phases in an amount above about 50: apatite, tetragonal or cubic leucit, See abstract, [00140] and [0117].
The lithium silicate glass ceramic comprising
SiO2 from about 55 to about 80 wt.-%,
Al2O3 from about 1 to about 5 wt.-%,
Li2O from about 7 to about 16 wt.-%,
P2O5 from about 1 to about 5 wt.-%,
ZrO2 from about 0.1 to about 10 wt.-% , and
B2O3 from 0 to about 2 wt.-%. See [0016-0020], [0067] and [0087].
The reference differs from Applicant's recitations of claims by not disclosing identical ranges. However, the reference discloses "overlapping" ranges, and overlapping ranges have been held to establish prima facie obviousness (MPEP 2144.05). A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
Claim(s) 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over US20160236971A1 as applied to claim 1 above, and further in view of US20070042889A1.
US20160236971A1 is silent about using B2O3.
US20070042889A1, also drawn to glass ceramic, discloses that additional components to enhance the technical processability of the glass may also be present. Such additional components may therefore be in particular compounds such as B2O3.and F which in general amount to 0 to 5.0% by weight. See [0032].
Thus, it would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to combine B2O3 to the teaching of US20160236971A1, motivated by the fact that US20070042889A1, also drawn to glass ceramic, discloses that additional components to enhance the technical processability of the glass may also be present. Such additional components may therefore be in particular compounds such as B2O3.and F which in general amount to 0 to 5.0% by weight. See [0032].
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SHUANGYI ABU ALI whose telephone number is (571)272-6453. The examiner can normally be reached Monday - Friday, 8:00 am- 5:00 pm.
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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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/SHUANGYI ABU ALI/Primary Examiner, Art Unit 1731
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