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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 06/30/2026 has been entered.
Response to Arguments
Applicant's arguments filed 06/30/2026 have been fully considered but they are not persuasive. Applicant primarily argues Hermann fails to teach or suggest that specific surface area of the blank is in the claimed range of 0.5 to 9.6 m2/g.
This is not persuasive. It is noted that prior art is available for all it contains not just preferred embodiments or examples, See MPEP 2123. Herman teaches and claims a blank having a specific surface area of the blank is from about 10 to about 60 m2/g [0171, claim 16]. It is the examiner’s interpretation that about 10 would include 9.5 and above. Additionally, this is to the fact pattern of In re Woodruff , 919 F.2d 1575, USPQ2d 1934 (Fed. Cir. 1990) or Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed.Cir. 1985) where despite a “slight” difference in the ranges the court held that such a difference did not “render the claims patentable” or, alternatively, that “a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough so that one skilled in the art would have expected them to have the same properties”. Thus, the rejections remain as set forth below.
EXAMINER’S NOTE
The examiner notes that should allowable subject matter be found that the withdrawn claims 11-13 at least appear to have 112 issues. The claims depend on claim 1 but refer to “the cerium compound” which is not present in claim 1.
Claim Rejections - 35 USC § 103
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-5 and 7-10 are rejected under 35 U.S.C. 103 as being unpatentable over Herrmann et al. (US 20150223917 A1), herein Herrmann.
In regard to claims 1 and 3, Herrmann teaches a pre-sintered porous zirconia dental blank for milling [Abstract, 0045, 0059, 0067]. The zirconia is an yttria stabilized [0070-0071, 0073]. The yttria content is from 2 to about mol % [0194]. Herrmann further teaches that a coloring solution is applied to the blank, allowing for erbium acetate to be present on the surface and within the porous blank [0242, 0256, 0306]. Herrmann further teaches the specific surface area of the blank is from about 10 to about 60 m2/g [0171]. The examiner interprets about 10 to include 9.6, thus the range overlaps the claimed range. Herrmann does not expressly teach the content of the erbium acetate in the blank. However, it is expected to meet the limitation for the reasons that follow. Herrmann teaches a substantially similar coloring solution and method of applicant as such it is expected that the content within the similar porous blank would be substantially similar after treatment, see In re Best.
As stated in In re Best, 562 F.2d 1252, 1255 (CCPA 1977): Where, as here, the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product. [citation omitted] Whether the rejection is based on "inherency" under 35 U.S.C. § 102, on “prima facie obviousness” under 35 U.S.C. § 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO’s inability to manufacture products or to obtain and compare prior art.
Alternatively, Herrmann teaches that the amount of the coloring agent, i.e., erbium acetate, effects the coloring of the final blank [0022-0026, 0076].
Thus, it would have been obvious to one having ordinary skill in the art at the time of the invention to adjust the erbium acetate concentration for the intended application, since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980).
A particular parameter can be recognized as a result-effective variable, i.e., a variable which achieves a recognized result, and the determination of the optimum or workable ranges of said variable might be characterized as routine experimentation (see MPEP 2144.05.II.B.).
It has been held that the discovery of the optimum value of a result effective variable in a known process is ordinarily within the skill in the art. In re Boesch and Slaney, 205 USPQ 215 (CCPA 1980).
As set forth in MPEP 2144.05, in the case where the claimed range “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 regards to claim 2, Herrmann further teaches the density is from about 40 to about 60% [0211]. This overlaps the claimed range.
As set forth in MPEP 2144.05, in the case where the claimed range “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 regards to claim 4, Herrmann does not expressly teach the limitations of claim 4.
However, the blank of Herrmann is expected to meet the limitation as the compositions and production methods are substantially similar the one would expect the properties of Herrmann to be similar to the claimed blank.
As stated in In re Best, 562 F.2d 1252, 1255 (CCPA 1977): Where, as here, the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product. [citation omitted] Whether the rejection is based on "inherency" under 35 U.S.C. § 102, on “prima facie obviousness” under 35 U.S.C. § 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO’s inability to manufacture products or to obtain and compare prior art.
In regards to claim 5, Herrmann further teaches Fe, Pr, or Co are possible additional coloring agents [0014].
In regards to claim 7, Herrmann further teaches the dental blank is a block [0045].
In regards to claim 8, Herrmann further teaches the blank is sintered after coloring [ 0201, 0219-0222].
In regards to claim 9, Herrmann further teaches the sintered blank is milled into a crown [0059, 0045, 0224].
In regards to claim 10, Herrmann further teaches the sintered blank is milled into a crown [0059, 0045, 0224].
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Herrmann et al. (US 20150223917 A1), herein Herrmann, as applied to claim 5 above, and further in view of Schomer et al. (DE 102015103439 A1), herein Schomer.
The Examiner has previously provided a machine translation of (DE 102015103439 A1. The citation of the prior art in this rejection refers to the machine translation.
In regards to claim 6, Herrmann does not expressly teach the blank comprises layers.
Schomer teaches that ceramic dental blanks of zirconia are known to have layers with different yttria content in order to have the differing translucency over the course of the blank [0006-0008].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have used the multilayered blank with layers having different yttria content as the blank of Herrmann. One would have been motivated to do so as it would have been the simple substitution of one known zirconia blank for another to obtain predictable results.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ELIZABETH A COLLISTER whose telephone number is (571)270-1019. The examiner can normally be reached Mon.-Fri. 9 am-5 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Humera Sheikh can be reached at 571-272-0604. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ELIZABETH COLLISTER/Primary Examiner, Art Unit 1784
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