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 .
Status of Application
Claims 1-15 are pending and presented for examination.
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.
1. Claims 9-11 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.
Claim 9 recites the limitation "the glass (A) including". There is insufficient antecedent basis for this limitation in the claim. Claims 10 and 11 depend from claim 9 and are indefinite for the same reasons. For examination purposes, the limitation has been interpreted as “a glass (A) comprising”.
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.
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.
2. Claim(s) 1-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kashiki et al. (U.S. PGPUB No. 2024/0033187) in view of Mayr et al. (U.S. PGPUB No. 2022/0125561).
I. Regarding claims 1-7, Kashiki teaches a dental porcelain composition (abstract) comprising: glass particles (0025); and an organic solvent (0025). Kashiki teaches the organic solvent having a boiling point of between 100 and 280 ºC (0046, and note that overlapping ranges are prima facie evidence of obviousness) in an amount of approximately 50 parts with respect to 100 parts of the glass (see Examples in Table 2). Kashiki also teaches that the glass has a softening point of preferably 550-630 ºC (0034). Kashiki fails to teach the glass having the particle diameter as claimed and including a base glass having one D50 diameter and a second base glass have a second D50 diameter and a mixing ratio of the two glasses as claimed.
However, Mayr teaches a glass for dental restoration (abstract) comprising glass having a D50 of 13.5 microns, a D10 of 2.5 microns and a D90 of 49.6 microns (0273, and note that this yields a (D90-D10)/D50 of 3.49) and the glass is a single material so that all the different particle sized glass will have the same softening point (a difference of 0). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Kashiki’s composition by utilizing Mayr’s glass. One would have been motivated to make this modification as Mayr teaches that this glass provides a good aesthetic appearance (0103) and can be colored to match (0098). Furthermore, Mayr’s glass has a particle size distribution from 2.5 microns to 49.6 microns and a portion of large particles in Mayr’s glass can be selected to meet the limitation of particles (A-2) and a portion of the small particles can be selected to meet the limitations of the glass (A-1) and can be selected to meet the claimed ratio in claim 2. Therefore, Kashiki in view of Mayr make obvious claims 1-7.
II. Regarding claim 8, Kashiki in view of Mayr make obvious claim 1, additionally claim 8 doesn’t exclude the porcelain composition overall from containing additional glass components. Therefore, Kashiki in view of Mayr also make obvious claim 8, wherein the portions of glass (A-1) and (A-2) of Kashiki in view of Mayr are interpreted as being the only components of the glass (A) and then the rest of the glass particle distribution is interpreted as another glass fraction B which is part of the broader porcelain composition.
III. Regarding claims 9 and 10, Kashiki in view of Mayr make obvious the composition as claimed (see above). Additionally, Kashiki teaches preparing the composition by kneading all the glass particles with organic solvent (0077). Therefore, Kashiki in view of Mayr also make obvious claims 9 and 10.
IV. Regarding claim 11, Kashiki in view of Mayr make obvious claim 9, including kneading the glass and organic solvent, but fail to teach the specific order of kneading the glass (A-1) with solvent and then mixing the glass (A-2). However, the resultant paste will be the same regardless of the order in which the glasses and solvents are combined. Furthermore, the selection of any order of mixing ingredients is prima facie obvious. See Ex parte Rubin, 128 USPQ 440 (Bd. App. 1959) (Prior art reference disclosing a process of making a laminated sheet wherein a base sheet is first coated with a metallic film and thereafter impregnated with a thermosetting material was held to render prima facie obvious claims directed to a process of making a laminated sheet by reversing the order of the prior art process steps.). See also In re Burhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946) (selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results); In re Gibson, 39 F.2d 975, 5 USPQ 230 (CCPA 1930) (Selection of any order of mixing ingredients is prima facie obvious.).
V. Regarding claims 12-14, Kashiki in view of Mayr make obvious the composition of claim 1 (see above). Further, Kashiki teaches a method of making a dental prosthesis device comprising applying the composition to a ceramic core and firing the composition (0121). Therefore, Kashiki in view of Mayr also make obvious claims 12-14.
VI. Regarding claim 15, Kashiki in view of Mayr make obvious the composition including glass (A-1), glass (A-2) and the organic solvent (see above). Additionally, Kashiki teaches that the glass and solvent can be packaged in kit form (0078). Therefore, Kashiki in view of Mayr also make obvious claim 15.
Conclusion
Claims 1-15 are pending.
Claims 1-15 are rejected.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT S WALTERS JR whose telephone number is (571)270-5351. The examiner can normally be reached Monday-Friday 8-5.
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/ROBERT S WALTERS JR/
August 8, 2026Primary Examiner, Art Unit 1717
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