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 .
Election/Restrictions
Applicant’s election without traverse of claims 1-6 & 15-16 in the reply filed on 2/10/26 is acknowledged.
Claims 7-14 & 17-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected product, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 2/10/26.
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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 15 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 15: Claim 15 is rejected as indefinite because it merely recites a use without any active, positive steps delimiting how this use is actually practiced. See MPEP § 2173.05(q).
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).
Claims 1 & 15: ‘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).
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 determination of the ΔE and/or 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).
Claims 6 & 16: ‘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).
Conclusion
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