Appeal No. 1997-2646
Application 08/103,089
invention. We agree with Appellants that the invention is
directed to the step of focusing and pulsing at a volume to be
removed, with such removal being effected by adjacent tissues.
This is further supported by Appellant's specification, page
23, lines 10-12. We agree that the claim scope is broad but
the proper rejection for breadth is under 35 U.S.C. § 102
rather than under 35 U.S.C. § 112, second paragraph.
Turning next to the rejection of claim 17 under 35 U.S.C.
§ 102(b), the method of claim 17 includes a step of selecting
a volume of ocular lens tissue to be removed. The specific
volume selected is identified as being of “a size enabling
resolve by adjacent healthy ocular lens tissue.” The Examiner
acknowledges that Bille fails to explicitly disclose removal
of the specific volume of lens tissue recited in claim 17. 4
However, Examiner goes on to conclude that the reference must
inherently include the limitation in question. The Examiner’s
arguments of inherency are based on an assumption that, as
Bille fails to discuss surgical removal of lens tissue, the
invention disclosed therein must inherently resolve the tissue
4 See pages 9-10 of the answer mailed August 17, 2000.
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