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 .
Claim Rejections - 35 USC § 112(a)
2. The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
3. Claims 1 and 31-38 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 1 newly recites “wherein the dental abutment construction member consists of sintered ceramic” (line 38). The recited features (i) “consists of” and (ii) “sintered ceramic” lack support from the original disclosure and therefore are considered to be new matter.
(i) The closed transitional phrase “consists of” is not supported in the original disclosure. Instead, the original specification indicates open transitional phrases, e.g. “a material which includes ceramic” (specification [0077], [0078], original claim 21); “a material for preparing which includes at least a material selected from ceramic, alumina-toughened zirconia…” (Specification [0087], original claims 26-27); “a material comprising ceramic” (previously presented claim 30).
(ii) The feature “sintered” is not supported in the original disclosure. The word “sintering” appears only in the Application Specification [0097] Evaluation of describing a specific prototype “a method of sintering a molded component… sintering the zirconia used…The prototype was made by sintering this molded component”. That is a single example using one specific zirconia grade, not a description of “the ceramic” generically. Instead, the original specification indicates non-sintered routes to the final product. For example: [0033] “glass ceramics into the casting mold, and pressurizing”; [0094] “does not require the heat treatment… 3D printing to prepare”.
All dependent claims are rejected herein based on dependency.
Claim Rejections - 35 USC § 103
4. 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.
5. Claims 1 and 31-38 are rejected under 35 U.S.C. 103 as being unpatentable over Jia (US 2008/0250974) in view of Karmaker (US 7,488,175).
Regarding claim 1, Karmaker discloses a dental abutment construction member (Fig. 10) having a tubular shape, comprising: an upper surface; a lower surface; an outer peripheral surface 44; and an inner peripheral surface 46, wherein each of the upper surface and the lower surface has an annular shape, wherein the outer peripheral surface connects an outer edge of the annular shape of the upper surface and an outer edge of the annular shape of the lower surface (Fig. 10).
The inner peripheral surface 46 connects an inner edge of the annular shape of the upper surface and an inner edge of the annular shape of the lower surface (Fig. 10).
The inner edge of the annular shape of the upper surface has an elliptical shape, wherein the inner edge of the annular shape of the lower surface has an elliptical shape,
wherein an axis in a longer direction of the elliptical shape which is the inner edge of the annular shape of the upper surface and an axis in a longer direction of the elliptical shape which is the inner edge of the annular shape of the lower surface are in the same plane (paragraph [0029] “may be in any known shape such as … oval”; page 5 second column claim 15 “the rod is… oval in cross-sectional shape”).
Jia is silent to the specifically claimed ranges of the various dimensions of the elements of the dental abutment construction member. Nonetheless, Jia discloses: “a post, the length may vary between about 6 mm and 25 mm and the diameter may vary from about 0.5 mm to about 3 mm. Depending upon the use of the material produced, the shaft or the opening left from the shaft after it is removed is in the range of about 0.1 mm to about 30 mm in diameter” (paragraph [0041]), indicating that the length and diameters of the dental abutment construction member are of optimizable variables. Therefore, such claimed ranges of a length in the longer direction of the elliptical shape which is the inner edge of the annular shape of the upper surface being from 4.0 mm to 9 mm, a length in a short direction of the elliptical shape which is the inner edge of the annular shape of the upper surface is in a range including both ends of a range from 4.0 mm to 9 mm; a length in the longer direction of the elliptical shape which is the inner edge of the annular shape of the lower surface is in a range including both ends of a range from 4.0 mm to 9 mm, and a length in the short direction of the elliptical shape which is the inner edge of the annular shape of the lower surface is in a range including both ends of a range from 4.0 mm to 9 mm wherein a width in a horizontal plane of the outer peripheral surface is in a range including both ends of a range from 5.0mm to 10mm, wherein a thickness of a wall formed by the outer peripheral surface and the inner peripheral surface is at least 0.5 mm, wherein a height of the dental abutment construction member is in a range including both ends of a range from 2 mm to 10 mm, would have been obvious to one having ordinary skill in art at the filing of the invention since it has been held that discovering an optimum or workable ranges is well within the skill of an artisan via routine experimentation in order to improve upon what is already generally known. See MPEP §§ 2144.05.
As to claims 1 and 31, with regard to the newly added recitation “wherein the dental abutment construction member consists of sintered ceramic” (claim 1) and the Markush group of materials (claim 31), note that Jia discloses the abutment construction/post member (Fig. 10) having a tubular rod shape and may be formed of ceramic with reinforcing ceramic fibers including zirconia (see Jia ¶ [0031] “The shaft or bar may be solid or hollow and may be fabricated of any material known in the art including, but not limited to, metal, ceramic, glass, or polymeric or resinous material, or their combinations”; Jia [claim 2], [claim 6] “the ceramic fibers comprise … zirconia…”).
As to the recited feature “sintered”, note that the claim language "sintered" is a product-by-process recitation in a product claim. Even though product-by-process recitation is limited by and defined by the recited process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. In re Thorpe, 777 F.2d 695, 227 USPQ 964 (Fed. Cir. 1985). In this case, Jie discloses the ceramic material as claimed, thus the burden is shifted to applicant to show an unobvious difference.
Jia does not disclose that the member “consists of”, i.e. only, ceramic.
Karmaker discloses a dental post fabricated as a monolithic ceramic body (see Karmaker Fig. 14; column 4 lines 16-19: “The ceramic post may include any ceramic materials, including… alumina, zirconia, … and may be fabricated by using any forming and sintering techniques”; claim 19 “fabricated of a material consisting essentially of ceramic material”). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to substitute Jia’s fiber reinforced post with Karmaker’s sintered-ceramic post with predictable results.
As to claims 32-34, Jia discloses that the outer peripheral surface can be smooth/flat, roughened, serrated, or screw shaped (paragraphs [0029], [0041]).
As to claim 35, Jia shows each of the upper surface and the lower surface has an annular shape, wherein in between the upper surface and the lower surface, there are intermediate surfaces (see Fig. 9); wherein the inner peripheral surface connects an inner edge of the annular shape of the upper surface and an edge which the inner peripheral surface and an upper-side surface of the intermediate surface connect, and also connects an inner edge of the annular shape of the lower surface and an edge which the inner peripheral surface and a lower-side surface of the intermediate surface connect (see Fig. 10).
Response to Arguments
6. Applicant's arguments have been fully considered but they are not persuasive, particularly in view of the new ground(s) of rejection under Jia in view of Karmaker as detailed above. Applicant’s argument improperly analyzes Jia in isolation and mischaracterizes requiring modification of Jia to strip out its resin matrix. However, Karmaker, which is analogous to Jia’s field, teaches that a dental post may alternatively be fabricated as a monolithic ceramic body (see Karmaker column 4 lines 16-19: “The ceramic post may include any ceramic materials, including… alumina, zirconia, … and may be fabricated by using any forming and sintering techniques”), and even claims such a dental post as “consisting essentially of ceramic material” (see Karmaker claim 19). Karmaker thus establishes that a solid, sintered, resin-free and fiber-free ceramic post was known and recognized as a suitable, operable alternative to Jia’s fiber-in-resin post for the same purpose, i.e. reinforcing a tooth structure to support a crown. Therefore, it would have been obvious to substitute one known post construction (Karmaker’s sintered ceramic body) for another (Jia’s fiber reinforced composite), both of which were established in the art as suitable solutions to the same problem of providing a strong, reinforcing dental post.
Conclusion
7. Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 Examiner HAO D. MAI whose telephone number is (571)270-3002. The examiner can normally be reached on Mon-Fri 8:00-4:30. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Eric Rosen can be reached on (571) 270-7855. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Hao D Mai/
Examiner, Art Unit 3772
/ERIC J ROSEN/Supervisory Patent Examiner, Art Unit 3772
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