Appeal No. 97-1475
Application 08/069,544
obvious to one of ordinary skill in the art at the time of
appellant's invention to modify the method of Dutton by providing
a padlock shackle therein made of a Nitinol material.
In response to appellant's arguments that Goldstein teaches
a composite shackle (e.g., at column 2, lines 27-33 thereof) and
does not teach or suggest a "primarily monolithic Nitinol"
shackle as in independent claim 11 on appeal, or a shackle made
"primarily of solid monolithic Nitinol" as in independent claim
21 on appeal, the examiner has made the assertions (answer, page
10) that 1) the Nitinol composition as disclosed in Goldstein is
"clearly anticipatory with respect to the claimed Nitinol
shackle", 2) the instant claims do not preclude the use of a
matrix like that of Goldstein, and 3) the arguments made by
appellant are "moot since, the definition and supporting added
language is new matter."
We begin with the examiner's last assertion first, noting
that the Manual of Patent Examining Procedure (MPEP) in section
2163.06 (Rev. 3, July 1997), at page 2100-141, makes clear that
the examiner must still consider the subject matter added to the
claim or claims in making rejections based on prior art since the
new matter rejection may be overcome by appellant. See also,
10
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