DETAILED ACTION
Double Patenting
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 or bismuth, 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 does not list bismuth, and it would have been obvious to one of ordinary skill in the art to omit iron oxide and bismuth from the composition for these reasons. 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 as one of the “base powders” of varying amounts, which are claimed, 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 Ritzberger 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.
Claim Objections
Claim 17 is objected to because of the following informalities: it recites the “sintered molding according to claim 2: the temperature range is from 900 to 1400°C”, which was likely intended to be “sintered molding according to claim 2: wherein the temperature range is from 900 to 1400°C”. Appropriate correction is required.
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 2 and 17 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 2 and 17 are indefinite because claim 2 recites “at a defined temperature in a temperature range of from 25 to 1600°C, a difference in volume change between any two of the sintered powder layers is at most 1%” and claim 17, which depends from claim 2, further recites that “the temperature range is from 900 to 1400°C”. Because claim 2 only recites that there is a maximum volume change at “a defined temperature”, it is not clear what stimulus (e.g. changing temperature, exposure to moisture, applied pressure, etc.) causes a volume change to occur within the layers and, therefore, it is not clear what test must be performed to determine if a material meets the claim requirements. For the sake of compact prosecution, a sintered molding with layers that each do not change in volume by more than 1 % relative to the other layers at a single (“defined”) temperature in the recited ranges for any reason is considered herein to meet the claim requirements. Appropriate correction and explanation are required.
The rejections of claims 1, 3, 4, 6-14 and 18-20 made under 35 U.S.C. 112(b) in the previous Office Action are withdrawn in view of Applicant’s amendment, filed August 5, 2026.
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, 6-13, and 17-20 are rejected under 35 U.S.C. 103 as being unpatentable over Jahns (US PG Pub. No. 2023/0338123), which has an effective filing date of October 9, 2020.
Regarding claims 1, 4, 6-9, 12, 13, 19, and 20, Jahns teaches a sintered molding for use in dental restorations, having a color gradient, and comprising at least three ceramic powder layers having different colors (Abstract; par. 92, 183, 192, 220). The ceramic powder layers each contain color metal oxides, which may include oxides of erbium, terbium, and cobalt (par. 134), and are presumed to contain less than 0.01 wt. % of iron oxide because Jahns makes no disclosure of iron oxide being present.
The teachings of Jahns might be considered to differ from the current invention in that he does not explicitly exemplify a sintered molding comprising ceramic powder layers that each include at least 80 wt. % of ZrO2, 89 wt. % of ZrO2 plus HfO2, 0.02 wt. % of Al2O3, and at least 3 wt. % of Y2O3 plus Er2O3, varying concentrations of all of terbium oxide, erbium oxide, and cobalt oxide, less than 0.01 wt. % of iron oxide, and less than 0.01 wt. % of bismuth, and including both of a “gradual” color and translucency gradient. However, Jahns does exemplify using ceramic powder mixtures (e.g. ZRO2-P1, ZRO2-Y, and ZRO2-G) that are calculated to comprise more than 88 wt. % of ZrO2, more than 90 wt. % of ZrO2 plus HfO2, more than 0.099 wt. % of Al2O3, and at least 5 wt. % of Y2O3 plus Er2O3 for his ceramic layers (par. 317-320). Jahns also teaches that his ceramic layers may contain colorants including erbium and one or more of terbium, cobalt, and others, which may be present as metal oxides, and that bismuth, if included, is only present an amount of up to 0.02 mol. %, calculated in terms of its oxide form (par. 131, 134). While Jahns teaches that iron oxide may be included (par. 181, 184), he does not require it to be present.
Jahns further teaches that the amount of yttria and the colorants (e.g. terbium, erbium, and cobalt oxides) within the ceramic powder layers varies from layer to layer, with the yttria quantity and total colorant quantity varying in opposite directions (i.e. the colorant quantity decreases as the yttria quantity increases and vice versa), while the total amount of yttria and colorants in the layers remains constant among the layers (par. 24-30, 113-115, 223-226). Jahns also teaches that there is a need for producing aesthetically pleasing dental restorations, discloses taking steps to improve the esthetic result of such restorations, and teaches configuring his product to have a color and/or translucency gradient, which he discloses is similar to that of natural tooth (par. 14, 22, 92 103). Therefore, it would have been obvious to one of ordinary skill in the art to configure the sintered molding of Jahns to comprise at least three ceramic layers, each comprising more than 88 wt. % of ZrO2, more than 90 wt. % of ZrO2 plus HfO2, more than 0.099 wt. % of Al2O3, and at least 5 wt. % of Y2O3 plus Er2O3, wherein the layers only include terbium, erbium, and cobalt oxides as coloring agents, wherein the layers are free of iron oxide, wherein the layers are free of or contain less than 0.02 mol. % of bismuth oxide, and wherein the yttria content increases from layer to layer and the coloring metal oxides contents, including each of the contents of terbium oxide, erbium oxide, and cobalt oxide, decrease from layer to layer (i.e. the yttria and coloring metal oxide contents change in opposite directions layer-to-layer) based on the total weight of each powder layer, because Jahn’s exemplifies powders with such ZrO2, HfO2, Al2O3, Y2O3, and Er2O3 contents as being appropriate for his product, explicitly teaches that the colored layers must include erbium oxide with other metal oxides, such as iron oxide, merely being optional (i.e. iron oxide is not required to be present), teaches that bismuth oxide is merely optional but may be present in an amount of up less than 0.02 mol. %, teaches such relative variations in yttria and colorant contents, and teaches to configure the layers such that there is a color and translucency gradient, and in order to achieve a desired aesthetic effect. The instantly claimed bismuth content is anticipated or overlapped and rendered obvious by Jahns. See MPEP 2144.05. Note: unless stated otherwise, all discussions of metal oxide contents herein are in terms of the percentage of the total weight of a given layer or layers.
The teachings of Jahns might also be considered to differ from the current invention in that the different powder layers are not explicitly taught to have a different concentrations of all of Tb2O3, Er2O3, and Co3O4, including wherein the terbium oxide content increases from layer to layer in one direction. However, as noted above, Jahns 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. 14, 22, 92,103). He also teaches that the coloring elements may be included in the layers as metal oxides (par. 183-186). Accordingly, it would have been obvious to one of ordinary skill in the art to configure each of the layers in Jahns’s dental blank to include different concentrations of all of Tb2O3, Er2O3, and Co3O4, including wherein any or each of the metal oxides’ concentrations (i.e. including terbium oxide) increase from layer to layer in one direction (i.e. which is opposite to the direction the yttria increases), and including wherein the layers’ colors vary to create a “gradual” color gradient, because Jahns explicitly teaches that the layers can include such colorants, that the layers may vary in color to create a gradient, and that the layers may have differing quantities of coloring elements, which he teaches may include the oxides of Tb, Er, and Co, i.e. 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 as just discussed and including varying the achieved colors in each layer, in order to create a color gradient, such as 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 sintered molding forms a color gradient, and that a pre-sintered molding is processed by subtractive methods are 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 Jahns’s product is molded and includes a color gradient (discussed above), and as there are no levels of gradation claimed that would qualify a color gradient as “gradual” or not and no particular density or shape are claimed that would be achieved by the “compression molding” and ‘“subtractive methods” that are claimed, Jahns’s product meets the claim requirements because it has the structure and appearance that are implied.
Regarding claims 2 and 17, as Jahns makes no disclosure of the different layers in his product changing in volume at a single, defined temperature in the recited ranges, absent an applied stimulus, the layers are presumed to undergo no volume change, i.e. which is less than 1 vol. %, when they are held at a temperature in the ranges of 25 to 1600 °C or 900 to 1400 °C. Additionally, as Jahns teaches that zirconia ceramics typically have a sintering temperature of 1100 to 1600 °C (par. 80), where densification (and, likely, shrinkage) occurs, the taught layers are not expected to change in volume at a temperature of below the sintering temperature range, such as 25 to 950 °C, which is encompassed or overlapped by the claimed ranges. To the extent that the claim is intended to convey that the layers change by a particular volume as the temperature is changed between two values within the recited ranges, it is noted that the layers within the prior art product are still expected to meet the claim requirement over a sufficiently small range of temperatures (e.g. 900 to 900.00001 °C) within the claimed temperature 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 Jahns’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, at a defined temperature within the recited temperature ranges.
Regarding claims 3 and 18, the teachings of Jahns differ from the current invention in that he does not explicitly teach that each layer includes the recited content variation or content ratios of terbium and cobalt oxide in one or two layers. However, as discussed above, Jahns teaches creating and taking steps to create aesthetically pleasing dental restorations, including by creating a color gradient and including by varying the content of coloring metal oxides, such as terbium and cobalt oxides. Therefore, it would have been obvious to one of ordinary skill in the art to select appropriate contents, content variations, or content ratios of terbium and cobalt oxides within the layers of Jahns’s sintered molding, including selecting the content variations or content ratios to achieve a desired/required aesthetic appearance.
Regarding claims 10 and 11, Jahns teaches configuring his sintered moldings to include three to seven ceramic powder layers (par. 220). The instantly recited numbers of ceramic powder layers are overlapped and rendered obvious by Jahns. See MPEP 2144.05.
The teachings of Jahn 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, Jahns does teach that the individual ceramic powder layers may have the same or different thicknesses (par. 101, 102). Therefore, it would have been obvious to one of ordinary skill in the art to configure the sintered molding of Jahns to consist of five ceramic layers, wherein each of the layers has the same thickness, i.e. which is 20 % of the total thickness of the layers, because Jahns teaches doing so to be appropriate. It also would have been obvious to one of ordinary skill in the art to select an appropriate set and distribution of layer thicknesses, including selecting thicknesses in the recited ranges, according to the desired/required aesthetic 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.
Claims 2 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Jahns, 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.
To the extent that the limitations are intended to limit the amount of volume variation of the layers within the recited temperature ranges, the teachings of Jahns differ from the current invention in that he does not explicitly teach the claimed behavior with the products discussed above. 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 Jahns’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.
Claims 3, 14, and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Jahns, as applied to claim 1 above and further in view of Volkl (US PG Pub. No. 2017/0273764).
Regarding claims 3, 14, and 18, the teachings of Jahns differ from the current invention in that he does not explicitly teach that the layers includes the recited content or content ratio of terbium and cobalt oxide. However, Jahns does teach configuring zirconia moldings to mimic the appearance of natural teeth, including by creating a color gradient with layers having differing amounts of colorants, such as terbium and cobalt, which are present in their oxide form (par. 3, 92, 134, 183, 184).
Volkl also teaches a sintered molding including multiple, colored layers that achieve a color gradient, and discloses exemplary layer compositions, including two different compositions having the color “A2” and two different compositions having the color “A4” (Abstract; par. 10, 32, 44, 93-100, 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. %. Volkl teaches that an objective of his work is to make restorations that possess color characteristics of natural tooth (par. 9). Therefore, it would have been obvious to one of ordinary skill in the art to configure Jahns’s sintered molding to include layers with a Tb2O3 content in the range of about 0.06 to 0.15 wt. %, wherein at least one layer has a Tb2O3:Co3O4 ratio of about 75:1 and another layer has a Tb2O3:Co3O4 ratio of 50:1 and 60:1, because Volkl teaches that such a Tb2O3 content range and such Tb2O3:Co3O4 ratios are appropriate for dental restorations that are intended to achieve the appearance of natural teeth, and in order to achieve an appearance required/desired for imitating a particular natural tooth appearance.
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Jahns, as applied to claim 1 above, and further in view of Ritzberger (US PG Pub. No. 2011/0319254).
Regarding claim 14, the teachings of Jahns differ from the current invention in that he does not explicitly teach that each layer includes the recited terbium oxide content. However, Jahns does teach configuring zirconia moldings to mimic the appearance of natural teeth, including by creating a color gradient with layers having differing amounts of colorants, such as terbium and cobalt, which are present in their oxide form (par. 3, 92, 134, 183, 184). 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 layers of Jahns’s sintered molding in order to excellently imitate a natural tooth material.
The rejections made in view of Volkl et al. in the previous Office Action are withdrawn in view of Applicant’s amendment, filed August 5, 2026.
Response to Arguments
Applicant's arguments filed August 5, 2026 have been fully considered but they are moot in view of the current rejections and/or are not persuasive.
Applicant’s arguments regarding Volkl as a primary reference and the combination of Volkl and Ushio are moot because the current rejections are based on the teachings of Jahns.
With respect to Volkl and Ushio, Applicant has argued that the cited references do not teach a deliberately iron- and bismuth-poor material composition to avoid sintering distortion and hardness non-uniformity across the layers of a sintered molding. To the extent that these arguments might be considered to also apply to Jahns, it is noted that most of the claims have no recitations about volume change and no claims recite a hardness or hardness uniformity. As discussed in the rejections under 35 U.S.C. 112(b) above, claims 2 and 19 are indefinite and do not actually recite that a volume change occurs or is avoided in response to a particular stimulus, such as a temperature change or sintering. Therefore, in response to Applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e. an absence of sintering distortion or hardness variations) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 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