DETAILED ACTION
Election/Restrictions
Applicant’s election without traverse of claims 1-14 and 17-20 in the reply filed on February 9, 2026 is acknowledged. Claims 15 and 16 are withdrawn from consideration as being directed to a non-elected invention.
During a telephone conversation with Tanner Long on April 28, 2026, an election was made to prosecute the species of a sintered molding that includes powder layers wherein the amount of yttrium oxide increases from layer to layer, as recited in claim 19. Therefore, claim 5 is also withdrawn from consideration as being drawn to a non-elected species.
In summary, claims 1-4, 6-14, and 17-20 are examined herein and claims 5, 15, and 16 are withdrawn from consideration.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-4, 6-14, and 17-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5, 7, 9-12, of U.S. Patent No. 12,370,029 in view of Ritzberger (US PG Pub. No. 2011/0319254).
Although the claims at issue are not identical, they are not patentably distinct from each other because the patented claims recite a product explicitly or inherently having every feature of instant claims 1-4, 6-14, and 17-20 with the exceptions of the patented claims not being explicitly being free of iron oxide, of the patented claims not including terbium oxide, and of the patented claims not reciting a translucency gradient. The patented claims also do not explicitly recite that the yttria content varies as claimed. However, patented claim 1 lists iron oxide as only being optional, and it would have been obvious to one of ordinary skill in the art to omit iron oxide from the composition for this reason. Patented claims 7, 9, and 10 also recite a range of yttrium oxide contents for the layers and it would have been obvious to one of ordinary skill in the art to select any value in those ranges, including selecting to have increasing values from layer to layer, because the instant claims teach the whole range to be appropriate.
Ritzberger further teaches including terbium oxide in a dental ceramic, with an amount of 0.0001 to 0.1 wt. % Tb2O3 being particularly effective, in order to excellently imitate a natural tooth material (par. 62, 64, 69). Therefore, it would have been obvious to one of ordinary skill in the art to include 0.0001 to 0.1 wt. % Tb2O3 in the ceramic of the patented claims in order to excellently imitate a natural tooth material. As patented claim 7 recites a Co3O4 content of 0.02 to 0.1 wt. %, the instantly claimed terbium oxide-to-cobalt oxide ratio is rendered obvious by the patented claims and prior art. See MPEP 2144.05. For example, the layers in the material of patented claims and Ritzer Berger can include a terbium oxide-to-cobalt oxide ratio of as high as 5:1.
Ritzberger also teaches that a material that perfectly reproduces the appearance of a natural tooth has a gradient in translucency (par. 54). Therefore, it would have been obvious to one of ordinary skill in the art to configure the product of the patented claims to demonstrate a gradient of translucency in order to reproduce the appearance of a natural tooth.
With respect to the instant claim 4 requirement that the color gradient is achieved through a sintering process, it is noted that such a requirement is a product-by-process limitation. Product-by-process claims are not limited to the recited processing steps, but rather the structure implied by the recited procedure. See MPEP 2113. The patented product, which has a color gradient, meets the claim requirement because it has the implied structure.
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.
Claims 1-4, 6-14 and 17-20 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter the inventor or a joint inventor, regards as the invention.
Claims 1, 2, and 17 are indefinite because each incorporates an “essentially” term that is formally defined in the instant disclosure with a definition that is indefinite. Specifically, claim 1 recites that each powder layer is “essentially free of iron oxide”, but the instant disclosure states that the term “means that less than 0.01 % by weight, preferably less than 0.001 % by weight, or less than 0.0001% by weight, thereof is contained…” (Applicant’s published application, par. 11). Claims 2 and 17 recite that layers are subject to an “essentially equal volume change”, but the instant disclosure states that the term “means that the difference of the volume change at a defined temperature in a range of from 25 to 1600° C. of 2 layers of the blank sintered according to the invention is at most 1%, preferably at most 0.5%, especially at most 0.05%” (Applicant’s published application, par. 19). Claim 5 recites that layers have an “essentially identical yttria content”, but the instant disclosure states that the term “means that the difference within the layers is not more than 0.1 mole %, preferably not more than 0.05 mole %, especially less than 0.01 mole %” (Applicant’s published application, par. 36).
Although Applicant is free to be his or her own lexicographer, the written description must clearly define a term in question and the meaning of every term used in a claim must be clear, such that the metes and bounds of the claimed invention are clear. See MPEP 2173.05 (a). In each of the cases listed above, a term is explicitly defined in the instant disclosure but the definition fails to clearly set the metes and bounds of that definition because each definition recites a broad range followed by narrower ranges. See MPEP § 2173.05(c). The claims are indefinite because they incorporate those definitions and there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. For the sake of compact prosecution, each of the “essentially” terms in question is considered herein to only require the broadest range that is included in its respective definition. To improve clarity, Applicant is strongly encouraged to remove the “essentially” terminology from the claims and to amend the claims to recite specific numerical ranges.
Claim 1 is further indefinite because it is unclear if “each powder layer has a different concentration of terbium oxide, erbium oxide, and cobalt oxide” is intended to mean that the concentrations of each of the metal oxides are different from each other within each layer (e.g. a layer has terbium oxide concentration of 5 %, an erbium oxide concentration of 2 %, and a cobalt oxide concentration of 1 %), if the concentrations of the metal oxides vary from layer to layer (e.g. the terbium oxide concentration is 5 % in a first layer and 4 % in a second layer), or if the sum of the metal oxide concentrations varies from layer to layer (e.g. the metal oxide sum is 10 % in a first layer and 5 % in a second layer). For the sake of compact prosecution, any of these interpretations is considered herein to be correct. Appropriate correction is required.
Claims 2 and 17 are further indefinite because they recite that the sintered molding of claim 1 is “characterized in that each of the sintered powder layers is subject to an essentially equal volume change over a temperature range of 25 to 1600 °C”. The meaning of this limitation is unclear because it is phrased as “subject to”, which implies that a process or treatment is applied and which appears to be a statement of intended use or a product-by-process limitation, rather than “exhibits” or “demonstrates”, which implies that a behavior of the material is being discussed. For the sake of compact prosecution, either interpretation is considered herein to be correct.
Claims 4, 6, and 19 are indefinite because each recites the limitation "the blank". There is insufficient antecedent basis for this limitation in the claims because “a blank” is not previously recited. Appropriate correction is required.
Claims 10 and 11 are indefinite because each recites the limitation "the compressed molding". There is insufficient antecedent basis for this limitation in the claims because “a compressed molding” is not previously recited. Appropriate correction is required.
Claim 12 is indefinite because it discusses “a presintered ceramic molding”, but does not positively recite that the “presintered ceramic molding” is in any way related to the “sintered molding” of the claim preamble or of claim 1. It is also unclear if from the claim language if “presintered” means “prior to sintering” or “has undergone sintering” prior to other steps being performed. For the sake of compact prosecution, either interpretation is considered herein to be correct. Appropriate correction is required.
Claim 18 is indefinite because it recites a ratio “in at least 2 or 3 powder layers”, which is indefinite because it is unclear if the ratio is required in two layers or three layers. For the sake of compact prosecution, a product including the ratio in at least two layers is considered herein to meet the claim requirement. Appropriate correction is required.
Claims 2-4, 6-14 and 17-20 are also rejected under 35 U.S.C. 112(b) because they depend from and require all of the limitations of claim 1.
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.
Claims 1-4, 6-14, and 17-20 are rejected under 35 U.S.C. 103 as being unpatentable over Volkl (US PG Pub. No. 2017/0273764).
Regarding claims 1, 4, 7-9, 12, and 20, Volkl teaches a sintered molding for use in the preparation of dental restorations, having a color gradient, and comprising at least three ceramic powder layers having different colors, wherein each ceramic powder layer comprises at least 85 wt. % zirconium oxide (ZrO2), 4.5 to 9.5 wt. % yttrium oxide (Y2O3), and colorants such as terbium oxide (Tb2O3), erbium oxide (Er2O3), and cobalt oxide (Co3O4) (Abstract; par. 10, 44, 64; claim 42). The power layers may also comprise less than 3.0 wt. % of hafnium oxide (HfO2) and less than 0.3 wt. % of aluminum oxide (Al2O3), and are free of iron oxide (Fe2O3), with the exception of Fe2O3 being present as an unavoidable impurity in an amount of less than or equal to 0.2 wt. % (Abstract; par. 10, 32, 44, 93-100). The instantly claimed Fe2O3 (i.e. less than or equal to 0.01 wt. %, as discussed above), Al2O3, and ZrO2 plus HfO2 contents are overlapped and rendered obvious by Volkl. See MPEP 2144.05.
The teachings of Volkl differ from the current invention in that the different powder layers are not explicitly taught to have a different concentration of all of Tb2O3, Er2O3, and Co3O4. However, as noted above, Volkl does teach that his sintered molding includes regions with different colorations to realize a natural tooth-like appearance and that the layers may have differing contents of the coloring elements (par. 32, 34). Accordingly, it would have been obvious to one of ordinary skill in the art to configure each of the layers in Volkl’s dental blank to include different concentrations of one, the sum, or all of Tb2O3, Er2O3, and Co3O4 because Volkl explicitly teaches that the layers can include such colorants, that the layers should vary in color, and that the layers may have different quantities of coloring elements, which he teaches include Tb2O3, Er2O3, and Co3O4. It also would have been obvious to one of ordinary skill in the art to vary each of the colorants as desired/required, including varying the contents of all of Tb2O3, Er2O3, and Co3O4 and including varying the achieved colors in each layer, in order to create a “gradual” color gradient, according to the appearance required/desired for imitating a particular natural tooth appearance.
The requirements that the claimed product is formed by compression molding, that a sintering process yields a color gradient, and that a presintered molding is processed by subtractive methods are a product-by-process limitations. Product-by-process claims are not limited to the recited processing steps, but rather to the structure implied by the recited procedure. See MPEP 2113. As Volkl teaches incorporating compression in his molding operation (par. 142, 146) and discloses that is product has a continuous color gradient (par. 44), and as there are no levels of gradation claimed that would qualify a color gradient as “gradual” or not and no particular shape claimed that would be achieved by the “subtractive methods”, Volkl’s product meets the claim requirements because it has the structure and appearance that are implied.
Regarding claims 2 and 17, as discussed above, the meanings of claims 2 and 17 are unclear because it is unclear from the claim language whether or not a process that the layers are subjected to or a behavior is being described.
The teachings of Volkl may be considered to differ from the current invention in that he does not discuss the volume changes that the sintered powder layers in his product are subjected to or demonstrate over different temperature ranges. However, Volkl does teach that the layers may each be made from a ceramic mixture that is almost entirely zirconia and yttria, with very small quantities of impurities and colorants (par. 92-102). As Volkl makes no disclosure of the layers being made with different quantities of organic binder or different porosity levels, which would result in different levels of shrinkage upon sintering, or in the layers varying in different manners from each other over different temperature ranges, the layers making up Volkl’s sintered molding are expected to expand and contract in substantially the same manner, and to vary in volume in the same manner, over a wide range of temperatures, including at room temperature and while sintering at the upper limits of the claimed ranges. Furthermore, it would have been obvious to one of ordinary skill in the art to configure the layers to vary in volume in the same manner over all temperatures, including over the range of 25 to 1600 °C, in order to prevent the product from deforming at different rates or levels throughout the structure.
To the extent that the claim is directed to a statement of intended use, it is noted that Volkl’s product meets the claim requirement because it is capable of being treated such that each layer is subject to an equal volume change, e.g. by an applied cutting operation wherein the same volume of material is removed from all of the layers over the recited temperature range.
Regarding claims 3, 13, 14, and 18, the teachings of Volkl might be considered to differ from the current invention in that he does not explicitly teach the that each layer includes the recited content or content variation, or teach the claimed ratios of terbium and cobalt oxide in one or two layers. However, as discussed above, Volkl does teach that the coloration and colorant composition, which includes terbium oxide and cobalt oxide, can vary throughout his structure. Specifically, Volkl teaches that a decrease in color intensity can be continuous (par. 44). Therefore, it would have been obvious to one of ordinary skill in the art to vary the terbium oxide continuously through Volkl’s sintered molding, including in a manner in which the terbium oxide increases from layer to layer in one direction, because Volkl teaches to continuously vary color intensity and discloses that terbium oxide is one of such colorants.
Volkl also teaches exemplary layer compositions, including two different compositions having the color “A2” and two different compositions having the color “A4” (par. 103-108, 113-118, 120-126, 133-139). Based on the mixtures Volkl teaches, the first A2 composition (par. 103-108) is calculated to have a Tb2O3:Co3O4 ratio of about 140:1, the second A2 composition (par. 133-139) is calculated to have a Tb2O3:Co3O4 ratio of about 75:1, the first A4 composition (par. 113-118) is calculated to have a Tb2O3:Co3O4 ratio of about 50:1, and the second A4 composition (par. 120-126) is calculated to have a Tb2O3:Co3O4 ratio of about 60:1. Each of Volkl’s exemplified layer compositions is calculated to have a Tb2O3 content in the range of about 0.06 to 0.15 wt. %. As noted above, Volkl teaches that his sintered molding may have layers of varying colors and varying color compositions. Therefore, it would have been obvious to one of ordinary skill in the art to configure Volkl’s sintered molding to include a layer of the second A2 composition, which has aTb2O3:Co3O4 ratio of about 75:1, and one of the A4 layers, which have Tb2O3:Co3O4 ratios of 50:1 and 60:1, because Volkl explicitly teaches each layer composition to be appropriate for his product and teaches creating a product with layers of varying colors and compositions, and in order to achieve an appearance required/desired for imitating a particular natural tooth appearance. It also would have been obvious to configure Volkl’s product such that all of the ceramic powder layers include a Tb2O3 content in the range of about 0.06 to 0.15 wt. % because Volkl exemplifies such a range as appropriate for the layers of his product in order to achieve an appearance required/desired for imitating a particular natural tooth appearance.
Regarding claim 6, Volkl teaches that his product has a translucency gradient (par. 32, 44, 64).
Regarding claims 10 and 11, as discussed above, Volkl teaches that his product may have at least three ceramic power layers. The recited “4 or more powder layers” and “5 ceramic powder layers” are encompassed and rendered obvious by Volkl’s teaching. See MPEP 2144.05.
The teachings of Volkl differ from the current invention in that the relative thicknesses of layers in a five-layer molding that otherwise meets the requirements discussed above are not taught. However, Volkl does teach making a molding with layers having varying heights (par. 196). Volkl also teaches configuring a middle layer in his multilayered product to have a height of up to 20 % of the product (par. 58, 60) and exemplifies a product wherein the lowest and highest layers, which would correspond to the first and fifth layer in a five-layer product, have thicknesses that are approximately equal and the greatest of the layers (Fig. 12 d). As such, it would have been obvious to one of ordinary skill in the art to configure Volkl’s product to have five layers, as rendered obvious by his teaching of “at least three” layers (discussed above), wherein the middle layers have a thickness of 10 to 20 % and wherein the upper and lower layers have thicknesses that are equal to each other and are greater than each of the middle layers because Volkl teaches such relative thicknesses as appropriate. The instantly claimed relative thicknesses are obvious in view of Volkl’s teachings. For example, a five layer structure including three middle layers, each having a thickness of 10 to 20 %, and upper and lower layers each having a thickness of about 30 % would have been obvious in view of Volkl’s teachings. As Volkl makes clear that the selection and distribution of layers in his product is used to effect a desired set of physical and optical properties (par. 44), it also would have been obvious to one of ordinary skill in the art to select an appropriate set and distribution of layer thickness, including selecting thicknesses in the recited ranges, according to the desired/required physical and optical properties of the product. Furthermore, as no criticality has been established, the recited distribution of thicknesses is a prima facie obvious selection of dimensions that does not distinguish the claimed invention over the prior art. See MPEP 2144.04. Further still, it would have been obvious to one of ordinary skill in the art to configure all five of the layers to have the same thicknesses (i.e. 20 % of the overall thickness) because one of ordinary skill in the art would be motivated by common sense to select a 1:1 ratio (or ratios), a ratio that falls within the presently claimed amount, absent evidence of unexpected or surprising results. Case law holds that "[h]aving established that this knowledge was in the art, the examiner could then properly rely... on a conclusion of obviousness, 'from common knowledge and common sense of the person of ordinary skill in the art within any specific hint or suggestion in a particular reference.'" In re Bozek, 416 F.2d 1385, 1390, 163 USPQ 545, 549 (CCPA 1969).
Regarding claim 19, although Volkl does not explicitly teach a sintered molding that both meets the requirements discussed above and includes a yttrium oxide (Y2O3) content that varies from layer to layer, which might be considered a difference from the current invention, Volkl does teach that the Y2O3 content may vary in the mixtures making the different layers in order to influence the strength of the restorations to be manufactured from the blank, teaches making different regions corresponding to different parts of a tooth to have different contents, and exemplifies a layered structure that has a Y2O3 content that increases continuously (par. 28, 29, and 192). Accordingly, it would have been obvious to one of ordinary skill in the art to vary the Y2O3 content from layer to layer in the sintered molding discussed above, including wherein different regions of the molding corresponding to different parts of a tooth have different Y2O3 contents and including wherein the Y2O3 content increases continuously throughout the structure and its layers, because Volkl teaches that such Y2O3 content variations are appropriate for his product and in order to achieve the required/desired strength according to the requirements of the restoration being made.
Claims 2 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Volkl, as applied to claim 1 above, and further in view of Ushio (US PG Pub. No. 2020/0283343).
Regarding claims 2 and 17, as discussed above, the meanings of claims 2 and 17 are unclear because it is unclear from the claim language whether or not a process that the layers are subjected to or a behavior is being described.
The teachings of Volkl may be considered to differ from the current invention in that he does not discuss the volume changes that the sintered powder layers in his product are subjected to or demonstrate over different temperature ranges. However, Ushio teaches that layered moldings, such as those used for dental applications, may demonstrate different rates of distortion during heat treatment depending on the compositions of the ceramic layers, that such deformations can result in peeling apart of the layers or other distortions, and that the state of the deformation has a great influence on the state of the sintered body after heat treatment (par. 3, 9). Ushio further teaches that it is preferable for such sintered moldings to exhibit no warp upon heat treatment (par. 70). In order to suppress warp, Ushio teaches that it is preferable to adjust the binding agent content in each layer according to the stabilizer contents of adjacent layers and to select a molding pressure that suppresses warp (par. 173, 191). Accordingly, it would have been obvious to one of ordinary skill in the art to take necessary steps, e.g. adjustment of composition, application of pressure, etc., to minimize warp, which occurs from the layers of a multilayered ceramic exhibiting different levels of expansion/contraction during heating, of Volkl’s molding as much as possible, including completely suppressing warp (i.e. and causing there to be no difference in how the layers change in volume) over all temperatures, because Ushio teaches that is preferable for sintered moldings to exhibit no warp and in order to avoid deformations that can cause failures such as peeling or distortion of the layers.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JULIA L RUMMEL whose telephone number is (571)272-6288. The examiner can normally be reached Monday-Thursday, 8:30 am -5:00 pm PT.
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/JULIA L. RUMMEL/
Examiner
Art Unit 1784
/HUMERA N. SHEIKH/Supervisory Patent Examiner, Art Unit 1784
Prosecution Insights