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 .
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.
Claims 1-6 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 “a shank portion held by a dental processing machine” in line 2. It is unclear if the dental processing machine is intended to be a positively recited element of the claimed invention or if the limitation is reciting the intended use of the shank portion. In view of claim 5, which reintroduces the dental processing machine, it is presumed that claim 1 is to the end mill per se and not including the dental processing machine. Claim 1 will thus be interpreted as --a shank portion configured to be held by a dental processing machine--.
Claim 2 recites “between 5 nm or more and 10 μm or less”. This renders the claimed range unclear since it may be between some unspecified values more than 5 nm and less than 10 μm. For examination purposes, this will be interpreted as simply --between 5 nm and 10 μm [inclusive]--.
Claim 3 similarly recites “between 0.1 mm or more and 6.0 mm or less” in lines 2-3 and “between 1.0 mm or more and 30.0 mm or less” in line 5 and is indefinite for similar reasons as for claim 2 above. For examination purposes, these will be interpreted as simply --between 1.0 mm and 30.0 mm [inclusive]-- and --between 1.0 nm and 30.0 μm [inclusive]--, respectively.
Claim 4 is substantially identical to claim 3 and is rejected for the same reasons.
The remaining claims are rejected by virtue of their dependency on at least claim 1.
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.
Claims 1 and 5-6 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Goh et al. (U.S. PGPub 2019/0365502, cited in IDS).
Claim 1: Goh discloses a dental end mill (paragraph 19) for processing a workpiece (e.g. zirconia - Id.), comprising: a shank portion (wider leftmost portion in Fig. 1) [configured to be] held by a dental processing machine (e.g. paragraph 46); a neck lower portion (narrow rightmost portion in Fig. 1) comprising a cutting edge (paragraph 20); and a neck portion (tapered area between the shank and lower neck portions) that is configured to connect the shank portion and the neck lower portion (Fig. 1), wherein the neck lower portion is formed of polycrystalline diamond (paragraphs 40-41).
Claim 5: Goh discloses a processing method for a workpiece performed by a dental processing machine comprising the dental end mill according to claim 1 (as cited above), the method comprising: processing the workpiece using the dental end mill (e.g. paragraphs 25-31).
Claim 6: The workpiece is at least one of a dental resin or a dental ceramic (e.g. paragraphs 1, 19, 25).
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.
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Goh et al. in view of any one or more of Harada et al. (U.S. PGPub 2023/0115988, cited in IDS), Lu (CN210115496, with reference to translation), or Ishida et al. (U.S. PGPub 2024/0262693).
Goh et al. is silent regarding the average particle diameter of the polycrystalline diamond and thus does not disclose that it is between 5 nm and 10 μm. However:
Harada et al. teaches a PCD milling tool wherein the median size of the diamond crystal grains is preferably less than or equal to 1.0 μm (paragraph 49). Harada further teaches that processing quality of a cut surface depends on the sizes of crystal grains in a material of a cutting edge (paragraph 73), thus making it a result effective variable. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have made the grains less than or equal to 1.0 μm in order to have improved processing quality of the cut surface (Id.), noting also that 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). See MPEP 2144.05. Further, it appears that one of ordinary skill in the art would have had a reasonable expectation of success in modifying Goh to have a particle diameter within the claimed range, as it involves only adjusting the dimension of a component disclosed to require adjustment. Therefore, it would have been obvious to one having ordinary skill in the art at the time of the invention to modify Goh by making the particle diameter between 5 nm and 10 μm as a matter of routine optimization since it has been held that “where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller , 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Lu teaches that the diamond grain diameter of the polycrystalline diamond composite cutting tool 300 is 25μm, 10μm, or 2μm, which can be determined according to the hardness and strength of the workpiece material (paragraph 33), and that the PCD material can be flexibly selected based on the workpiece's hardness, strength, toughness, thermal conductivity, and other physical and mechanical properties, with the diamond grain diameter being the most suitable (paragraph 42). It thus would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have made the grains 10μm or 2μm, for example, according to the properties of the workpiece material.
Ishida et al. teaches that the median diameter d50 of the diamond particles of a PCD tool is 10 nm or more and 200 nm [0.2 μm] or less (paragraphs 19-22, 25, and 59). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have made the grains between 10nm and 0.2 μm to have excellent strength and an excellent hardness (Id.).
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Goh et al. in view of Yamanaka (JP2007185736, with reference to translation)
Goh further discloses that an outside diameter [of the cutting edge] is smaller than a shank diameter [of the shank portion] (see Fig. 1) and between 0.1 mm or more and 6.0 mm or less (e.g. 0.3 mm to 8 mm - paragraph 19; 1mm or 2mm - paragraphs 33 and 47). Goh generally discloses that the tools most commonly used in dental milling have head diameters of 0.3 mm, 0.6 mm, 0.7 mm, 1 mm, 2 mm and 2.5 mm (paragraph 19). Goh is silent as to a neck lower length [of the neck lower portion] and so does not teach that it is between 1.0 mm or more and 30.0 mm or less.
However, Yamanaka teaches a diamond end milling tool having a neck lower length L1 of 2mm to 50mm, for example 12mm (paragraphs 16 and 20). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have made the neck lower length between 1.0 mm and 30.0 mm in order to have achieved the desired depth of cut (Yamanaka, paragraph 4).
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Goh et al. and Harada et al./ Lu/Ishida et al. as applied to claim 2 above, and further in view of Yamanaka.
Goh further discloses that an outside diameter [of the cutting edge] is smaller than a shank diameter [of the shank portion] (see Fig. 1) and between 0.1 mm or more and 6.0 mm or less (e.g. 0.3 mm to 8 mm - paragraph 19; 1mm or 2mm - paragraphs 33 and 47). Goh generally discloses that the tools most commonly used in dental milling have head diameters of 0.3 mm, 0.6 mm, 0.7 mm, 1 mm, 2 mm and 2.5 mm (paragraph 19). Goh is silent as to a neck lower length [of the neck lower portion] and so does not teach that it is between 1.0 mm or more and 30.0 mm or less.
However, Yamanaka teaches a diamond end milling tool having a neck lower length L1 of 2mm to 50mm, for example 12mm (paragraphs 16 and 20). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have made the neck lower length between 1.0 mm and 30.0 mm in order to have achieved the desired depth of cut (Yamanaka, paragraph 4).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
2022/0339719 teaches a PCD milling tool using average grain size of the diamond crystal grains of less than 1 μm (paragraphs 53-54).
2020/0391305 teaches a PCD milling tool using average grain size of not less than 0.1 μm and not more than 5 μm (paragraph 44).
2005/0133277 teaches a milling cutter using diamond particle sizes in the range of 0.5 to 2.0 microns or 0.1 to 10 microns (paragraph 151).
2022/0001468 teaches a PCD milling tool having a cutting body 21 that has a diameter D in a range of 0.2 mm to 20 mm, and the specific diameter is determined depending on the size of the surface to be processed (paragraph 57).
2016/0107264 teaches a PCD milling tool having a cutting diameter of between about 0.5 mm to about 10 mm (paragraph 31).
2007/0172321 teaches a PCD milling tool wherein the diameter of the blade portion 3 is not larger than about 6 mm (paragraph 41).
2021/0237168 teaches a diamond tool wherein the radius R of the tool nose is 0.18-0.22 mm, the blade has a length H1 of 4.7-5.3 mm., and the particle size of the diamond powders is 0.5-1 μm (paragraphs 6-7, 33-34, 42).
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MATTHEW P TRAVERS whose telephone number is (571)272-3218. The examiner can normally be reached 10:00AM-6:30PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sunil K. Singh can be reached at 571-272-3460. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Matthew P Travers/Primary Examiner, Art Unit 3726
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