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 of claims 1-10 in the reply filed on 26 March 2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claims 11-13 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 26 March 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.
Claim(s) 1-5, and 7-9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Godiker et al. (U.S. Patent Application Publication 2022/0273403). Regarding Claim 1, Godiker et al., hereafter “Godiker,” show that it is known to carry out a method for manufacturing a ceramic part with a colour gradient by uniaxial pressing (Abstract; 0052), said method comprising the following steps: preparing at least a first ceramic material and a second ceramic material, the first ceramic material differing in colour from the second ceramic material (0049-0050); preparing a filling shoe (0060, mold); preparing a plurality of mixed materials in which wherein the first ceramic material and the second ceramic material are mixed in different weight ratios while varying the weight ratio to form a desired colour gradient (0009, 0011, 0050, 0056; depositing the materials in the compartments of the mold in ascending or descending order according to the weight ratio (0051, 0060; Table 1); preparing the mold and filling the mold with the mixed materials deposited in the mold (0051, 0060); and compacting the mixed materials to form a green body (0052-0053); debinding the green body to obtain a brown body (0061); and sintering the brown body to form an blank part to obtain the ceramic part with a colour gradient (0054).
Godiker does not show a mold with compartments. However, it would have been obvious to one of ordinary skill to fashion a mold with the desired shaping areas, including various cavities or designs, because configuration is a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration was significant (MPEP 2144.04 (IV)(B)).
Godiker shows machining the article at an intermediate time (0042), and his disclosure does not specifically discuss removing the mold relative to the debinding/sintering step. However, it would have been obvious to one of ordinary skill in the art to machine the article at the conclusion of the method, such as claimed, in order to provide a finished and polished article to the consumer. It would have been obvious to one of ordinary skill in the art to remove the mold prior to compacting in order to prevent uneven compaction of materials in various corners of the mold. Finally, it is noted that selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results (MPEP 2144.04 (IV)(C)).
Regarding Claim 2, Godiker shows the method of claim 1 above, including one wherein the first ceramic and second ceramic material comprise a zirconium oxide powder (0010).
Regarding Claim 3, Godiker shows the method of claim 1, including one wherein the first ceramic material and the second ceramic material each comprise a different pigment (Table 1, all base powders have different pigment combinations).
Regarding Claim 4, Godiker shows the method of claim 1, including one wherein the pigment is a metal oxide (0011).
Regarding Claim 5, Godiker shows the method of claim 1, including one wherein the pigment is an iron oxide (0014).
Regarding Claim 7, Godiker shows the method of claim 1, including one wherein the first and second ceramic powders each comprise a binder (0030).
Regarding Claim 8, Godiker shows the method of claim 1, including one wherein the debinding step consists of thermal debinding (0061).
Regarding Claim 9, Godiker shows the method of claim 1, including one wherein the sintering step is carried out at 1200-1800C and for a time of 30 minutes-20 hours (0045-0046).
Claim(s) 6 and 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Godiker, in view of Nagayama et al. (CN 105849064, translation attached).
Regarding Claim 6, Godiker shows the method of claim 4 above, but he does not show using a spinel pigment. Nagayama et al., hereafter “Nagayama,” show that it is known to make a zirconia body with pigment variations, wherein the pigment is a cobalt/aluminum spinel (pg 5, para 6). It would have been obvious to use Nagayama’s cobalt/aluminum spinel pigment as that in Godiker’s method because there is art recognized suitability for spinel pigments in ceramic bodies (MPEP 2144.07).
Regarding Claim 10, Godiker shows the method of claim 1 above, but he does not specify a sintering environment. Nagayama shows that it is known to carry out sintering in any appropriate environment (pg 18, para 5-6: oxidizing and reducing environments are known and would be included in any appropriate environment). It would have been obvious to one of ordinary skill in the art to use any appropriate environment, such as those claimed, as taught by Nagayama, during Godiker’s method in order to create the optimal conditions for article formation.
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 1-5, 7, and 9-10 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5, and 7-9 of copending Application No. 18/894104 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because there are only small variances between wording (e.g. filling shoe versus impression, compartments versus grid) and otherwise the claims are drawn to the same invention, so the instant claims are not patentably distinct from the ‘104 claims as they are effectively anticipated by the ‘104 claims.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
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MONICA ANNE HUSON
Primary Examiner
Art Unit 1742
/MONICA A HUSON/Primary Examiner, Art Unit 1742
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