www.uspto.gov
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and TrademarkOffice
`Address; COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`14/429,205
`
`03/18/2015
`
`Andreas Herrmann
`
`70152US004
`
`1791
`
`3M INNOVATIVE PROPERTIES COMPANY
`PO BOX 33427
`ST. PAUL, MN 55133-3427
`
`DUMBRIS, SETH M
`
`ART UNIT
`
`1784
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`08/29/2018
`
`ELECTRONIC
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`The time period for reply, if any, is set in the attached communication.
`
`Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
`following e-mail address(es):
`
`LegalUSDocketing@mmm.com
`
`PTOL-90A (Rev. 04/07)
`
`

`

`
`
`Office Action Summary
`
`Application No.
`14/429 205
`Examiner
`SETH DUMBRIS
`
`Applicant(s)
`Herrmann etal.
`Art Unit
`AIA Status
`1784
`No
`
`-- The MAILING DATEofthis communication appears on the cover sheet with the correspondence address --
`Period for Reply
`
`A SHORTENED STATUTORY PERIOD FOR REPLYIS SET TO EXPIRE 3 MONTHS FROM THE MAILING
`DATE OF THIS COMMUNICATION.
`Extensions of time may be available underthe provisions of 37 CFR 1.136(a). In no event, however, may a reply be timely filed
`after SIX (6) MONTHSfrom the mailing date of this communication.
`If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHSfrom the mailing date of this communication.
`-
`- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133}.
`Anyreply received by the Office later than three months after the mailing date of this communication, even if timely filed, may reduce any
`earned patent term adjustment. See 37 CFR 1.704(b).
`
`Status
`
`1) Responsive to communication(s)filed on
`CA declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/werefiled on
`
`2a)L) This action is FINAL. 2b)JThis action is non-final.
`3)C) An election was made by the applicant in responseto a restriction requirement set forth during the interview on
`; the restriction requirement and election have been incorporated into this action.
`4) Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
`closed in accordance with the practice under Exparfe Quayle, 1935 C.D. 11, 453 O.G. 213.
`
`6 7
`
`Disposition of Claims*
`16-29 is/are pending in the application.
`5)
`Claim(s)
`5a) Of the above claim(s) _ is/are withdrawn from consideration.
`[) Claim(s)__is/are allowed.
`Claim(s) 16-29 is/are rejected.
`() Claim(s) _ is/are objectedto.
`8)
`9) ( Claim(s)
`are subject to restriction and/or election requirement
`“ If any claims have been determined allowable, you maybeeligible to benefit from the Patent Prosecution Highway program at a
`participating intellectual property office for the corresponding application. For more information, please see
`http:/Awww.uspto.gov/patents/init_events/pph/index.jsp or send an inquiry to PPHfeedback@uspto.gov.
`
`) ) ) )
`
`Application Papers
`10) The specification is objected to by the Examiner.
`11) The drawing(s) filed on 18 March 2015 is/are: a)(¥} accepted or b)() objected to by the Examiner.
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121 (d).
`
`Priority under 35 U.S.C. § 119
`12) Acknowledgmentis made ofa claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`Certified copies:
`c)1) None of the:
`b)( Some**
`a)) All
`Certified copies of the priority documents have been received.
`1.1)
`Certified copies of the priority documents have been received in Application No.
`2.1.)
`3.{¥} Copies of the certified copies of the priority documents have been receivedin this National Stage
`application from the International Bureau (PCT Rule 17.2(a)).
`* See the attached detailed Office action for a list of the certified copies not received.
`
`Attachment(s)
`
`1)
`
`Notice of References Cited (PTO-892)
`
`3) (J Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`(7) Other:
`4)
`Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`2)
`Paper No(s)/Mail Date14August2018.
`U.S. Patent and Trademark Office
`
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20180824
`
`

`

`Application/Control Number: 14/429,205
`Art Unit: 1784
`
`Page 2
`
`DETAILED ACTION
`
`Notice of Pre-AlA or AIA Status
`
`1.
`
`The present application is being examined under the pre-AlA first to invent
`
`provisions.
`
`Prosecution Reopened
`
`2.
`
`Applicant is advised that the Notice of Allowance mailed 08 December 2017 is
`
`vacated upon further review and due to indefiniteness and obviousnessrejections (see
`
`below).
`
`If the issue fee has already been paid, applicant may request a refund or
`
`requestthat the fee be credited to a deposit account. However, applicant may wait until
`
`the application is either found allowable or held abandoned.
`
`If allowed, upon receipt of
`
`a new Notice of Allowance, applicant may request that the previously submitted issue
`
`fee be applied.
`
`If abandoned, applicant may request refund or credit to a specified
`
`Deposit Account.
`
`Information Disclosure Statement
`
`3.
`
`The information disclosure statement (IDS) submitted on 14 August 2018 is
`
`being considered by the examiner.
`
`Claim Rejections - 35 USC § 112
`
`4.
`
`The following is a quotation of 35 U.S.C. 112 (pre-AlA), second paragraph:
`The specification shall conclude with one or moreclaims particularly pointing out and distinctly
`claiming the subject matter which the applicant regards as his invention.
`
`

`

`Application/Control Number: 14/429,205
`Art Unit: 1784
`
`Page 3
`
`5.
`
`Claims 25-29 are rejected under 35 U.S.C. 112 (pre-AlA), 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 pre-AlA the applicant regards as the
`
`invention.
`
`6.
`
`Claim 25 recites “a coloring solution as described in claim 16” and “a porous
`
`zirconia article as described in any of the preceding claims.” However, claim 16 is
`
`directed to “a kit” and not “a coloring solution” and all of the preceding claims are
`
`directed to “a kit” and not a “porous zirconia article”. Accordingly, the scope of claim 25
`
`is unclear as it is unknownif applicant is referencing the entirety of “the kit’ or simply a
`
`portion thereof. Claims 26-29 are includedin this rejection as they depend upon a
`
`rejected claim.
`
`7.
`
`Claim 29 recites “the solution as described in claim 16” andis indefinite as claim
`
`16 references “a coloring solution” and it is unclearif claim 29 is referencing this specific
`
`coloring solution or another portion of the kit.
`
`Claim Objections
`
`8.
`
`Claim 25 is objected to under 37 CFR 1.75(c) as being in improper form because
`
`a multiple dependent claim which references“in any of the preceding claims”. See
`
`MPEP § 608.01 (n).
`
`9.
`
`Claims 16 and 18-19 are objected to because of the following informalities: The
`
`claims recite N2, ZrO2, etc. and the numerals should be in subscript (e.g. Nz).
`
`

`

`Application/Control Number: 14/429,205
`Art Unit: 1784
`
`Page 4
`
`10.
`
`Claim 22 recites “the solution”in line 1 of the claim and claim 29 recite “the
`
`solution”in lines 3-4 of the claim and both should recite “the coloring solution”for clarity.
`
`Appropriate correction is required.
`
`Claim Rejections - 35 USC § 103
`
`11.
`
`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 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.
`
`12.—The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis
`
`for all obviousnessrejections set forth in this Office action:
`
`(a) A patent may not be obtained though the invention is not identically disclosed or described
`as set forth in section 102, if the differences between the subject matter sought to be patented
`andthe prior art are such that the subject matter as a whole would have been obviousat the
`time the invention was madeto a person having ordinaryskill in the art to which said subject
`matter pertains. Patentability shall not be negatived by the manner in whichthe invention was
`made.
`
`13.
`
`The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148
`
`USPQ 459 (1966), that are applied for establishing a background for determining
`
`obviousness under pre-AlA 35 U.S.C. 103(a) 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 presentin the application indicating
`
`obviousness or nonobviousness.
`
`

`

`Application/Control Number: 14/429,205
`Art Unit: 1784
`
`Page 5
`
`14.—This application currently names joint inventors. In considering patentability of the
`
`claims under pre-AlA 35 U.S.C. 103(a), the examiner presumesthat the subject matter
`
`of the various claims was commonly ownedatthe time any inventions covered therein
`
`were made absent any evidenceto the contrary. Applicant is advised of the obligation
`
`under 37 CFR 1.56 to point out the inventor and invention dates of each claim that was
`
`not commonly ownedat the time a later invention was made in order for the examiner to
`
`consider the applicability of pre-AIA 35 U.S.C. 103(c) and potential pre-AIA 35 U.S.C.
`
`102(e), (f) or (g) prior art under pre-AlA 35 U.S.C. 103(a).
`
`15.
`
`Claims 16-29 are rejected under pre-AlA 35 U.S.C. 103(a) as being obvious
`
`over Wang et al. (CN 102674888 — machinetranslation) in view of Kolb et al. (US
`
`2015/0203650).
`
`16.
`
`The applied reference has a common assignee with the instant application.
`
`Based upon the earlier effective U.S. filing date of the reference, it constitutes prior art
`
`under pre-AlA 35 U.S.C. 102(e). This rejection under pre-AlA 35 U.S.C. 103(a) might be
`
`overcome by: (1) a showing under 37 CFR 1.132 that any invention disclosed but not
`
`claimedin the reference was derived from the inventor of this application and is thus not
`
`an invention “by another’; (2) a showing of a date of invention for the claimed subject
`
`matter of the application which corresponds to subject matter disclosed but not claimed
`
`in the reference, prior to the effective U.S. filing date of the reference under 37 CFR
`
`1.131(a); or (3) an oath or declaration under 37 CFR 1.131(c) stating that the
`
`application and reference are currently owned by the same party and that the inventor
`
`or joint inventors(i.e., the inventive entity) named in the application is the prior inventor
`
`

`

`Application/Control Number: 14/429,205
`Art Unit: 1784
`
`Page 6
`
`under pre-AlA 35 U.S.C. 104 as in effect on March 15, 2013, together with a terminal
`
`disclaimer in accordance with 37 CFR 1.321(c). This rejection might also be overcome
`
`by showing that the reference is disqualified under pre-AIA 35 U.S.C. 103(c) as prior art
`
`in a rejection under pre-AlA 35 U.S.C. 103(a). See MPEP §§ 706.02(I)(1) and
`
`706.02(I)(2).
`
`17.
`
`Considering claim 16, Wang teaches a coloring solution for a zirconia ceramic
`
`dental product (abstract). Examples are taught comprising the coloring solution, a
`
`zirconia article, a brush (i.e. application equipment), etc. (p.5 ‘Example 1’) and the
`
`combination of these materials is considered “a kit’. The coloring solution comprises a
`
`colorant, solvent, and additive where the coloring agent comprises metal cations in an
`
`amount of 0.05-3 mol/L (p.4 lines 15-21). However, Wang does not teach the instantly
`
`claimed porous zirconia article with Nz adsorption/desorption and BET surface.
`
`18.
`
`In arelated field of endeavor, Kolb teaches zirconia articles used in dental
`
`applications (abstract) where the article comprises zirconia and may be sintered
`
`(Paragraph 15). The article is disclosed as being a porous aerogel with crystalline
`
`zirconia particles, a BET surface area in the range of 100-300 m?/g, and displays a Nz
`
`adsorption/desorption behavior of isotherm type IV according to IUPACclassification
`
`(Paragraphs 135 and 141). The zirconia article is a crack-free material with good
`
`stability that has color and translucency to better match the natural tooth to provide
`
`more aesthetic appearance (Paragraphs 1, 24, and 54).
`
`19.
`
`As both Wang and Kolb teach zirconia materials for dental applications, they are
`
`considered analogous.
`
`It would have been obvious to one of ordinary skill in the art at
`
`the time of invention to modify the teachings of Wang with the zirconia material as
`
`

`

`Application/Control Number: 14/429,205
`Art Unit: 1784
`
`Page 7
`
`disclosed by Kolb is this is known to result in a crack-free material with good stability
`
`that has color and translucency to better match the natural tooth to provide more
`
`aesthetic appearance (Kolb Paragraphs 1, 24, and 54) and one would have had a
`
`reasonable expectation of success. Further, the colorant content of Wang and the BET
`
`surface area of Kolb overlap the instantly claimed ranges and the courts haveheld that
`
`where claimed ranges overlap or lie inside of ranges disclosed in the prior art a prima
`
`facie case of obviousness exists. See MPEP 2144.05.
`
`20.
`
`Considering claim 17, Wang teaches where the colorant comprises cerium (p.4
`
`lines 19-21) and examples of Er and Pr (p.5).
`
`21.
`
`Considering claim 18, Kolb teaches where the ceramic shows Ne
`
`adsorption/desorption behavior with a hysteresis loop of type H1 according to IUPAC
`
`classification and shows Ne adsorption/desorption behavior with a hysteresis loop in
`
`p/po ranges of 0.70-0.95 (Paragraph 141).
`
`22.
`
`Considering claim 19, Kolb teaches where the ceramic comprises ZrOz2in 93-99
`
`mol%, Y2O3 in 1-15 mol%, and AlzOs up to about 0.5 mol% (Paragraph 116). See
`
`MPEP 2144.05.
`
`23.
`
`Considering claim 20, Kolb teaches where the aerogel is heat treated
`
`(Paragraph 146).
`
`24.
`
`Considering claim 21, Wang teaches wherethe coloring agent comprises metal
`
`cations in an amount of 0.05-3 mol/L (p.4 lines 15-21).
`
`25.
`
`Considering claim 22, Wang teaches wherethe solventis water, alcohols, etc.
`
`(p.4 lines 22-24).
`
`

`

`Application/Control Number: 14/429,205
`Art Unit: 1784
`
`Page 8
`
`26.
`
`Considering claim 23, Wang teaches wherethe coloring solution comprises a
`
`colorant (p.4 lines 15-21) and is therefore considered “being colored’.
`
`27.
`
`Considering claim 24, Wang teaches wherethe colorantprecipitates out of
`
`solution (p.5, 2full paragraph) (i.e. solid particles settling). The limitation of upon
`
`storage for more than 2 hours is considered to be metas this teaching of Wang appears
`
`to have an open-endedtimeframe of “during storage” and therefore one of ordinary skill
`
`in the art would recognize this to be when the material not in use.
`
`28.
`
`Considering claims 25-26, Wang teaches a method of applying the colorant to
`
`the zirconia article, drying, and sintering (p.5 Examples). As modified Wang teaches a
`
`substantially identical kit of materials and process as those which are claimed, absent
`
`an objective showing, modified Wang is considered to result in the claimed at least
`
`partially colored and translucentzirconia ceramic article. See MPEP 2112.
`
`29.
`
`Considering claims 27-28, Wang teaches wherethe article is used as a crown
`
`(p.3, 4"" paragraph).
`
`30.
`
`Considering claim 29, Wang teaches wherethe coloring solution is brushed on
`
`the zirconia (p.5, Examples) and is therefore considered to have atleastinterior
`
`portions not treated with the solution.
`
`Conclusion
`
`31.—Any inquiry concerning this communication or earlier communications from the
`
`examiner should be directed to SETH DUMBRIS whosetelephone number is (571)272-
`
`5105. The examiner can normally be reached on M-F 6:00 AM - 3:30 PM.
`
`

`

`Application/Control Number: 14/429,205
`Art Unit: 1784
`
`Page 9
`
`Examiner interviews are available via telephone, in-person, and video
`
`conferencing using a USPTO supplied web-basedcollaboration tool. To schedule an
`
`interview, applicant is encouraged to use the USPTO Automated Interview Request
`
`(AIR) at http:/Avww.uspto.gov/interviewpractice.
`
`If attempts to reach the examiner by telephone are unsuccessful, the examiner's
`
`supervisor, Humera Sheikh can be reached on 571-272-0604. The fax phone number
`
`for the organization where this application or proceeding is assigned is 571-273-8300.
`
`Information regarding the status of an application may be obtained from the
`
`Patent Application Information Retrieval (PAIR) system. Status information for
`
`published applications may be obtained from either Private PAIR or Public PAIR.
`
`Status information for unpublished applications is available through Private PAIR only.
`
`For more information about the PAIR system, see http://pair-direct.uspto.gov. Should
`
`you have questions on accessto the Private PAIR system, contact the Electronic
`
`Business Center (EBC) at 866-217-9197(toll-free). If you would like assistance from a
`
`USPTO Customer Service Representative or access to the automatedinformation
`
`system, call 800-786-9199 (IN USA OR CANADA)or 571-272-1000.
`
`SETH DUMBRIS
`Primary Examiner
`Art Unit 1784
`
`/SETH DUMBRIS/
`Primary Examiner, Art Unit 1784
`
`