Appeal No. 97-2600
Application 08/500,091
Examiner herein noted differences in the
dictionary definitions of “penetrate” and
“cutting”. Thus, the claim language per-
taining
to the “advancing element” or the “cutting
element” was not supported by the specifi-
cation or the Figures and constituted new
matter.
In support of this position the answer further states that:
Col. 3, lines 8-23 of Auburn make it clear
that sharp or smooth edges can be used
interchangeably as a means for imparting
and/or aiding penetration. Thus, when the
term “penetration” was used with respect to
a trocar’s screw-type threads, this did not
necessarily lead to the conclusion that the
threads are sharp. As Auburn demonstrates,
they may be smooth. Alvord U.S. Patent
207,932 is another example of the use of
smooth threads used to penetrate. Figure 3
of Alvord shows smooth screw-type threads
(called a “spiral” by Alvord) applied to
the external surface of a cannula and on
page 1, recites “The dilator is applied by
giving it a gentle rotary motion, the spi-
ral causing it to advance slowly in posi-
tion.” [Pages 7 and 8.]
We will not support the examiner’s position. Ini-
tially we observe that the description requirement found in
the first paragraph of 35 U.S.C. § 112 is separate from the
enablement requirement of that provision. See Vas-Cath Inc.
v. Mahurkar, 935 F.2d 1555, 1560-64, 19 USPQ2d 1111, 1114-17
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