Appeal No. 2005-1078
Application 09/681,303
used . . . [it] must [be determined] whether the patent’s specification provides some standard for
measuring that degree.”); In re Mattison, 509 F.2d 563, 564-65, 184 USPQ 484, 486 (CCPA
1975).
However, because a reasonable interpretation of “a material exhibiting little . . . memory
retention” is any material, which can be a metal, that is capable of effective flexibility under the
conditions of use for the claimed flexible source wire which, of course, includes operating room
and patient body temperatures, for purposes of this appeal and to avoid piecemeal prosecution,
we can conditionally so interpret the claim language in order to resolve prior art issues in this
appeal without unsupported speculative assumptions, cf. In re Steele, 305 F.2d 859, 862-63,
134 USPQ 292, 295 (CCPA 1962); Ex parte Saceman, 27 USPQ2d 1472, 1474 (Bd. Pat. App. &
Int. 1993), even though the claim language “little . . . memory retention” when considered in
light of the written description in the specification raise issues of whether the appealed claims
fail to set out and circumscribe a particular area with a reasonable degree of precision and
particularity.4 See The Beachcombers, Int’l. v. WildeWood Creative Prods., 31 F.3d 1154, 1158,
31 USPQ2d 1653, 1656 (Fed. Cir. 1994), citing Orthokinetics Inc v. Safety Travel Chairs Inc.,
806 F.2d 1565, 1576, 1 USPQ2d 1081, 1088 (Fed. Cir. 1986); In re Moore, 439 F.2d 1232, 1235,
169 USPQ 236, 238 (CCPA 1971).
We further determine that the subject claim language reads on “a material” that exhibits
“little or no memory retention when bent” at any point in time. Cf. See Exxon Chemical Patents
Inc. v. Lubrizol Corp., 64 F.3d 1553, 1555-58, 1558, 35 USPQ2d 1802-05, 1804 (Fed. Cir.
1995) (“The specification as a whole, and the claims in particular, contain no temporal limitation
to the term ‘composition.’ . . . The composition of claim 1, once its ingredients are mixed, is a
composition existing during manufacture that is being used to produce the end product.
Consequently, as properly interpreted, Exxon’s claims are to a composition that contains the
specified ingredients at any time from the moment at which the ingredients are mixed together.
This interpretation of Exxon’s claims preserves their identify as product claims, and recognizes
as a matter of chemistry that the composition exists from the moment created.”).
4 We suggest that the issue of whether the claim language “little . . . memory retention” satisfies
the requirements of 35 U.S.C. § 112, second paragraph, be considered by the examiner upon
further prosecution of the appealed claims subsequent to the disposition of this appeal.
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