Appeal No. 2001-1553 Page 9
Application No. 09/224,757
the inner, contact surface-presenting portion of the barrel. While both of the disclosed
types of Nitinol fall within the claimed range of a “nickel-titanium intermetallic compound
having at least about 40% titanium and at least about 50% nickel by weight,” appellant’s
application, as originally filed, does not convey to one of ordinary skill in the art that
appellant contemplated, at the time the application was filed, the use of Nitinol
compounds having less than 56% nickel for the inner contact surface-presenting portion
of the barrel. We thus conclude that the disclosures alluded to by appellant in the brief
are insufficient to establish that the original disclosure provides written description
support for the full range of nickel-titanium intermetallic compounds having at least
about 40% titanium and at least about 50% nickel as now recited in claim 25 and claims
26 and 31 which depend from claim 25. Compare In re Wertheim, 541 F.2d 257, 264,
191 USPQ 90, 98 (CCPA 1976) (original application’s disclosure of a range of 25% to
60% and specific examples of 36% and 50% was insufficient to support a later claimed
range of “at least 35%” but was sufficient to support a later claimed range of “between
35% and 60%”).4
For the foregoing reasons, we agree with the examiner that the invention recited
in claims 25, 26 and 31 is not supported by the disclosure of the application as
originally filed in compliance with the written description requirement of the first
4 The appellant’s proposed amendment (Paper No. 13) to change “nickel-titanium intermetallic
compound having at least about 40% titanium and at least about 50% nickel by weight” to “Nitinol” would
appear to overcome this rejection.
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