Appeal No. 1998-2826
Application No. 08/598,687
the memory allow [sic, alloy] of Chikama in the form of
an elongated plate [as taught by McCoy] in order to allow
the memory alloy to maneuver its way into and through
parts of the human body. (Final rejection, pages 3 and 4)
In applying the prior art to claim 3, the examiner has
taken the position that the claim language requiring the
elongated plate to be “adhesively bonded to a surface of a
nail shell with an adhesive” is “mere intended use and is
considered to have no limiting effect” (answer, page 3) and
that the claim does not include either a nail shell or an
adhesive agent (id. at 4).
Appellant, on the other hand, argues (brief, pages 7-9)
that claim 3 positively requires that the elongated plate be
adhesively bonded to a surface of a nail shell with an
adhesive agent and that neither of the applied references
teaches nor suggests such a combination. We agree.
In order to establish the prima facie obviousness of a
claimed invention, all the claim limitations must be taught or
suggested by the prior art. In re Royka, 490 F.2d 981, 985,
180 USPQ 580, 583 (CCPA 1974). Every limitation positively
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