Appeal No. 1996-3152
Application No. 08/043,743
lines 24-26 and paragraph bridging pages 14 and 15). Thus,
according to appellant’s specification, the claimed method
does solve a number of known problems in the art. Compare In
re Kuhle, 526 F.2d 553, 555, 188 USPQ 7, 9 (CCPA 1975) wherein
the court indicated that the rationale of "obvious matter of
design choice" applies when a modification is made which
"solves no stated problem.” Therefore, we do not agree that
the examiner has a valid basis for asserting that it would
have been an obvious matter of mechanical "design choice" to
prepare a tubular member of a shape memory alloy with a
reception space, wherein the tubular member has a bent axis in
its memorized shape.
From our perspective, the examiner has impermissibly
relied upon the appellant’s own teachings in arriving at a
conclusion of obviousness. This being the case, we will not
sustain the rejection of claim 1 under 35 U.S.C. § 103 based
on McCartney alone.
Rejections (II) and (III)
In both Rejections (II) and (III), the examiner relies on
6
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