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 .
Response to Arguments
The 112 rejections are withdrawn based upon the submitted amended Spec. and claims which correct unit typographical errors.
Applicant's arguments filed 10/31/2025 have been fully considered but they are not persuasive.
Applicant primarily seems to argue that the ranges taught lead to unexpected results superior results in transparency and strength which are not currently claimed in claim 1. It is noted that arguments of counsel cannot take the place of evidence in the record. See: In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965). , However, the results set forth do not appear to be unexpected as this behavior is known in the art for the amounts of rare earth elements, like yttria, present in ceramics show a decrease in strength with increasing content while effecting the translucent of the blank. Additionally, the evidence set forth in the Instant Spec. does not meet the burden to show that the results are unexpected, see MPEP 716.02(b) and 716.02(c) I-II. Further, the actually supposed superior results are not claimed, and thus the arguments are outside the scope of the claims. Regarding the surface area, there appears to be no evidence of the criticality of the range set forth in the Instant Specification.
Applicant further argues that Hermann fails to teach any examples within the claimed specific surface area and is silent to the superior results in the claimed range. It is noted that prior art is available for all it contains not just preferred embodiments, see MPEP 2123. The ranges are taught that overlap the claimed ranges and 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). As such, the rejections remain as set forth below.
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 regards 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. This overlaps the range set forth in the examples, see the 112 rejection above. 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 9, Herrmann further teaches the blank is sintered after coloring [ 0201, 0219-0222].
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 that 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 simply substitution of one known zirconia blank for another to obtain predictable results.
Conclusion
THIS ACTION IS MADE FINAL. 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.
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/ELIZABETH COLLISTER/Primary Examiner, Art Unit 1784