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).
5
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