Appeal No. 97-1475
Application 08/069,544
With this as our background, we turn to the examiner's
objection to the recitation in claim 11 of "primarily monolithic
Nitinol," in claims 18 and 25 of "primarily solid monolithic
Nitinol," and in claim 21 the recitation that the lock shackle is
made "primarily of solid monolithic Nitinol." The above language
was added to the enumerated independent claims subsequent to the
final rejection (see Paper Nos. 10, 19, 23 and 26). In Paper No.
19, the following paragraph was also added to page 6 of the
specification,
As shown in Figs 1-3, the shackle is made of primarily
solid monolithic Nitinol. The term "primarily solid
monolithic Nitinol shackle" is intended to mean that
the shackle is a single homogeneous undifferentiated
material throughout, and its primary protective
strength is provided by the solid Nitinol, although the
shackle could also be painted or have some other
decorative finish or non-structural elements common in
locks applied.
In the examiner's view, these additions to the specification and
claims constitute new matter. While the examiner is correct in
observing that appellant's original specification does not
expressly use the terminology "primarily solid monolithic
Nitinol," we must agree with appellant that the person of
ordinary skill in the art at the time of filing of the
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