Ex parte RIEK et al. - Page 5

                 Appeal No. 97-2600                                                                                                                     
                 Application 08/500,091                                                                                                                 

                 conclude that the examiner’s rejection of the appealed claims                                                                          
                 cannot be   sustained.                  3                                                                                              
                                   The examiner’s position is summarized on pages 4 and                                                                 
                 5 of the answer in the following manner:                                                                                               
                                   [T]he independent claims filed with the                                                                              
                                   instant application, claims 16, 27, 30 and                                                                           
                                   44 contained recitations of “an advancing                                                                            
                                   element. . . having a cutting edge” or “at                                                                           
                                   least one cutting element.”  The Examiner                                                                            
                                   noted that the specification discussed an                                                                            
                                   alter-nate embodiment of the trocar, as                                                                              
                                   shown in Figure 7, where the window 34 was                                                                           
                                   provided with a spiral 48 that is made from                                                                          
                                   a wire that appears to have surfaces con-                                                                            
                                   verging    to an edge (see pages 15-16 of                                                                            
                                   the instant specification).  The Examiner                                                                            
                                   also noted that the discussion at pages 15-                                                                          
                                   16 did not impart, infer or otherwise de-                                                                            
                                   scribe a “cutting element” or an element                                                                             
                                   that has the capability of being able to                                                                             
                                   cut.  In other words, the spiral 48 was no                                                                           
                                   more that [sic, than] a wire which aided in                                                                          
                                   the corkscrew motion which, in turn, aided                                                                           
                                   in the penetration of the device rather                                                                              
                                   than in the cutting of tissue.  The                                                                                  

                          3It therefore follows that we do not support the exam-                                                                        
                 iner’s decision to require cancellation of the amendatory                                                                              
                 subject matter regarding the recitations of a “cutting edge or                                                                         
                 cutting element” and “advancing, cutting and penetrating”                                                                              
                 which were introduced into the specification by the amendment                                                                          
                 filed on April 19, 1996 (Paper No. 11).                                                                                                

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