Appeal No. 1999-2414
Application No. 08/942,732
obviousness of the instant claimed subject matter. We cannot base a conclusion of obviousness on
speculation. Accordingly, we will not sustain the examiner’s rejection of claims 17 and 20 under 35
U.S.C. 103.
We also will not sustain the rejection of claim 9 under 35 U.S.C. 103 because the claim calls for the
coating having a “thickness gradient along the length of said working shaft portion,” the examiner groups
this claim along with claims 2, 7, 13, 15-21 and 23-28 without explaining how the applied references
are considered to make this claimed subject matter obvious, and appellants specifically argue the
limitation of claim 9 [principal brief-pages 8-9]. Accordingly, the examiner has failed to present a prima
facie case of obviousness with regard to claim 9.
Finally, with regard to claims 3-6 and 12, appellants let these claims stand or fall together with claim
3. This claim requires that the claimed instrument comprises an alloy which “structurally is at least about
10% amorphous.” The examiner relies on Scruggs for its teaching of an amorphous material used in
metals because of their excellent erosion and corrosion resistance and high hardness properties. Thus,
the examiner concludes that it would have been obvious to provide the alloy of Weissman, as modified
by Heath, with amorphous materials so as to improve the instrument’s erosion and corrosion resistance
and its hardness.
Appellants contend that Scruggs is not even related to endodontic instruments or dental related
instruments so there would have been no reason for the artisan to look toward Scruggs for any
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