Ex Parte GREEN - Page 9





                For the same reasons given above, as applied to Green                                  
          preliminary motion 5 for judgment against Wang on the ground that                            
          Wang claims 7 and 12 are unpatentable under 35 U.S.C. § 102(e) as                            
          being anticipated by Jensen U.S. patent 5,649,956 (Jensen 1956),                             
          Jensen 1956 is prior art to Wang.                                                            
                In its preliminary motion 5, Green directs us to where in                              
          the Jensen 1956 patent, the claimed elements are described. In                               
          addition and in compliance with paragraph 26(d) of the Standing                              
          Order, Green includes an (1) Appendix A of Wang claims 1, 4, 6,                              
          and 7 with citations to Jensen 19S6 for every claimed element and                            
           (2) Appendix B of Wang claims 9 and 12 with citations to Jensen                             
           1956 for every claimed element (Paper 28).                                                  
                The Jensen 1956 patent incorporates the disclosure of                                  
          Green's parent application 07/823,932 ('932), which is identical                             
          to Green's involved application.                                                             
                In its opposition, Wang argues that the 1932 specification                             
          does not provide an enabling disclosure for a controller having a                            
          handle and being in electrical communication with the robotic arm                            
          as recited in Wang claim 1 and Wang claim 9. Wang argues that                                
          the "932 disclosure does not provide the structure or mechanisms                             
          including the motors ehat operate the device, and that these                                 
          essential items are described as not being shown in the '932                                 
          disclosure (Paper 54 at 4 and 9).                                                            
                 Wang directs us to no supporting evidence that demonstrates                           
          experimentation would be necessary to practice the '932                                      
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