DETAILED ACTION
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.
Claims 1-16 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Claim 1 is directed to a solution, but contains limitation about the permeability and opacity of a hypothetical dental prosthesis to which the solution is applied. As whether or not any particular solution met the limitations would depend on the specifics of the hypothetical dental prosthesis, one of ordinary skill in the art would be unable to determine whether or not any particular solution met the claimed limitations.
Regarding claim 2, claim 1 (from which claim 2 depends) recites “a solution” comprising an opaque component and a coloring component, but claim 2 specifies that the solution may optionally be in the form of two separate solutions, one opaque and one colored. In the case that the opaque solution and colored solution were separate solutions, the product of claim 2 would fall outside the scope of claim 1, as there would no longer be “a solution” comprising both components.
Regarding claim 3, the claim is a product claim but contains only method limitations.
Regarding claim 4-16, the claims are rejected due to their dependency from claim 1.
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.
Claims 1-20 are rejected under 35 U.S.C. 103 as being unpatentable over Sakamoto, US 2023/0404862 A1.
Regarding claims 1-2, 4-5, 7, 9, 11, 13, 15, and 17, Sakamoto teaches a zirconia modification solution comprising an amphiphilic opaque component such as 3-aminopropyltriethoxysilane and/or 3-glycidoxypropyltrimethoxysilane ([0029]) present in an amount of 0.1-60% by mass ([0030]) and a coloring component such as Fe3+, Cr3+, or Er3+ cations ([0033], [0104], [0113]) with NO3-, Cl-, or SO42- anions ([0105], [0112]), a solvent such as deionized water and/or ethylene glycol, ([0114], [0117]), and a stabilizer such as citric acid and/or oxalic acid ([0128]). Note that when a claimed range overlaps with or lies inside a range disclosed by the prior art, a prima facie case of obviousness exists (MPEP 2144.05 I).
Regarding claim 1’s claimed permeability and opaque component of a dental prosthesis in relation to the solution, the limitations are indefinite for the reasons discussed above. Nevertheless, the solution of Sakamoto is identical to that which Applicant’s specification teaches to result in the claimed properties, and it is thus presumed to be inherent that the solution of Sakamoto would possess the claimed properties.
Regarding claim 3, the claim is indefinite as discussed above. Nevertheless, the solution of Sakamoto is identical to that which Applicant’s specification teaches to be usable in the claimed manner, and it is thus presumed to be inherent that the solution of Sakamoto could be used in the claimed manner.
Regarding claims 6, 10, 12, 14 and 16, although Sakamoto does not teach the specific paired combinations of components that are claimed, it would have been obvious to one of ordinary skill in the art to use the claimed combinations because Sakamoto teaches each component to be appropriate in [0029], [0104]-[0105], [0114], [0117], and [0128], as discussed above.
Regarding claim 8, Sakamoto teaches that stabilizer may constitute 0.1-20 wt% of the coloring component ([0129]) and that the solvent may constitute 42-99.7 wt% ([0115]). Although Sakamoto does not explicitly teach any specific amount of soluble metal salt, he implicitly teaches that the amount of metal salt may overlap in scope with the claimed range (e.g. in the case that that stabilizer constitutes 0.1 wt% and the solvent 42 wt%, the metal salt would constitute the remaining 47.9 wt%. Additionally, it would have been obvious to one of ordinary skill in the art to select an appropriate amount of metal salt based on the desired appearance of the product and the specific metal salts being used, as Sakamoto teaches that the purpose of the metal salt is to impart color to the product.
Regarding claims 18-20, Sakamoto teaches making an opaque dental prosthesis by infiltrating a zirconia prosthesis with the solution followed by firing at a temperature of 1550 ⁰C for 2 hours ([0192] and bottom of Table 1).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Ian A Rummel whose telephone number is (571)270-5692. The examiner can normally be reached Monday - Thursday and alternating Fridays, 8:30-5:00.
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IAN A. RUMMEL
Examiner
Art Unit 1785
/IAN A RUMMEL/ Primary Examiner, Art Unit 1785
