Appeal No. 96-3935
Application 08/209,673
with radiation. The examiner additionally notes that this crosslinked polyethylene oxide viscoelastic
memory means is described as being used as a flow control valve in an injection device. The examiner
further urges that
With regard to "produced by the steps of:" phrase, the method of forming the
device is not germane to the issue of patentability of the device itself. Therefore, this
limitation has not been given patentable weight.
Also, it has been held that functional "whereby" statement does not define any
structure and accordingly cannot serve to distinguish. In re Mason, 114 USPQ 127,
44 CCPA 937 (1957). (Examiner's Answer, page 3)
We do not share the examiner’s view of the pertinence of the method steps set forth in
independent claim 40, or of the “whereby” clause in this claim. Contrary to the examiner’s position, we
consider that the steps recited in forming the viscoelastic memory means of appellants’ claim 40 and the
whereby clause therein together define a structural characteristic of the memory means which is not
taught or suggested in Wozniak. More specifically, claim 40 sets forth that the viscoelastic memory
means is produced by the steps of: exposing a hydrophilic polymer to ionizing radiation to create
crosslinks within the polymer; heating the polymer to substantially its crystalline melt temperature;
altering the shape of the polymer from a first configuration to a second configuration either before or
after the heating step; and then cooling
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