Ex parte RIEK et al. - Page 6




          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                

                                          6                                           





Page:  Previous  1  2  3  4  5  6  7  8  9  10  11  12  Next 

Last modified: November 3, 2007