Appeal No. 97-1475
Application 08/069,544
section 2143.03 of the MPEP, last paragraph, wherein it is
expressly noted that when evaluating claims for obviousness under
35 U.S.C. § 103, all limitations of the claims must be considered
and given weight, including limitations which do not find support
in the specification as originally filed (i.e., new matter). In
addition, see Ex parte Pearson, 230 USPQ 711, 172 (Bd. App. 1985)
and Ex parte Grasselli, 231 USPQ 393, 394 (Bd. App. 1983).
Thus, it is clear that appellant's arguments regarding the
limitations of claims 11, 18, 21 and 25 concerning the newly
added language that the shackle is of "primarily monolithic
Nitinol" or "primarily solid monolithic Nitinol" are not moot as
the examiner urges. Moreover, when these limitations of the
claims on appeal are considered and given proper weight, it is
clear that the composite structure of the shackle of Goldstein is
not anticipatory of the claimed monolithic Nitinol shackle as the
examiner believes, and that contrary to the examiner's assertions
the language of the claims on appeal when properly construed does
in fact exclude the use of a composite matrix material of
tungsten carbide particles and nickel-titanium alloy like that
taught in Goldstein. For these reasons, we will not sustain the
11
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