Appeal No. 2005-1078
Application 09/681,303
interpretation in light of the written description in the specification, including the drawings, as
interpreted by one of ordinary skill in the art, and without reading into the claims any limitation
or particular embodiment disclosed in the specification. See, e.g., In re Morris, 127 F.3d 1048,
1054-55, 44 USPQ2d 1023, 1027 (Fed. Cir. 1997); In re Zletz, 893 F.2d 319, 321-22,
13 USPQ2d 1320, 1322 (Fed. Cir. 1989). In doing so, the terms in the appealed claims must be
given their ordinary meaning unless another meaning is intended by appellant. See, e.g., Morris,
127 F.3d at 1055-56, 44 USPQ2d at 1029 (“It is the applicants’ burden to precisely define the
invention, not the PTO’s. See 35 U.S.C. § 112 ¶ 2 [statute omitted].”); York Prods., Inc. v.
Central Tractor Farm & Family Ctr., 99 F.3d 1568, 1572-73, 40 USPQ2d 1619, 1622 (Fed. Cir.
1996), and cases cited therein (a claim term will be given its ordinary meaning unless appellant
discloses a novel use of that term); Zletz, supra (“During patent examination the pending claims
must be interpreted as broadly as their terms reasonably allow. When the applicant states the
meaning that the claim terms are intended to have, the claims are examined with that meaning, in
order to achieve a complete exploration of the applicant’s invention and its relation to the prior
art.”).
The principal issue in this appeal is the interpretation of the claim language “a material
exhibiting little or no memory retention when bent” which modifies “a flexible, hollow,
elongated housing tube” structure in appealed claim 1. The written description in the
specification contains essentially the same language, e.g., “a flexible housing in the form of an
elongated hollow tube constructed from a material such a [sic] Nitinol® or a titanium/nickel
alloy which exhibits little or no memory retention when it is bent” (page 3, [0007]). In this
respect, we further find that appellant discloses in the written description in the specification that
“material such as Nitinol® as well as titanium/nickel alloy which exhibits little or no memory
retention when bent have dissimilar welding properties than other metals,” and that “due to the
characteristics of ‘little or no memory” material such as Nitinol®, a titanium/nickel alloy etc.,
the ‘drawing down’ of the material illustrated in Liprie "781 [sic] is not possible” (page 4, [0009]
and [0010]). We find that these latter disclosures involve the characteristics of the Nitinol® as
2 The examiner has withdrawn the ground of rejection under 35 U.S.C. § 112, second paragraph
(answer, page 6).
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