Appeal No. 95-3598
Application 08/125,671
ordinarily skilled artisan would have been able to fashion a
laparoscopic surgical apparatus of the type defined in
appellants' claims on appeal based on appellants' disclosure,
without the exercise of undue experimentation, and that such
device would be capable of operation in the manner claimed and
disclosed by appellants. In this regard, we point to, and note
our agreement with appellants' arguments on pages 8 through 13 of
the brief and in the reply brief. Like appellants, we note that
the examiner's concern over the use of prior art references to
support appellants' view of the level of knowledge in the art is
misplaced in a consideration of whether one skilled in the art
would have been
able to make and use the invention disclosed and claimed without
undue experimentation. The mere fact that material extraneous to
the originally filed disclosure, but known to those of ordinary
skill in the art at the time of filing of the application, might
be relied upon by the artisan in making and using the disclosed
laparoscopic surgical apparatus is not fatal. As the Court made
clear in In re Gaubert, 524 F.2d 1222, 1226, 187 USPQ 664, 667
(CCPA 1975), citing Martin v. Johnson, 454 F.2d 746, 751,
7
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