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 .
Election/Restrictions
The response to restriction submitted on February 20, 2026 cites the election as Group I corresponding to Claims 1-18; however, the examiner interprets that this is a typographic error and the intent of the applicant was Claims 1-8 as corresponds to the claims submitted on February 20, 2026. Claims 1-8 will be examined as is believed to be the intent of the applicant and is consistent with claims submitted.
Claims 9-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on February 20, 2026.
Claim Objections
Claim 1 is objected to because of the following informalities: the phrasing in line 2 after the word “blank” appears to be missing the transitional phrase. The examiner recommends deleting the word “which” and replacing it with “wherein the” in order to correct this error. Appropriate correction is required.
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.
Claims 1-8 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 1 recites the limitation "exhibited colors of the resulting files" in line 4. There is insufficient antecedent basis for this limitation in the claim.
Claims 3 and 4recites the limitation "cyclic (flexural) fatigue resistance" in line 2 of each claim. There is insufficient antecedent basis for this limitation in the claim.
Claim 6 recites the limitation "the colors and colors shade shades of the entire work part" in lines 1-2. There is insufficient antecedent basis for this limitation in the claim.
Regarding Claims 3 and 4, it is unclear if the limitation “cyclic (flexural) fatigue resistance” is the same limitation as that of Claim 1 which recites the broader limitation “cyclic fatigue resistance.”
All claims not specifically addressed above are rejected based on their dependency on Claim 1.
Claim Rejections - 35 USC § 102
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 (i.e., changing from AIA to pre-AIA ) 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.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1, and 3-8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Aloise (US 10,716,645 B2).
Regarding Claim 1, Aloise discloses a set of hybrid austenite/martensite NiTi endodontic files (Column 8, lines 7-15 and Column 16, lines 44-45), where for each file size in the set a customized heat-treatment is applied to each file after grinding a blank (Column 9, lines 10-15) and each file in the set exhibits different levels of flexibility and torsional resistance (Figure 6) depending on the sizes and exhibited colors of the resulting files (variable size described in Column 14, lines 34-67 and variable color described in Column 9 lines 18-29), and where the color is indicative of degree of cyclic fatigue resistance, torsional resistance or both (Column 9, lines 38-50). Please note: this claim is considered a product by process claims, where the end result of a set of NITi endodontic files with different levels of flexibility and torsional resistance will be given patentable weight, regardless of the method of manufacturing.
Regarding Claim 3, Aloise discloses the set of austenite/martensite NiTi endodontic files of claim 1, and further discloses that the exhibited colors correspond to different levels of cyclic (flexural) fatigue resistance and/or torsional fatigue resistance, wherein the exhibited colors are selected from blue, purple or gold (Column 9, lines 10-50, where the file is disclosed as dark blue).
Regarding Claim 4, Aloise discloses the set of austenite/martensite NiTi endodontic files of claim 3, and further discloses that the levels of cyclic (flexural) fatigue resistance further depend on the size of the file (Figure 6 and described in Column 10 lines 39-44 and Column 13 lines 27-29).
Regarding Claim 5, Aloise discloses the set of austenite/martensite NiTi endodontic files of claim 3, and further discloses that the levels of torsional fatigue resistance further depend on the size of the file (Figure 6 and Column 10, lines 39-41).
Regarding Claim 6, Aloise discloses the set of austenite/martensite NiTi endodontic files of claim 3, and further discloses that the colors and colors shades of the entire work part are purple, blue or gold (Column 9, lines 10-50, where the file is disclosed as dark blue).
Regarding Claim 7, Aloise discloses the set of austenite/martensite NiTi endodontic files of claim 1, and further discloses that the heat treatment comprises multiple variable heat-treatment techniques that decrease the percentage of superelasticity to control memory within a file as file size increases (Column 9, lines 50-57). Please note: this claim is considered a product by process claims, where the end result of a set of NITi endodontic files with different levels of flexibility and torsional resistance will be given patentable weight, regardless of the method of manufacturing.
Regarding Claim 8, Aloise discloses the set of austenite/martensite NiTi endodontic files of claim 1, and further discloses that the heat treatment is applied after grinding the blank based on the final dimensions of the file. Please note: this claim is considered a product by process claims, where the end result of a set of NITi endodontic files with different levels of flexibility and torsional resistance will be given patentable weight, regardless of the method of manufacturing.
Claim Rejections - 35 USC § 103
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 (i.e., changing from AIA to pre-AIA ) 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.
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.
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Aloise in view of Cornish et al. (US 2012/0065622 A1, hereinafter “Cornish”).
Regarding Claim 2, Aloise discloses the set of austenite/martensite NiTi endodontic files of claim 1, and discloses that a heat treatment sequence can produce a shiny appearance that can be brown, but does not specifically disclose that an exhibited color is gold. In a similar art of color coded metals, Cornish discloses that electrochemical process can produce a gold color on a wire [0008]. It would have been obvious to one having ordinary skill the art at the time the application was filed that the file of Aloise could exhibit a color that is gold when the specific desired electrochemical process applied produces such a color as is taught by Cornish when processes are also applied to a metal wire to achieve a desired property imparted by the treatment and provide identification thereof (see Cornish, [0008]).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTINE L NELSON whose telephone number is (571)270-5368. The examiner can normally be reached M - F 7:30-4:30 PT.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Eric Rosen can be reached at 571-270-7855. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CHRISTINE L NELSON/Examiner, Art Unit 3772
/EDWARD MORAN/Primary Examiner, Art Unit 3772