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 Group I, claims 1-10, in the reply filed on 5/20/2026 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)).
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, 3, 7, and 9 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 6, 8, and 9 of copending Application No. 18/952,208 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the ‘208 application is identical to the claimed invention with the exception of the claimed step “applying a fixing solution” however this step is necessarily included in the instant applicant because the ceramic slurry fixes the coloring solution and is therefore a fixing solution, see claim 5.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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 6 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 6 recites the limitation "the one or more wet layers.” There is insufficient antecedent basis for this limitation in the claim. There are no wet layers previously specified and it is not clear which layers are supposed to be wet. This will be interpreted as being any layer that is wet.
Claim Rejections - 35 USC § 102
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 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.
Claims 1-2 and 7-9 are rejected under 35 U.S.C. 1026 is as being anticipated by Schlechtriemen (US 2012/0308837).
Regarding claim 1, Schlechtriemen meets the claimed, A method of producing a dental restoration by jet printing, (Schlechtriemen [0031]-[0036] describes an inkjet preparation process for dental restorations) comprising jet printing one or more layers of the dental restoration using a ceramic slurry; (Schlechtriemen [0032] describes applying layers of ceramic slips) and jet printing a coloring solution onto the one or more layers (Schlechtriemen [0033] describes applying further slips, [0058] describes the slips should be different colors.)
Regarding claim 2, Schlechtriemen meets the claimed, The method according to claim 1, wherein the one or more layers are dried before jet printing the coloring solution (Schlechtriemen [0032]-[0033] describe each layer is cured before the next is added.)
Regarding claim 7, Schlechtriemen meets the claimed, The method according to claim 1, wherein the steps for producing the dental restoration are repeated (Schlechtriemen [0032]-[0034] describes the layering is repeated until the object is obtained.)
Regarding claim 8, Schlechtriemen meets the claimed, The method according to claim 1, wherein the produced dental restoration is subjected to a drying and/or debinding step prior to a sintering process (Schlechtriemen [0035] describes a debindering treatment to remove the binding agent and [0036] describes a step e of sintering.)
Regarding claim 9, Schlechtriemen meets the claimed, The method according to claim 1, wherein the dental restoration is sintered in a sintering furnace (Schlechtriemen [0105] describes the sintering step occurs in a sintering furnace.)
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 3-6 are rejected under 35 U.S.C. 103 as being unpatentable over Schlechtriemen modified by Ritzberger (US 2020/0171699.)
Regarding claim 3, Schlechtriemen does not meet the claimed, The method according to claim 1, wherein the applied coloring solution is fixed by an alkaline solution.
Analogous in the field of inkjet printing, Ritzberger also describes an inkjet printing process using ceramic slurries for dental restoration and meets the claimed, The method according to claim 1, wherein the applied coloring solution is fixed by an alkaline solution (Ritzberger [0032] describes the colored ceramic suspensions and [0097] describes a ceramic solution with an alkaline pH. The ceramic suspension and binder are what “fix” the color onto the 3D object.)
It would have been obvious to a person of ordinary skill in the art before the filing date to combine the ceramic slurry colorant of Schlechtriemen with the basic/alkaline slurry that fixes the coloring of Ritzberger because a base is a known stabilizer for the ceramic slurry, see Ritzberger [0049].
Regarding claim 4, Schlechtriemen does not describe the pH of the slurry and does not meet the claimed, The method according to claim 1, wherein the ceramic slurry has a basic pH.
Ritzberger meets the claimed, The method according to claim 1, wherein the ceramic slurry has a basic pH (Ritzberger [0097] describes a ceramic slurry with a pH of 10-10.5.)
It would have been obvious to a person of ordinary skill in the art before the filing date to combine the ceramic slurry colorant of Schlechtriemen with the basic/alkaline slurry of Ritzberger because a base is a known stabilizer for the ceramic slurry, see Ritzberger [0049].
Regarding claim 5, Schlechtriemen does not describe how the coloring solution is fixed and does not meet the claimed, The method according to claim 4, wherein the coloring solution is fixed by contact with the ceramic slurry.
Ritzberger meets the claimed, The method according to claim 4, wherein the coloring solution is fixed by contact with the ceramic slurry (Ritzberger [0044] describes binder in the ceramic slip promotes cohesion of further particles.)
It would have been obvious to a person of ordinary skill in the art before the filing date to combine the two slips of Schlechtriemen with the ceramic slip of Ratzberger which binds particles together in order to increase the strength of the green body, see Ratzberger [0048].
Regarding claim 6, Schlechtriemen meets the claimed, The method according to claim 4, wherein the one or more wet layers are dried together with the applied coloring solution (Schlechtriemen [0033] describes the additional layers are cured as they are applied meaning any wet color layers are dried with the coloring layers.)
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Schlechtriemen modified by Nagahari (US 2018/0022021.)
Regarding claim 10, Schlechtriemen does not describe dithering and does not meet the claimed, The method according to claim 1, wherein jet printing the coloring solution onto the one or more layers comprises using different two-dimensional dithering patterns in successive layers of the dental restoration.
Analogous in the field of inkjet 3D printers, Nagahari meets the claimed, The method according to claim 1, wherein jet printing the coloring solution onto the one or more layers comprises using different two-dimensional dithering patterns in successive layers of the dental restoration (Nagahari [0061] describes a 3D printing method using inkjetting to add color to the object where dithering is performed on each layer and colored ink is discharged according to the dithering process.)
It would have been obvious to a person of ordinary skill in the art before the filing date to combine the color printing process of Schlechtriemen with the dithering process of Nagahari in order to enhance the quality of the image being produced, see Nagahari [0007] and [0009].
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
US 2022/0175501: see [0033] describing a process of laminating a dental crown including laying a slurry layer, drying the layer, and coloring the slurry layer, see [0034] describing further UV curing and sintering
Any inquiry concerning this communication or earlier communications from the examiner should be directed to VICTORIA BARTLETT whose telephone number is (571)272-4953. The examiner can normally be reached Monday - Friday 9:00 am-5:00 pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sam Zhao can be reached at 571-270-5343. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/V.B./Examiner, Art Unit 1744
/XIAO S ZHAO/Supervisory Patent Examiner, Art Unit 1744
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