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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 1/26/26 has been entered.
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 13 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.
Claim 13 recites the limitation "The ceramic material" in line 1. There is insufficient antecedent basis for this limitation in the claim. The ceramic material will be interpreted as the method.
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.
Claims 1, 3, 6-7 and 31-33 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-11 of U.S. Patent No. 11,918,663. Although the claims at issue are not identical, they are not patentably distinct from each other because the composition for imparting opalescence of U.S. Patent No. 11,918,663 substantially overlaps in scope with the claimed dental material. While U.S. Patent No. 11,918,663 does not claim a colloidally assembled synthetic opal partially or fully infiltrated with ceramic in an amount of 1-20 wt% in claim 1, it would have been obvious to have employed 1-20 wt% of said synthetic opal, as U.S. Patent No. 11,918,663 claims 1-20 wt% of the opal [claim 2], wherein the opal is a colloidally assembled synthetic opal partially or fully infiltrated with ceramic [claim 11].
U.S. Patent No. 11,918,663 claims 50-85 wt% ceramic [claims 1-2] and 1-20 wt% opal [claim 2], but does not specifically claim a weight ratio of colloidally assembled synthetic opal to the dental matrix of about 1:2 to about 1:49. However, 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); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997) [See MPEP 2144.05].
Allowable Subject Matter
Claims 11, 16-17 and 34-36 are allowable
Claim 13 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: Shirman et al. (WO 2018/031821) discloses dental materials containing inverse opals (IO) [abstract; 0117], wherein Example 1 [Ex. 1; 0120] prepares polystyrene direct opal structures through evaporation of monodispersed polystyrene colloids. The structures were infiltrated with a silica precursor solution, calcined at 500 oC, and ground to obtain a powder of silica inverse opals. The resulting silica inverse opals were infiltrated with zirconia nanocrystals to afford zirconia infiltrated silica inverse opal microparticles [Ex. 1; 0120, Sample C]. The zirconia infiltrated silica inverse opal microparticles were mixed with a photocurable resin {liquid; Bis-GMA/TEGDMA}, wherein the mixture contained identical weight% of the components (i.e. silica, zirconia and resin {corresponding to ~33.3 wt% silica inverse opal microparticles; 1:1 weight ratio of silica:zirconia} [Ex. 1; 0120, Sample C]. Shirman et al. (WO ‘821) does not disclose a matrix consisting of zirconia and Shirman et al. (WO ‘821) does not disclose 1-20 wt% of silica inverse opal microparticles. U.S. Patent No. 11,918,663 does not claim a method a making a dental material.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1, 3, 6-7, 11, 13, 16-17, and 31-36 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
The nonstatutory double patenting rejection over U.S. Patent No. 11,918,663 is maintained {see above}.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL F PEPITONE whose telephone number is (571)270-3299. The examiner can normally be reached on 7:00 AM - 3:30 PM.
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/MICHAEL F PEPITONE/Primary Examiner, Art Unit 1767