European Patent Office
`Postbus 58.18 ..
`2280 HV Rijswuk
`NETHERLANDS
`Tel: +31 70 340 2040
`Fax: +31 70 340 3016
`
`Formalities Officer
`Name: Masterson-Zwinkels
`Tel: +31 70 340 - 2010
`or call
`+31 (0)70 340 45 00
`
`Substantive Examiner
`Name: Chabus, Herve
`Tel: +31 70 340 - 2684
`
`7
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`4
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`Europfiisches
`Patentamt
`European
`Patent Office
`Office européen
`des brevets
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`Hartz, Niko_l_ai
`Wachtershauser & Hartz
`Patentanwaltspartnerschaft mbB
`Weinstrasse 8
`80333 MUnchen
`ALLEMAGNE
`
`
`Application No.
`Ref.
`Date
`05 756 629.1 - 1659
`EA-PCT-16556
`16.03.2015
`
`
`
`
`
`Applicant
`Luebke, Neill Hamilton
`
`
`
`Communication pursuant to Article 94(3) EPC
`
`The examination of the above-identified application has revealed that it does not meet the requirements of the
`European Patent Convention for the reasons enclosed herewith. If the deficiencies indicated are not rectified
`the application may be refused pursuant to Article 97(2) EPC.
`
`You are invited to file your observations and insofar as the deficiencies are such as to be rectifiable, to correct
`the indicated deficiencies within a period
`
`of
`
`4 months
`
`from the notification of this communication, this period being computed in accordance with Rules 126(2) and
`131 (2) and (4) EPC. One set of amendments to the description, claims and drawings is to be filed within the
`said period on separate sheets (R. 50(1) EPC).
`
`If filing amendments, you must identify them and indicate the basis for them in the application as filed. Failure
`to meet either requirement may lead to a communication from the Examining Division requesting that you
`correct this deficiency (R. 137(4) EPC).
`
`Failure to comply with this invitation in due time will result in the application being deemed to be
`withdrawn (Art. 94(4) EPC).
`
`
`
`Registered letter
`EPO Form 2001 12.10CSX
`
`1 of 5
`
`lPR2015-01476 _ EX. 1106
`US ENDODONTICS, LLC., Petitioner
`
`1 of 5
`
`IPR2015-01476 - Ex. 1106
`US ENDODONTICS, LLC., Petitioner
`
`

`

`Date 16.03.2015
`
`Sheet 2
`
`Application No.: 05 756 629.1
`
`$66
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`
`olive 331M)
`
`Chabus, Herve
`Primary Examiner
`For the Examining Division
`
`Enclosure(s):
`
`3 page/s reasons (Form 2906)
`
`
`Registered letter
`EPO Form 2001 12.1OCSX
`
`2 of 5
`
`|PR2015-01476 - EX. 1106
`
`US ENDODONTICS, LLC., Petitioner
`
`2 of 5
`
`IPR2015-01476 - Ex. 1106
`US ENDODONTICS, LLC., Petitioner
`
`

`

`Datum
`Date
`Date
`
`16.03.2015
`
`Blatt
`Sheet
`Feuille
`
`1
`
`Anmelde-Nr:
`.
`.
`339mm“
`,,_
`'
`Demande n .
`
`05 756 629.1
`
`The examination is being carried out on the following application documents
`
`Description, Pages
`
`1, 2, 4-14
`
`as published
`
`3, 3a
`
`filed with telefax on 24-07-2013
`
`Claims, Numbers
`
`1-13
`
`filed with telefax on 24-07-2013
`
`Drawings, Sheets
`
`1/7-7/7
`
`as published
`
`The amendments and the arguments filed on the 24th of July 2013 by the
`
`applicant have been carefully considered. However, the examining division is
`
`of the opinion that the application does not meet the requirements of the EPC
`
`for the following reasons:
`
`1
`
`Article 123(2) EPC
`
`Claim 1 has been amended by the addition of the features of claim 11 as
`
`originally filed and of the features "tested in accordance with the ISO
`
`Standard 3650-1 The addition of the latter features, which renders the claim
`
`unclear (see point on clarity below), contains subject matter which extends
`
`beyond the application as originally filed. It is noted that the passage given by
`
`the applicant as basis for this amendment on page 12 lines 16-20 (example 4)
`
`refers to a flexion test, wherein the angle of permanent deformation is
`
`reported in degrees of deflection performed in accordance with "ISO standard
`
`3630-1 Dentistry - Root canal instruments - Part 1: General requirements
`
`and "ANSI/ADA Specification No. 28, Endodontic files and reamers". No
`
`basis is present in the original application to justify the absence of the rest of
`the ISO reference mentioned in bold.
`
`Furthermore, it is noted that example 4 does not specify the flexion of 45° as
`
`mentioned in claim 1 and original claim 11. The combination of the reference
`
`to the ISO norm and the flexion of 45° has no basis in example 4.
`
`EP0 Form 2906 01.9‘ITRI
`
`3 0f5
`
`IPR2015-01476 - Ex. 1106
`us ENDODONTICS, LLC., Petitioner
`
`3 of 5
`
`IPR2015-01476 - Ex. 1106
`US ENDODONTICS, LLC., Petitioner
`
`

`

`Datum
`Date
`Date
`
`16.03.2015
`
`Blatt
`Sheet
`Feuille
`
`2
`
`Anmelde-Nr:
`.
`.
`339mm“
`°_
`'
`Demande n .
`
`05 756 629.1
`
`2
`
`Article 84 EPC
`
`As mentioned above, claim 1 has been amended by the addition of claim 11
`
`as originally filed. In the previous communication under point 5.3, the
`
`examining division objected to claim 11 as being merely directed to a result to
`
`be achieved. The addition of the (uncomplete) reference to the ISO Stand
`
`3630-1 does not solve this objection, but rather add another clarity issue for
`
`the following reasons:
`
`Reference to an ISO Standard brings as such unclarity since the ISO
`
`Standards happen to change in time and it is not clear which specific parts of
`
`the ISO Standard apply and in particular which parameters are involved. In
`
`the present case, the ISO Standard 3630-1 is mentioned in the application at
`
`the same time for a torsion test (see example 1) and for a flexion test (see
`
`example 4). Consequently, it is unclear to the skilled person what are the
`
`exact limitations brought by the ISO Standard 3630-1.
`
`Furthermore, claim 1, which, is drafted as reach through claim, still refers to
`
`a result to be achieved. It is an undue burden for the skilled person to found
`
`out which specific compositions of the material and/or physical parameters
`
`(e.g. diameter) for the endodontic file are suitable for achieving the result " the
`
`shank has an angle greater than 10 degrees of permanent deformation after
`
`torque at 45° of flexion tested in accordance with ISO Standard 3630-1
`
`Regarding the product-by-process features of claim 1, which were already
`
`objected in the previous communication, the examining division has serious
`
`doubt that the heat-treatment of the shank of any titanium alloy at a
`
`temperature above 25°C in an atmosphere consisting essentially of a gas
`
`unreactive with the shank are sufficient parameters to obtain the result to be
`
`achieved. In other words, the claim is too broad and the application does not
`
`provide the sufficient information to make the invention work in the whole
`
`claimed scope and contravenes the requirements of Article 83 EPC.
`
`3
`
`Conclusion
`
`Taking into account the above mentioned objections, the whole application
`
`and the arguments presented by the applicant including the inventor's
`
`declaration filed with letter of 24.07.2013, it appears that the following
`features are essential for the definition of the invention:
`
`EPO Form 2906 01.9‘ITRI
`
`4 0f5
`
`IPR2015-01476 - Ex. 1106
`us ENDODONTICS, LLC., Petitioner
`
`4 of 5
`
`IPR2015-01476 - Ex. 1106
`US ENDODONTICS, LLC., Petitioner
`
`

`

`Datum
`Date
`Date
`
`16.03.2015
`
`Blatt
`Sheet
`Feuille
`
`3
`
`Anmelde-Nr:
`.
`.
`339mm“
`'Demande n°:
`
`05 756 629.1
`
`- the titanium alloy comprises 54-57 weight percent nickel and 43-46 weight
`
`percent titanium,
`
`- the shank has a diameter of 0.5 to 1.6 millimeters (ISO size files)
`
`- the gas is argon,
`
`- the temperature is 500°C,
`
`- the shank is heat-treated for 75 minutes.
`
`All the working examples mentioned in the application and commented by the
`inventor disclose this combination of features. No further evidence has been
`
`provided by the applicant that the invention can be performed without these
`
`specific parameters.
`
`Therefore, the applicant is suggested to file a new claim which contains these
`
`features. Filing another claim and the absence of evidence that the invention
`
`can be performed without the above mentioned specific features would lead
`
`to a refusal of the application.
`
`EPO Form 2906 01.91TRI
`
`5 0f5
`
`lPR2015-01476 - Ex. 1106
`us ENDODONTICS, LLC., Petitioner
`
`5 of 5
`
`IPR2015-01476 - Ex. 1106
`US ENDODONTICS, LLC., Petitioner
`
`