Ex Parte GREEN - Page 10




             Green next argues that we construed "end effector" too                 
        narrowly in light of Green's full disclosure (Paper 79 at 23).              
        At the outset, Green argues that we improperly shifted roles by             
        looking into Green's specification on our own without being                 
        directed to certain passages by Wang. As stated above, Wang has             
        a negative burden of demonstrating that something isn't so. That            
        Wang did. That we "on our own" verified the truth of the                    
        assertions does not mean that Wang failed to meet its burden.               
             Green argues that we failed to look at Green's entire                  
        specification in making our decision, since we ignored non                  
        surgical embodiments when interpreting the term "end effector"              
        (Paper 79 at 25). Green's entire disclosure was considered in               
        rendering our decision. Green claim 144 recites "A system for               
        allowing a surgeon to control a surgical instrument ... an                  
        articulate arm having an end effector for holding the suraical              
        instrument..." The challenge mounted by Wang was that Green                 
        failed to provide written description support for an end effector           
        for holding the surgical instrument. In this respect, Green's               
        specification was reviewed for a description (including all                 
        drawings) that describedan end effector for holding the surgical            
        instrument. As we stated in our decision, in the context of                 
        surgery, e.g. using a surgical instrument, Green's specification            
        describes the end effector as the surgical instrument. The end              
        effector is not for holding the surgical instrument, but rather             


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