Ex Parte GREEN - Page 12





                 Wang additionally argues that the '932 disclosure does not                            
           provide an enabling disclosure for pivoting the distal end of a                             
           surgical instrument as recited in Wang claim 4, since the motors                            
           and linkages necessary for pivotal movement are not disclosed                               
           (Paper 54 at 8).                                                                            
                 Wang claim 4 does not recite pivoting the distal end of a                             
           surgical instrument. Wang claim 4 recites that the surgical                                 
           instrument comprises a base, a pivot linkage, and a distal end.                             
           Once again, Wang is impermissibly reading limitations into its                              
           claim. Wang claim 4 is not ambiguous. The terms need no                                     
           clarification. Wang provides no explanation as to why its claim                             
           4 should be interpreted such as to add limitations into its                                 
           claims.                                                                                     
                 Since Wang has failed to sufficiently demonstrate that Wang                           
           claim 4 requires pivoting the distal end of a surgical                                      
           instrument, Wang's enablement argument is not persuasive.                                   
                 In any event, Wang has failed to sufficiently demonstrate                             
           that one of ordinary skill in the art would be faced with undue                             
           experimentation to operate the instrument about the pivot point                             
           of the incision.                                                                            
                 Wang's assertionEý'that the 1932 disclosure lacks mechanisms                          
           and structures for pivotal movement are conclusory. Wang fails                              
           to direct us to evidence that would support Wang's arguments that                           
           the 1932 disclosure fails to provide the mechanisms that one of                             
           ordinary skill would need to practice the claimed invention.                                
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