Appeal No. 97-1475
Application 08/069,544
that we do not agree with the examiner's characterization of the
amendment to page 6 of the specification (made in Paper No. 19)
as being new matter. In our view, the person of ordinary skill
in the art would have reasonably recognized from the originally
filed disclosure that the shackle and locking pin or catch of the
padlock described therein were to be made completely of Nitinol,
so as to take advantage of the properties thereof as set forth on
pages 4 through 6 of the specification. In our opinion, the
questioned amendments merely clarify that which was already
reasonably apparent from the originally filed drawings and
specification of appellant's application. Thus, these amendments
do not constitute new matter and should be allowed to remain in
the application.
Next, we turn to the examiner's prior art rejections, and
proceed by first addressing the rejection of claims 11, 12 and 21
through 24 under 35 U.S.C. § 103 as being unpatentable over
Dutton in view of Goldstein. According to the examiner, Dutton
teaches the basic method of using a padlock shackle (28) to lock
a hasp and staple (62, 64), while Goldstein clearly teaches a
Nitinol shackle. The examiner concludes that it would have been
9
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 Next
Last modified: November 3, 2007