Appeal No. 2001-1372 Page 6
Application No. 08/018,841
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.
Having reviewed appellants’ specification and found no standard for determining
what constitutes “a high modulus of toughness”5 as used in claim 37, we agree with the
examiner that this terminology renders the scope of claim 37, as well as claims 38 and
39 which depend therefrom, indefinite. The terminology “extremely strong and tough
strain-induced state” likewise renders claim 46, as well as claims 47-50 which depend
from claim 46, indefinite.
In that appellants’ specification provides no clear standards for determining what
degree of softness is required to constitute a “soft Martensite state,” as discussed
above, this terminology in claim 46 is indefinite. While the omission of the term “state”
after “Martensite” in the last paragraph of claim 46 does not further render the claim
indefinite, we agree with the examiner that this informality is deserving of correction.
For the foregoing reasons, we shall sustain the examiner’s indefiniteness
rejection of claims 30, 31, 33, 34, 37-39 and 46-53 under the second paragraph of 35
U.S.C. § 112.
5 Appellants’ specification merely mentions on page 13 that the Nitinol material has a “remarkable
toughness, or resistance to cracking,” but does not provide any standards for determining the degree of
toughness required consistent with appellants’ invention.
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