Appeal No. 1999-2414
Application No. 08/942,732
argument is not persuasive since it is not commensurate with the scope of the claims. The artisan
seeking to coat Weissman’s instrument would merely coat the entire instrument and such technique
would not be different from the instant claimed subject matter because “at least a portion of an exposed
surface of said working shaft portion” would be coated, as claimed.
With regard to claims 17 and 20, which are grouped together, these claims recite that the variation
in stiffness/flexibility “is due to selective heat treatment of portions of said working shaft.” It is the
examiner’s position that in making the cylindrical shaft into sections of various shape in the instrument of
Weissman, “a specially selected heat treatment would have obviously been involved” [answer-page 5].
Appellants’ response is to note that neither Weissman nor Heath teaches a selective heat treatment and
that for the examiner to conclude that utilization of such a selective heat treatment would have been
obvious is erroneous in the absence of such teaching.
While there is a possibility that the examiner is correct in the conclusion that a selected heat
treatment was involved in making the shaft sections in the instrument of Weissman, the examiner has
presented no evidence which would have indicated such a heat treatment. There are other methods for
making endodontic instruments. For example, in the method of Heath, a grinding/forming method is
employed and no disclosure of a “selective heat treatment” is apparent in Heath. Thus, while there may
be some truth in the examiner’s conclusion that a heat treatment may have been used in forming the
Weissman instrument, we would need to resort to speculation in order to reach the legal conclusion of
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