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The 112(a) rejection is withdrawn with the amended claims and Spec. corrections.
The 112 rejections of claims 5-6 are withdrawn based upon the claim amendments.
Applicant's arguments filed 08/13/2025 have been fully considered but they are not persuasive.
Applicant primarily argues that the examples taught by Schomer only contain yttrium nitrate with is not water soluble and thus does not meet the claim limitation.
While this may be true, It is noted that prior art is available for all it contains not just preferred embodiments (or examples), See MPEP 2123.
Schomer clearly teaches the use of yttrium acetate as set forth in the rejections [0018]. Thus, it would have been obvious of ordinary skill in the art before the effective filing date of the invention to have employed any yttrium compound taught by Schomer, including yttrium acetate. The motivation for doing so is that the “selection of a known material based on its suitability for its intended use [supports] a prima facie obviousness determination.” See MPEP 2144.07.
Regarding the properties of yttrium acetate, "The fact that appellant has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious." Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985), see also MPEP 2145(II). Thus, applicant’s arguments are not persuasive and 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 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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-2, 4 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Schomer et al. (DE 102015103439 A1) [IDS dated 05/31/2024], herein Schomer.
The Examiner has previously provided a machine translation of (DE 102015103439 A1) with a reproduction of the table on the last page. The citation of the prior art in this rejection refers to the machine translation.
In regards to claims 1, 4 and 8, Schomer teaches a method increasing the translucency of a partially sintered zirconia ceramic dental blank for CAD/CAM processing [0001-0003]. The zirconia for dental application is stabilized by 4-6 wt% Y2O3 and by example about 3.6 mol% Y2O3 [0004, Table parts 1.1 and 1.3]. The zirconia is dipped to a solution comprising yttrium acetate dissolved in water solution [0011, 0014-0015, 0018, 0022-0023]. After dipping, the blank is dried [0023]. The blank is then sintered (i.e., heat treated) [0024].
Schomer differs from claim 1 by teaching yttrium acetate in a list of possible yttrium salts, such that it cannot be said that yttrium acetate the species is anticipated.
However, it would have been obvious of ordinary skill in the art before the effective filing date of the invention to have employed any of the yttrium salts taught by Schomer, including yttrium acetate. The motivation for doing so is that the “selection of a known material based on its suitability for its intended use [supports] a prima facie obviousness determination.” See MPEP 2144.07.
In regards to claim 2, Schomer further teaches the density of the zirconia blank is 3.09 g/cm3 [0023]. The density of a fully dense 6.093 g/cm3 as set forth in the Instant Spec [0115], thus the relative density is 50%.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Schomer et al. (DE 102015103439 A1) [IDS dated 05/31/2024], herein Schomer, as applied to claim 1 above, and further in view of Jahns (US 20150297466 A1).
In regards to claim 3, Schomer does not teach the range of specific surface area of the zirconia mill blank.
Jahns teaches a whitening composition for treating dental ceramics [Title, Abstract]. Jahn teaches the porous dental zirconia blanks have a specific surface area of from about 2 to about 9 m2/g [0163]. This overlaps the range of the Instant Examples.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have ensured the specific surface area of the blank is within the range of conventionally known zirconia dental blanks taught by Jahns as such one would have had a reasonable expectation of success.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Schomer et al. (DE 102015103439 A1) [IDS dated 05/31/2024], herein Schomer, as applied to claim 1 above, and further in view of Herrmann et al. (US 20150223917 A1), herein Herrmann.
In regards to claim 5, Schomer fails to teach or suggest that the solution further contains a water-soluble cerium-compound.
Herrmann teaches coloring solutions for zirconia ceramics, such a Y-TZP [Title, Abstract, 0073].
Herrmann expressly teaches that water soluble cerium salt compounds are added to the solutions [0119]. The cerium salt compounds are added to the solution to help mimic the color and transparency of a natural tooth [0008, 0074].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have added the water soluble cerium salt compounds of Herrmann to the solution of Schomer. One would have been motivated to do so to help mimic the color and transparency of a natural tooth. Further, as Herrmann teaches that the cerium compounds are conventionally known additions to coloring/translucency solution one would have had a reasonable expectation of success.
Claims 3 and 5-6 is rejected under 35 U.S.C. 103 as being unpatentable Schomer et al. (DE 102015103439 A1) [IDS dated 05/31/2024], herein Schomer, as applied to claim 1 above, and further in view of Masahiro et al. (JP 2019156769 A), herein Masahiro.
The Examiner has provided a machine translation of (JP 2019156769 A). The citation of the prior art in this rejection refers to the machine translation.
In regards to claim 3, Schomer does not teach the range of specific surface area of the zirconia mill blank.
Masahiro teaches a solution for coloring a zirconia ceramic dental blank [lines 14-17, 73-81].
Masahiro expressly teaches that the zirconia blank has a specific surface area of 10 to 200 cm2/g [lines 249-248]. When the specific surface area is less than 10 cm2/g, the penetration of the fluorescence imparting liquid tends to be insufficient, whereas when the specific surface area exceeds 200 cm2/ g, the cutting ability by a CAD / CAM processing machine tends to deteriorate.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have added ensured the specific surface area of the blank if Schomer is within the range taught by Masahiro. One would have been motivated to do so in order to ensure sufficient penetration of the coloring/translucency solution and the processing ability of the blank.
In regards to claims 5-6, Schomer further teaches the solution contains an alcohol [0022].
Schomer fails to teach or suggest that the solution further contains a water-soluble cerium-compound, a vegetable oil.
Masahiro teaches a solution for coloring a zirconia ceramic dental blank [lines 14-17, 73-81].
Masahiro expressly teaches that the solution comprises a water-soluble cerium-compound, vegetable oil and a water soluble rare-earth compound [lines 198-208]. Masahiro application of the solution imparts fluorescence to the prosthetic without discoloration [lines 119-122, 171-173].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have added the water soluble cerium salt compounds and vegetable oil of Masahiro to the solution of Schomer. One would have been motivated to do so to help mimic the color and transparency of a natural tooth by imparting fluorescence to the . Further, as Masahiro teaches that the cerium compounds and vegetable oil are conventionally known additions to coloring/translucency solution one would have had a reasonable expectation of success.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Schomer et al. (DE 102015103439 A1) [IDS dated 05/31/2024], herein Schomer, as applied to claim 1 above, and further in view of Hauptmann et al. (US 20150238291 A1), herein Hauptmann.
In regards to claim 7, Schomer further teaches the zirconia blanks are for CAD/CAM machining and are sintered, but does not expressly teach that the shaped dental articles are sintered [0002, 0024].
Hauptman teaches a process of producing a zirconia dental article comprising the steps of providing a dental mill blank comprising a porous pre-sintered zirconia material, placing the dental mill blank in a machining device, machining the porous zirconia material into a dental article and then sintering the machined porous dental article [Abstract, 0045, 0047, 0259, 0264, 00274]. By “machining” is meant milling, grinding, drilling, cutting, carving, or subtractive shaping a material by a machine. Milling is usually faster and more cost effective than grinding [0047]. The cutting is done in dry conditions [0260].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have dry cut the blank of Schomer into a dental article and then firing the dental article as taught by Hauptman. One would have been motivated to do as it would have been the use of known processing steps 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.
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