Appeal No. 1999-2649
Application 08/483,291
identical or substantially identical processes. See, e.g., In
re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-34 (CCPA
1977). In the present case, we consider the examiner’s
statement on page 8 of the answer that “both of Balko and
[the] instant application use the nitinol alloy” to be overly
broad. Balko specifically discloses the use of SMAs,
particularly nickel-titanium alloys (nitinol), which
“completely recover to their original shape on being raised to
a higher temperature” (col. 3, lines 37 to 39), whereas
appellant discloses the use of SMAs which display SIM
properties, i.e., in which the shape change is “mechanically,
rather than thermally, actuated and controlled”
(specification, page 8, lines 13 to 16). The alloy preferred
by appellant is nickel-titanium-vanadium, as disclosed in Quin
Patent No. 4,505,767 (id., page 8, lines 22 to 24). As shown
by Kirk-Othmer and the Middleman declaration, nitinol does not
exhibit SIM properties unless it receives additional
treatment, of which there is no suggestion in Balko. We
therefore conclude that the examiner has not made out a prima
facie case that the SMAs disclosed by Balko would inherently
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