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 30-38 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 recites ranges of “from 4.0 mm to 9 mm” for various lengths of the elliptical shape (claim 1 lines 17-26), and “from 5.0 mm to 10 mm” for a width in a horizontal plane of the outer peripheral surface (claim 1 lines 27-28), which lack support from the original disclosure. Instead, the original disclosure has support for “from .5 mm to 9 mm” for the various lengths and “from 1.5 mm to 10 mm” for the width (see original Specification page 15, original claims 8 and 15).
All dependent claims are rejected herein based on dependency.
Claim Rejections - 35 USC § 112(b)
4. 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.
5. Claims 1 and 30-38 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 “the cervical portion” (lines 33-34) which lacks antecedent basis in the claim. It is unclear: what is such cervical portion? whether such cervical portion is of a tooth, of an implant, of an abutment, or of the dental abutment construction member itself?
Claim 35 depends on claim 1; claim 35 recites “wherein each of the upper surface and the lower surface has an annular shape” (lines 1-2), “an outer edge of the annular shape of the upper surface and an outer edge of the annular shape of the lower surface” (lines 5-6), “an inner edge of the annular shape of the upper surface” (line 7), “an inner edge of the annular shape of the lower surface” (line 9), all of which have been previously recited in the base claim 1. Therefore, it is unclear whether the underlined newly defined limitations “an annular shape”, “an outer edge”, “an inner edge”, etc., are the same or different from the recitations of the same antecedent bases in claim 1.
All dependent claims are rejected herein based on dependency.
Claim Rejections - 35 USC § 103
6. 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.
7. Claims 1 and 30-38 are rejected under 35 U.S.C. 103 as being unpatentable over Jia (US 2008/0250974).
Regarding claim 1, Jia 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. Jia also discloses that additional resin and fiber layers are applied as desired to attain the necessary thickness (paragraph [0030]), indicating that the thickness/wall of the member is of optimizable variable. 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 mmn 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.
Jia discloses that the dental abutment construction member is a member that reinforces the cervical portion, and that the dental abutment construction member 42 is a member that can be used to be embedded in a composite resin such that the dental abutment construction member 42 is not in contact with a tooth substance inside an abutment construction cavity (paragraph [0009] “bonding agent and/or cement is applied… post is inserted… filled with a cement, bonding agent, filling material”; paragraph [0040] “The fiber reinforced composite material is preferably formed into a dental post, but it may be used for… crowns, partial crowns, dentures, teeth, jackets, inlays, onlays, facings, veneers, facets, implants, abutments, cylinders, and connectors”).
As to claims 30-31, Jie discloses the abutment construction member 42
member is formed of a material comprising ceramic and zirconia (paragraph [0024]).
As to claims 32-34 and 38, Jia discloses that the outer peripheral surface can be smooth/flat, roughened, serrated , or screw shaped (paragraphs [0029], [0041])
As to claims 35-37, Jia shows an intermediate surface which separates the upper surface and the lower surface, 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, and 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)
Conclusion
8. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. 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