Appeal No. 2001-1553 Page 8
Application No. 09/224,757
artisan that the inventor had possession at that time of the later claimed subject matter,
rather than the presence or absence of literal support in the specification for the claim
language. See Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563-64, 19 USPQ2d 1111,
1116-17 (Fed. Cir. 1991) and In re Kaslow, 707 F.2d 1366, 1375, 217 USPQ 1089,
1096 (Fed. Cir. 1983).
We note, at the outset, that appellant’s original application discusses the use of
55 Nitinol (a 50/50 atomic percentage intermetallic compound of nickel and titanium
with some doping materials added to raise the transition temperature) only for the
sleeve 82 (specification, page 18) in the second embodiment, with the liner tube 80
made of 60 Nitinol (specification, page 17) or for the intermediate sleeve 114 of the
third embodiment (specification, page 21), with the liner tube 110 made of 60 Nitinol
and an outer sleeve 112 made of 56 Nitinol, an alloy “220VC” from Metaltex
International Corp. or “Alloy A” from Raychem Corp. In other words, we find no
disclosure in appellant’s original application for the use of 55 Nitinol for the inner liner or
tube and contact surface. Accordingly, appellant’s reliance on the disclosure of 55
Nitinol for support for the “tube and contact surface being made of a monolithic nickel-
titanium intermetallic compound having at least about 40% titanium and at least about
50% nickel by weight” is unwarranted.
The other disclosures in the originally filed application alluded to by appellant
establish that appellant contemplated two specific types of Nitinol, namely, 56 Nitinol
(56% nickel, 44% titanium) and 60 Nitinol (60% nickel, 40% titanium) for use in forming
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