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 .
Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claims 1 – 9, 11, 12, and 14 – 20 are rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 1 – 9, 11, 12, and 14 – 20 of prior U.S. Patent No. 12,239,500. This is a statutory double patenting rejection.
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 10 and 13 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 10 and 13 of U.S. Patent No. 12,239,500. Although the claims at issue are not identical, they are not patentably distinct from each other because:
Regarding claim 10, claim 10 in the instant application only differs from claim 10 in U.S. Patent No. 12,239,500 in that claim 10 in the instant application recites multiple, and narrower, ranges for the weight ratio of hafnium dioxide to zirconia.
Regarding claim 13, claim 13 in the instant application only differs from claim 13 in U.S. Patent No. 12,239,500 in that claim 13 in the instant application recites multiple, and narrower, ranges for the weight amount of type-II-yttria in intermediate layers L3 and L2 as well as bottom layer L1.
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 10 and 13 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.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c).
Regarding claim 10, claim 10 recites the broad recitation “each layer compris[es] hafnium dioxide in a weight ratio to zirconia in a range of 1:99 to 4:96…based on a total weight of hafnium dioxide and zirconia of the respective layer of the pre-sintered multi-layered dental mill blank”, and the claim also recites “2:98 to 3:97” and “of 2:98” which are narrower statements of the range/limitation.
Regarding claim 13, claim 13 recites the broad recitation “the intermediate layer L3 compris[es] the type-II-yttria in a weight amount in a range of 0.02 to 0.6 wt.%...based on the total weight of the intermediate layer L3”, and the claim also recites “0.05 to 0.4 wt.%” and “0.06 to 0.2 wt.%” which are narrower statements of the range/limitation.
Additionally, claim 13 recites the broad recitation “the intermediate layer L2 compris[es] the type-II-yttria in a weight amount in a range of 0.1 to 1.0 wt.%...based on the total weight of the intermediate layer L2”, and the claim also recites “0.2 to 0.8 wt.%” and “0.4 to 0.6 wt.%” which are narrower statements of the range/limitation
Additionally, claim 13 recites the broad recitation “the bottom layer L1 compris[es] the type-II-yttria in a weight amount in a range of 0.4 to 1.5 wt.%...based on the total weight of the bottom layer L1”, and the claim also recites “0.6 to 1.2 wt.%” and “0.8 to 1.1 wt.%” which are narrower statements of the range/limitation
Claims 10 and 13 are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Examiner’s Note
As noted above, claims 1 – 9, 11, 12, and 14 – 20 are identical to those of the same number in U.S. Patent No. 12,239,500. This patent corresponds to Application No. 18/440,645, which is the parent application to the instant application. As such, the examiner notes no prior art rejections are presented herein in light of the reasons for allowance noted in the Notice of Allowance mailed 28 October 2024 in Application No. 18/440,645. However, due to the double patenting rejections herein, it should be emphasized these reasons do not indicate allowability in this Office Action for the instant application.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ETHAN A UTT whose telephone number is (571)270-0356. The examiner can normally be reached Monday through Friday, 7:30 A.M. to 5:00 P.M. Central.
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/ETHAN A. UTT/Examiner, Art Unit 1783
/MARIA V EWALD/Supervisory Patent Examiner, Art Unit 1783
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