DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. 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
2. Applicants’ election without traverse of Group I (claims 1-11 and 14-16; “a bulk block” and “a prosthesis”) in the reply filed on 07/07/2026 is acknowledged.
3. Claims 12 and 13 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 07/07/2026.
Priority
4. Acknowledgment is made of applicants’ claim for foreign priorities.
It is noted, however, that applicants have not filed certified copies of KR10-2021-0083051, KR10-2022-0049877, and KR10-2022-0076881, as required by 37 CFR 1.55.
Claim Objections
5. Claims 1, 10-11, and 14 are objected to because of the following informalities:
As to Claims 1, 10-11, and 14: The applicants are advised to replace the claimed “the glass matrix” with the new phrase “the amorphous glass matrix”.
Appropriate corrections are required.
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.
6. Claim 3 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.
As to Claim 3: As recited, it is not clear whether “at least one selected from cristobalite, tridymite, quartz, eucryptite, spodumene, virgilite, petalite, and a mixture thereof” is in lieu of or in addition to the lithium metasilicate present in the sub-crystalline phase as recited in claim 2, on which claim 3 depends from.
Clarification by applicants in the next response will be helpful to better ascertaining the scope of this claim.
Accordingly, the scope of this claim is deemed indefinite.
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.
7. Claims 1, 4-11 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over LIM et al. (US 2022/0096212)1 in view of KIM et al. (WO 2020/166869; utilized US 11,591,427 as its English Equivalent).
It is noted that since the applicants have not submitted certified English translations of the foreign priority documents, KR10-2021-0083051, KR10-2022-0049877, and KR10-2022-0076881, having written descriptive support for the pending claims of the present application under 35 USC 112(a), they are not entitled to the benefit of the foreign priority filing dates of these documents. See MPEP § 2163.03, II-III.
It is further noted that WO 2020/166869 is used for date purposes only and all column, line numbers cited below refer to its English equivalent, namely US 11,591,427, because WO 2020/166869 is in Korean.
As to Claims 1, 7-11, and 14: LIM et al. disclose a dental bulk block for manufacturing a prosthetic material (corresponding to the claimed prosthesis) (Paragraphs [0002] and [0003]), comprising a glass ceramic block made of amorphous glass matrix and crystalline phases introduced into (dispersed) the amorphous glass matrix (Paragraph [0022]), wherein the crystalline phases include lithium disilicate as a major (main) crystalline phase (Paragraph [0022]) and have an average particle size within the range of 0.05-4.5 µm (Paragraphs [0022] and [0023]), which overlaps with the claimed mean grain size of 0.01-1.0 µm. LIM et al. also disclose that the amorphous glass matrix comprises 5.0 to 73.0 wt % of SiO2, 12.0 to 14.0 wt % of Li2O, 3.3 to 8.2 wt % of Al2O3, 0.12 to 0.22 wt % of ZnO, 2.8 to 3.5 wt % of K2O, 0.12 to 0.22 wt % of Na2O, and 2.0 to 6.0 wt % of P2O5 (Paragraph [0032]), which overlaps with those presently claimed, i.e., 69-75 wt% of SiO2, 2.5-10.5 wt% of Al2O3 and 2.5-3.5 wt% of Al2O3, and 0.1-0.3 wt.% of Na2O.
However, LIM et al. do not specifically mention the addition of a polymer and its particular amount as required by claims 1 and 14. They also do specifically mention that the polymer is combined with the glass ceramic matrix through silane bonding as required by claim 7. Moreover, they do not specifically a polymer that is a cured product of the curable organic materials recited in claims 8 and 9, i.e., hydroxy ethyl methacrylate (HEMA) or polyethylene glycol dimethacrylate (PEG-DMA).
Nevertheless, KIM et al. disclose employing 15-30% by weight of a cured product prepared from a curable organic material selected from a polymerizable monomer and/or oligomer including methacrylate monomers and/or oligomers such as a hydroxy ethyl methacrylate (HEMA) or a polyethylene glycol dimethacrylate (PEG-DMA) (corresponding to the claimed polymer) that is combined with a glass ceramic via silane bonding for the purposes of preparing dental composite compositions for prosthetic materials having desired mechanical properties (Col. 3, lines 35-65, Col. 4, lines 40-67 and Col. 5, lines 19-65). The amount of polymer taught by KIM et al. (15-30% by weight) overlaps with the claimed 20-40% by weight of a polymer. See MPEP section 2144.05 (“The subject matter as a whole would have been obvious to one having ordinary skill in the art at the time the invention was made, since it has been held that choosing the over lapping portion, of the range taught in the prior art and the range claimed by the applicant has been held to be a prima facie case of obviousness.”).
Given the above teachings, it would have been obvious to one of ordinary skill in the art to add the claimed amount of the polymer including cured products of hydroxy ethyl methacrylate (HEMA) or polyethylene glycol dimethacrylate (PEG-DMA) that is combined with the glass ceramic matrix through silane bonding as taught by KIM et al. in the dental bulk block and prothesis of LIM et al., with a reasonable expectation of successfully obtaining desired mechanical properties.
As to Claims 4-6: These claimed properties would have naturally followed from the suggestion of LIM et al. and KIM et al. since the collective teachings of LIM et al. and KIM et al. would have suggested identical or substantially identical bulk block as claimed for the reasons provided above. See MPEP section 2145, II (“The fact that appellant has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious”). See also MPEP section 2113.01 “Products of identical chemical composition cannot have mutually exclusive properties. A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present.”
8. Claims 2-3 and 15-16 are rejected under 35 U.S.C. 103 as being unpatentable over LIM et al. (US 2022/0096212) in view of KIM et al. (WO 2020/166869; utilized US 11,591,427 as its English Equivalent) as applied to claims 1, 4-11 and 14 above, and further in view of US 2015/01046552 (hereinafter referred to as “US ‘655”).
The disclosures with respect to LIM et al. and KIM et al. in paragraph 7 are incorporated here by reference. However, they do not specifically mention using crystalline phase further comprising as a sub-crystalline phase lithium metasilicate and at least one selected from cristobalite, tridymite, quartz or spodumene as required by claims 2-3 and 15-16.
Nevertheless, US ‘655 teaches the use of crystalline phase comprising as main crystalline phase lithium disilicate and as a sub-crystalline phase lithium metasilicate and cristobalite, tridymite, quartz or spodumene for the purposes of preparing prosthetic materials with high mechanical strength frameworks (Paragraphs [0003], [0008], [0032], and [0046]-[0059]
Given the above teachings, it would have been obvious to one of ordinary skill in the art to employ the crystalline phase comprising as main crystalline phase lithium disilicate and as a sub-crystalline phase lithium metasilicate and cristobalite, tridymite, quartz or spodumene as taught by US ‘655 in the dental bulk block and prothesis suggested by LIM et al. and KIM et al., with a reasonable expectation of successfully obtaining high mechanical strength frameworks.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
9. Claims 1, 4-11 and 14 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2 and 10 of U.S. Patent No. 11,730,576 (hereinafter referred to as “the patent”) in view of KIM et al. (WO 2020/166869; utilized US 11,591,427 as its English Equivalent).
It is noted that WO 2020/166869 is used for date purposes only and all column, line numbers cited below refer to its English equivalent, namely US 11,591,427, because WO 2020/166869 is in Korean.
The claims of the patent and the present application are directed to bulk blocks comprising a glass ceramic block (matrix) comprising an amorphous glass matrix and crystalline phases introduced into (dispersed) the glass matrix, wherein the crystalline phase comprises as a major crystalline phase that corresponds to lithium disilicate. The claims of the patent also recite that the crystalline phase has an average particle size within the range of 0.05-4.5 µm, which overlaps with the presently claimed mean grain size of 0.01-1.0 µm. The claims of the patent further recite that the amorphous glass matrix comprises 5.0 to 73.0 wt % of SiO2, 12.0 to 14.0 wt % of Li2O, 3.3 to 8.2 wt % of Al2O3, 0.12 to 0.22 wt % of ZnO, 2.8 to 3.5 wt % of K2O, 0.12 to 0.22 wt % of Na2O, and 2.0 to 6.0 wt % of P2O5, which overlaps with those presently claimed, i.e., 69-75 wt% of SiO2, 2.5-10.5 wt% of Al2O3 and 2.5-3.5 wt% of Al2O3, and 0.1-0.3 wt.% of Na2O.
However, the claims of the patent do not specifically mention the addition of a polymer and its particular amount as required by the present claims. They also do specifically mention that the polymer is combined with the glass ceramic matrix through silane bonding as required by present claim 7. Moreover, the claims of the patent do not specify its bulk block for manufacturing a prosthesis or using the above composition for prothesis as required by present claims 1 and 14. Additionally, they do not specifically a polymer that is a cured product of the curable organic material recited in present claims 8 and 9, i.e., hydroxy ethyl methacrylate (HEMA) or polyethylene glycol dimethacrylate (PEG-DMA).
Nevertheless, KIM et al. disclose employing 15-30% by weight of a cured product prepared from curable organic materials selected from a polymerizable monomer and/or oligomer including methacrylate monomers and/or oligomers such as a hydroxy ethyl methacrylate (HEMA) or a polyethylene glycol dimethacrylate (PEG-DMA) (corresponding to the presently claimed polymer) that is combined with a glass ceramic via silane bonding for the purposes of preparing dental composite compositions having desired mechanical properties useful for prosthetic materials (prosthesis) (Col. 3, lines 35-65, Col. 4, lines 40-67 and Col. 5, lines 19-65). The amount of polymer taught by KIM et al. (15-30% by weight) overlaps with the presently claimed 20-40% by weight of a polymer. See MPEP section 2144.05 (“The subject matter as a whole would have been obvious to one having ordinary skill in the art at the time the invention was made, since it has been held that choosing the over lapping portion, of the range taught in the prior art and the range claimed by the applicant has been held to be a prima facie case of obviousness.”).
Given the above teachings, it would have been obvious to one of ordinary skill in the art to add the presently claimed amount of the polymer including cured products of hydroxy ethyl methacrylate (HEMA) or polyethylene glycol dimethacrylate (PEG-DMA) that is combined with the glass ceramic matrix through silane bonding as taught by KIM et al. in the bulk block of the patent, with a reasonable expectation of successfully obtaining desired mechanical properties suitable for prosthesis.
As to present Claims 4-6: These presently claimed properties would have naturally followed from the suggestion of the patent claims and KIM et al. since the collective teachings of the patent claims and KIM et al. would have suggested identical or substantially identical to the presently claimed specific bulk block for the reasons provided above. See MPEP section 2145, II (“The fact that appellant has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious”). See also MPEP section 2113.01 “Products of identical chemical composition cannot have mutually exclusive properties. A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present.”
Correspondence
10. Any inquiry concerning this communication or earlier communications from the examiner should be directed to HANNAH J PAK whose telephone number is (571)270-5456. The examiner can normally be reached 8-5 PM; M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Arrie Lanee Reuther, can be reached at (571)-270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/HANNAH J PAK/Primary Examiner, Art Unit 1764
1 Cited in the IDS submitted by applicants on 12/21/2023.
2 Cited in the IDS submitted by applicants on 09/26/2025.
Prosecution Insights