Appeal No. 96-0879
Application 08/101,228
the applicant’s [sic, applicants’] disclosure,
particularly page 10, lines 11-20, explicitly admits
the similarity between the immediate application
claim limitations and the Yamanashi et al. prior art
device, and further acknowledges that the changes
necessary to arrive at the system specifically
depicted in figure 6 (and set forth in the claims)
of the immediate application would be obvious to the
skilled artisan [answer, page 5].
The problem with the examiner’s position, however, is
that the statement in the appellants’ specification does
nothing of the sort. The admissions in the statement pertain
to the parameters or specifications of various individual
components of the appellants’ claimed surgical tool, and not
to the claimed surgical tool as a whole. There is no
reasonable basis in the statement to infer any admission by
the appellants that the claimed surgical tool would have been
obvious within the meaning of 35 U.S.C. § 103 in view of
Yamanashi. Although Yamanashi discloses various of the
components set forth in independent appealed claims 1 and 11,
this reference does not disclose, and
would not have suggested, the particular structural
interrelationships which the claims require of these
components. Thus, Yamanashi and the admissions relating
thereto in the appellants’ specification do not justify a
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