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 .
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 1-6 & 15-16 are rejected under 35 U.S.C. 103 as being unpatentable over Cameron et al. (US PG Pub 2009/0061390; hereafter ‘390).
Claim 1: ‘390 is directed towards a method for producing a dental restoration (title), comprising the following steps:
providing a molded part for dental restoration (¶ 22), in which said molded part has a basic color value FW(F) (abstract & ¶ 22), and wherein the basic color value FW(F) of the molded part has a maximum difference value ΔE from a target color value FW(Z) of the dental restoration (abstract);
applying a glaze to the molded part (¶ 29), wherein said glaze has a defined color value FW(Gx) (see abstract);
heat-treating said glazed molded part to obtain the dental restoration (¶ 5),
characterized in that the defined color value FW(Gx) of the glaze corresponds to the difference ΔE between the color values FW(Z) and FW(F), said color values being CIEL*a*b* values (see abstract; the Examiner notes the colors of ‘390 inherently have a CIEL*a*b* values).
‘390 further teaches the number of differently shaded base ingots (molded part basic colors) is less than the total number of shades associated with the shade guide (abstract & ¶ 10) and the combination is used to closely match the shade of a tooth by applying only one glazing to the molded part (abstract & ¶s 8, 13, 16, 18).
‘390 does not explicitly teach that the maximum ΔE is 5.
However, as noted above, ‘390 discloses using a selected number of molded parts (FW(Fi), wherein i=0-infinity and glazes (FW(Gx) to shade between the FW(Fi) molded parts with only one glazing application to obtain the desired shade.
Thus, it would have been obvious to one of ordinary skill in the art at the time of filing to use a number of ingots in the shade guide FW(Fi) such that ΔE is less than 5 because ‘390 teaches minimizing the shade difference between ingots such that only one glazing is required to obtain the matching shade and since in the case where the claimed ranges “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).
The combination does not teach that the determination of ΔE of the molded part is effected with computer assistance.
However, it is prima facie obvious to automate a manual activity. MPEP § 2144.04(III).
Claim 2: ‘390 teaches using a number of glazes having defined color values (abstract).
Claim 3: The molded part is provided by selecting from a set of molded parts each having a defined basic color value FW(F) by comparing with the teeth neighboring the restoration in the patient’s mouth (¶ 18).
Claim 4: The basic color values are those that correspond to the color values in the standardized color scales for tooth color determination (see ¶ 17).
Claim 5: ‘390 does not teach that the selection of the molded part is effected with computer assistance.
However, it is prima facie obvious to automate a manual activity. MPEP § 2144.04(III).
Claim 6: ‘390 does not teach a thickness for the glaze.
However, the thickness of the glazing is a result effective variable based on the desired tinting/shading and it is prima facie obvious to optimize a result effective variable to obtained a desired result.
"Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." See MPEP 2144.05(II)(B).
Claims 15 & 16: ‘390 is directed towards a method for producing a dental restoration (title), comprising the following steps:
providing a molded part for dental restoration (¶ 22), in which said molded part has a basic color value FW(F) (abstract & ¶ 22), and wherein the basic color value FW(F) of the molded part has a maximum difference value ΔE from a target color value FW(Z) of the dental restoration (abstract);
applying a glaze to the molded part (¶ 29), wherein said glaze has a defined color value FW(Gx) (see abstract);
heat-treating said glazed molded part to obtain the dental restoration (¶ 5),
characterized in that the defined color value FW(Gx) of the glaze corresponds to the difference ΔE between the color values FW(Z) and FW(F), said color values being CIEL*a*b* values (see abstract; the Examiner notes the colors of ‘390 inherently have a CIEL*a*b* values).
‘390 further teaches the number of differently shaded base ingots (molded part basic colors) is less than the total number of shades associated with the shade guide (abstract & ¶ 10) and the combination is used to closely match the shade of a tooth by applying only one glazing to the molded part (abstract & ¶s 8, 13, 16, 18).
‘390 does not explicitly teach that the maximum ΔE is 5.
However, as noted above, ‘390 discloses using a selected number of molded parts (FW(Fi), wherein i=0-infinity and glazes (FW(Gx) to shade between the FW(Fi) molded parts with only one glazing application to obtain the desired shade.
Thus, it would have been obvious to one of ordinary skill in the art at the time of filing to use a number of ingots in the shade guide FW(Fi) such that ΔE is less than 5 because ‘390 teaches minimizing the shade difference between ingots such that only one glazing is required to obtain the matching shade and since in the case where the claimed ranges “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).
‘390 does not teach a thickness for the glaze.
However, the thickness of the glazing is a result effective variable based on the desired tinting/shading and it is prima facie obvious to optimize a result effective variable to obtained a desired result.
"Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." See MPEP 2144.05(II)(B).
Response to Arguments
Applicant's arguments filed 7/28/26 have been fully considered but they are not persuasive.
In regards to applicant’s argument that ‘390 fails to provide any specific range of acceptable ΔE values and therefore the claimed range cannot overlap if ‘390 fails to provide any range at all; the Office does not find this argument convincing because as discussed, ‘390 teaches providing a plurality of different shaded base ingots which inherently means that there is a ΔE selected between the color shades and thus there is an acceptable value based on the number of shades in the collection. Given there is a known size of the plurality and it is deemed acceptable there is inherently a ΔE which is deemed acceptable in the prior art and as discussed, because ‘390 teaches minimizing the shade difference between ingots such that only one glaze is required to obtain the matching shade the ranges overlap and in the case where claimed ranges overlap a prima facie case of obviousness exists. Applicant has not provided any evidence that the ΔE of less than or equal to 5 provides an unexpected and critical result and therefore the prima facie case of obviousness has not been overcome. The examiner asserts that the arguments of counsel cannot take the place of evidence in the record. In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965). MPEP 2145(I).
In regards to applicant’s argument that ‘390 teaches matching manually and thus does not render obvious performing the process with computer assistance; the Office does not find this argument convincing because as noted above, automating a manual process is prima facie obvious and applicant has not provided any evidence that automating the process by computer assistance would provide any unexpected and critical results. The examiner asserts that the arguments of counsel cannot take the place of evidence in the record. In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965). MPEP 2145(I).
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
In regards to applicant’s argument that the thickness of the applied glaze is a critical and unexpected range; applicant has not provided any evidence of the criticality of the range. The examiner asserts that the arguments of counsel cannot take the place of evidence in the record. In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965). MPEP 2145(I).
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 JAMES M MELLOTT whose telephone number is (571)270-3593. The examiner can normally be reached 8:30AM-4:30PM CST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Curtis Mayes can be reached at 571-272-1234. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/James M Mellott/ Primary Examiner, Art Unit 1759
