Appeal No. 2001-1372 Page 4
Application No. 08/018,841
terms of degree cited by the examiner, we shall review appellants’ specification to
determine whether it provides some standard for measuring that degree.
Claims 30 and 51 recite a shape memory alloy in a “relatively soft martensitic
state” (emphasis ours). We note that appellants’ specification discloses on page 8 that
“[t]he bullet 30 is soft when inserted in the [breech] 46." We find no indication in
appellants’ specification, however, of what degree of hardness is considered “soft” as
used in claims 30 and 51. Even if we interpret “soft” in claims 30 and 51 as meaning
low yield strength and consider appellants’ specification to define low yield strength as a
yield strength of 8 KSI (page 7, line 25) or less than 8 KSI (page 6, line 25), appellants’
specification provides no standards for determining the scope of “relatively soft.”
Furthermore, the recitations in claims 15 and 37 of an initial yield strength of 20 KSI and
15 KSI3, respectively, which are seemingly inconsistent with the designation in the
remainder of appellants’ specification of low yield strength as less than about 8 KSI,
raise additional questions as to what is meant by “soft,” “relatively soft” and “low
strength.” Therefore, we share the examiner’s view that, in this instance, the
terminology “relatively soft” renders claims 30 and 51, as well as claims 31, 33 and 34
which depend from claim 30 and claims 52 and 53 which depend from claim 51,
indefinite. In that “said low strength martensitic material” in claims 30 and 51 and “said
3 While these initial yield strength recitations find support in original claims 15 and 37, the seeming
inconsistency with the designation on pages 6 and 7 of a low yield strength as less than about 8 KSI is
perplexing and is deserving of some clarification.
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