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 § 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.
Claims 1-9 are 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.
The recitation “to form a plurality of side surfaces” is a dangling modifier, as it is not clear to what feature this recitation pertains. Furthermore, “to form” is itself indefinite, as it recites features that can be subsequently formed but is not present. In view of the specification, it would appear that the intent is to recite a blank that has a plurality of side surfaces, and this is used for claim interpretation in the prior art rejections below.
As claims 2-9 depend on claim 1, and as the respective limitations of the dependent claims do not resolve the aforementioned issue in claim 1, claims 2-9 are also held to be rejected.
Claim Interpretation
The phrase “for manufacturing dental prostheses” as recited in the preambles of claim 1 is a recitation of intended use. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. See MPEP 2111.02.
Furthermore, various claims recite limitations that further define the claimed blank (a fully-formed article) using limitations concerned with how the blank is to be used in a subsequent transformation. Such limitations include (but are not limited to) the following:
-in claim 1, “configured to provide a predetermined processing area that is in direct contact with a machining tool of a machining apparatus”,
-in claim 1, “configured to come into direct contact with a circular frame-shaped jig of the machining apparatus”, and
-in claim 4, “a separation space is created between the side surface of the material part and the jig”.
For all prior art rejections below, limitations such as the ones listed above are deemed to be concerned with how the claimed article is further processed by an apparatus, in a step downstream of the creation of the claimed article. In view of case law holdings on similar fact patterns (pertaining to limitations specifying interactions between a fully-formed article and an apparatus that further processes the fully-formed article in claims directed to the fully-formed article), none of the limitations specifying how the blank is to be further handled/processed by a downstream apparatus is considered to further limit the article claims directed to the blank. (See MPEP 2115).
Further lending credence to the foregoing are the facts that 1) the claimed blank can be defined without reference to an external, downstream machinery, and that 2) the claimed blank can be worked further processed by an apparatus having features different from those recited in the claims.
As such, limitations such as those identified in ¶ 6 above are considered met if a prior art article has features that would allow it to be used in the way recited by limitations mentioned in ¶ 6 above. More specifically, a prior art article having morphology substantially similar to that of the claimed blank is considered to be capable of being processed by limitations mentioned in ¶ 6 above.
Claim Rejections - 35 USC § 102/103
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
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 of this title, 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 and 2 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as unpatentable over under US 2018/0243054 A1 (“Ito”)
Considering claims 1 and 2, Ito discloses a workpiece (viz. blank), the upper surface 1a of the workpiece serving as a surface subject to further processing. (Ito ¶¶ 0115-0117 and Figs. 1 and 2). Ito is analogous art, for it is directed to the same field of endeavor as that of the instant application (blanks, in particular ones used for dental purposes). Ito discloses that to help with placement of the workpiece in a processing apparatus, a holding member 2 is placed along a circumferential side of the workpiece. (Id. ¶ 0115). In a specific implementation, Ito discloses that the holding member 2 is attached to the workpiece via a peripheral depression shaped into a circumferential side of the workpiece, wherein the holding member 2 has a portion with a (peripheral) protrusion having a shape complementary to that of the peripheral depression. (Id. ¶¶ 0196-0205 and Figs. 27, 28, and 32). In particular, it is noted that the cross-sectional shape of the holding member 2 in Fig. 32 resembles that of the Instant Application.
Although the workpiece is generally shown as having a circular planar shape (viz. shape of a main surface of the workpiece), Ito discloses that its workpiece can also have a polygonal shape. (Id. ¶ 0117). A workpiece with a polygonal planar shape by definition has a plurality of side surfaces. With polygon named as one of three possible choices, it is considered to be disclosed with sufficient specificity. Were this to be contested (not conceded), selecting a workpiece with a polygonal planar shape is obvious in view of express teachings in the reference.
Furthermore, in another embodiment, Ito discloses that its workpiece is formed of numerous smaller pieces joined together, wherein a cushioning material is provided between adjacent smaller materials and forms part of a periphery of the workpiece. (Id. ¶ 0125 and Fig. 7). In such a configuration, there are distinct side surfaces constituted by the materials of the smaller workpieces, adjacent ones of which are separated by the cushioning material. Provision of holding member 2 from Fig. 32 of Ito to the configuration shown in Fig. 7 is obvious, at least because Ito allows different embodiments to be combined. (Id. ¶ 0233). Furthermore, the combination of the two embodiments is obvious due to respective advantages of each.
Ito, via either its disclosure mentioned in ¶ 14 or in ¶ 15 above, at least renders obvious claims 1 and 2.
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 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
Claims 3-9 are rejected under 35 U.S.C. 103 as being unpatentable over Ito as applied to claim 2 above, and further in view of JP 2018/050897 A (referenced below using its machine translation, “JP ‘897”). Alternatively, claims 1-9 are rejected under 35 U.S.C. 103 as being unpatentable over JP 2018/050897 A (referenced below using its machine translation, “JP ‘897”) in view of Ito.
Considering claims 3 (or claims 1-3), although Ito does not teach providing its holding member at predetermined intervals (and thereby resulting in numerous pieces of holding members, with separation between adjacent ones of the holding members), this is taught in JP ‘897. Specifically, JP ‘897 is also directed to a mostly cylindrically shaped body (viz. disk-shaped body) used as an intermediate for processing into dental prosthesis, the disk-shaped body also having to its peripheral edge a centrifugally-protruding convex part 4, wherein the convex part 4 interfaces with a processing apparatus. (JP ‘897 ¶¶ 0047-0051 and 0077).
JP ‘897 specifically teaches that the convex part is furnished as a series of spaced apart arc segments, wherein the spacing is provided to help with checking the correct orientation of the disk-shaped body when loaded into an apparatus. (Id. ¶¶ 0067-0070). It would have been obvious, to a person of ordinary skill at the time of the claimed invention, to have provided gaps in the holding member 2 of Ito in the manner taught in JP ‘897, as a way to ensure correct orientation.
Alternatively, it would have been obvious, to a person of ordinary skill at the time of the claimed invention, to have attached the convex part 4 in JP ‘897 to the disk-shaped body in JP ‘897 according to the recess-and-protrusion fitting taught in Ito, as such mechanical connection improves alignment and reduces relative motion (slippage) between the convex part and the disk-shaped body. (Ito. ¶¶ 0197 and 0200).
Ito and JP ‘897 renders obvious claims 3 or claims 1-3.
Considering claims 4, in view of discussions in ¶¶ 6-9 above, the limitations of this claim is not considered to further limit the article.
Considering claims 5 and 7, the “T”-shaped holding member has morphology reading on the limitations of claim 5. Limitations re: how the claimed parts of the guard part interact with the processing apparatus are not considered to further limit the article, in view of discussions in ¶¶ 6-9 above.
Considering claims 6, in view of discussions in ¶¶ 6-9 above, the limitations of this claim is not considered to further limit the article.
Considering claim 8, Ito discloses that thickness t2 of the holding member (technically dimension of the holding member in thickness direction of the workpiece) is less than thickness t1 of the workpiece. (Ito ¶ 0131). Ito further discloses width w1 (actual thickness of the holding member) being any width and shows dimension w1 to be less than t2. (Id. ¶ 0135 and various figures). Having thickness w1 of the holding member being less than thickness t1 of the workpiece is obvious.
Considering claim 9, in view of discussions in ¶¶ 6-9 above, the limitations of this claim is not considered to further limit the article.
Concluding Remarks
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. DE 102018/219578 A1 at least anticipates claim 1
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Zheren Jim Yang whose telephone number is (571)272-6604. The examiner can normally be reached M-F 10:30 - 7:30 ET.
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/Z. Jim Yang/Primary Examiner, Art Unit 1781
