Appeal No. 1999-2649
Application 08/483,291
regardless of whether we apply the “one-way test” for
obviousness-type double patenting (In re Goodman, 11 F.3d
1046, 1052, 29 USPQ2d 2010, 2015 (Fed. Cir. 1993)), or the
more stringent “two-way test” (In re Braat, 937 F.2d 589, 593,
19 USPQ2d 1289, 1292 (Fed. Cir. 1991)). Since we conclude
that the rejection does not pass the “one-way test,” the
question of which test to apply is moot.
Considering the language of claims 1 and 2 of Middleman
in relation to claim 21, we agree with the examiner that the
“hollow placement device” recited in claim 21 is met by the
“elongated tube” recited in claim 1, and the “memory alloy
element” of claim 21 finds response in the “elastic member”
recited in claim 1 (as modified by claim 2). However, claim
21 further recites “the hollow placement device stressing the
memory alloy element . . . so that the memory alloy element is
in its deformed shape,” the “deformed shape” being “when the
alloy is in its stress-induced martensitic state.” There are
no such limitations in claims 1 and 2 of the patent; rather,
claim 1 recites the opposite, namely, “the elastic member
[memory alloy element] being sufficiently stiff to cause the
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