Appeal No. 2001-1553 Page 7
Application No. 09/224,757
Written Description
The examiner has rejected claims 25, 26 and 31 under the first paragraph of 35
U.S.C. § 112 on the basis that the limitations added to claim 25 in the amendment filed
April 3, 2000 (Paper No. 9) “directed to ‘compound having at least about 40% titanium
and at least about 50% nickel by weight’ are unsupported by the application as
originally filed” (answer, page 6). Appellant explains on page 5 of the brief that claim 25
was narrowed by adding the above-mentioned limitation to define over Hribernik’s
sintered material containing 56.28% nickel but only 2.5% titanium. Appellant also
states that
[t]he Examiner is correct that Applicant never defined Nitinol
in precisely those words, but the definition of Nitinol in the
specification substantially supports the definition in claim 25.
On page 13, “60 Nitinol” is described as 60% nickel and 40%
titanium. On page 18, “56 Nitinol” is described as 56%
nickel and 44% titanium. Then later on page 18, “55 Nitinol”
is described as a 50/50 atomic percentage with the
possibility of some doping compounds added to raise the
transition temperature [brief, page 5].
Appellant goes on to state that the addition of the claimed range was intended to limit
claim 25 to Nitinol and concedes that a more direct means to the intended end would
have been simply to claim it as “Nitinol.”3
The test for determining compliance with the written description requirement is
whether the disclosure of the application as originally filed reasonably conveys to the
3 In fact, appellant attempted to so amend claim 25 in the amendment after final submitted with
the brief, which has been refused entry by the examiner, as discussed supra.
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