Appeal No. 2005-1078
Application 09/681,303
We are mindful that appellant has used the term “shape memory” in argument with
respect to metals encompassed by this claim language (brief, e.g., pages 8 and 12). We fail to
find this term in the specification. We notice that the term “shape memory alloy” has the
common scientific definition of “[a]n alloy that, after being deformed, can recover its original
shape upon heating.”5 This characteristic is temperature dependent and held by certain types of
alloys, including the alloy Nitinol® and titanium/nickel alloys, hence the term.6 However, we
find no basis in the claim language or in the written description in the specification on which to
read into the subject claim language the limitation that the broad term “a material” is limited to
“shape-memory alloys” or the Nitinol® and titanium/nickel alloy preferred embodiments, or that
the phrase “little or no memory retention when bent” is limited to the characteristics exhibited by
“shape-memory alloys” or the Nitinol® and titanium/nickel alloy preferred embodiments. See
Morris, supra; Zletz, supra.
Considering now the first ground of rejection, we have carefully reviewed the record on
this appeal and based thereon find ourselves in agreement with the supported finding advanced
by the examiner that as a matter of fact, prima facie, appealed claim 1 is anticipated by Liprie
‘781. Therefore, we again evaluate all of the evidence of anticipation and non-anticipation based
on the record as a whole, giving due consideration to the weight of appellant’s arguments in the
brief. See generally, In re Spada, 911 F.2d 705, 707 n.3, 15 USPQ2d 1655, 1657 n.3. (Fed. Cir.
1990).
Appellant contends that Liprie ‘781 is not anticipatory of claim 1 because the housing of
the source wire thereof is constructed of stainless steel, tantalum or titanium which are not
“shape memory material,” citing col. 6, ll. 24-29 (brief, page 8). The cited disclosure of Liprie
‘781 describes the securing of the radioactive source in the housing tube.
We cannot subscribe to appellant’s position. We find that the reference discloses that the
stainless steel, titanium and tantalum metals for the thin and flexible housing are selected based
5 See generally, McGraw-Hill Dictionary of Scientific and Technical Terms 1806 (5th ed., Sybil
P. Parker, ed., New York, McGraw-Hill, Inc. 1994).
6 See generally, Jeff Perkins, “Shape memory alloys,” 16 McGraw-Hill Encyclopedia of Science
& Technology 357-59 (7th ed., New York, McGraw-Hill, Inc. 1992); L. McDonald Schetky,
“Shape-Memory Alloys,” 20 Kirk-Othmer Encyclopedia of Chemical Technology 726-36 (3rd
ed., New York, John Wiley & Sons, 1982).
- 6 -
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 Next
Last modified: November 3, 2007