Appeal No. 2005-1078
Application 09/681,303
well as titanium/nickel alloy preferred embodiments and do not characterize the properties of all
of the materials that would fall within the subject claim language.
Thus, we find no definition in the specification for the term “no memory retention” and
or the term “little . . . . memory retention” wherein “little” is used as a term of degree. We
determine that the term “memory retention” must be considered in the context of “flexible”
materials which must have sufficient flexibility to traverse “a tortuous path in varies arteries,
veins, ducts or the like inside the body to reach the treatment site,” withstanding “the many
bends” encountered in doing so “without breaking,” wherein the “length of the tube is generally
greater than 100cm,” (specification, e.g., page 2, [0003], and page 5, [0015]; see also brief, page
12). Thus, it seems to us that the term “no memory retention” can reasonably be interpreted as
any material, which can be a metal, that is capable of continuous flexibility under the conditions
of use for the claimed flexible source wire which, of course, includes operating room and patient
body temperatures.
The extent to which a material exhibits “little . . . memory retention” and is thus
encompassed by the claims, depends, of course, on the definition of the term of degree “little.”
In the absence of a definition in the specification for “little . . . memory retention” we must
determine whether the term “little” can be given its ordinary meaning in context. See Morris,
supra; York Prods., 99 F.3d at 1572-73, 40 USPQ2d at 1622-23. The term “little” has the
common dictionary meaning in context of “[s]mall in quantity or degree,” and the term “small”
has the common dictionary meaning in context of “[l]imited in degree or scope.”3 We find no
guidance in these definitions which would lead one of ordinary skill in the art to the properties
that a material can possess in exhibiting “little . . . memory retention.” We further find no
disclosure in the written description in the specification which one of ordinary skill in this art
could refer to in order to determine the extent of this limitation. See Seattle Box Co., Inc. v.
Industrial Crating & Packing, Inc., 731 F.2d 818, 826, 221 USPQ 568, 573-74 (Fed. Cir. 1984)
(“Definiteness problems arise when words of degree are used. That some claim language may
not be precise, however, does not automatically render a claim invalid. When a word of degree is
3 See generally, The American Heritage Dictionary, Second College Edition 736, 1154 (Boston,
Houghton Mifflin Company, 1982); Webster’s II New Riverside University Dictionary 698-99
(Boston, The Riverside Publishing Company. 1984).
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