Appeal No. 97-0939
Application 08/127,319
also well settled that the content of the drawings may be considered in determining compliance with the
written description requirement. See Wang Lab., Inc. v. Toshiba Corp., 993 F.2d 858, 865, 26
USPQ 1767, 1774 (Fed. Cir. 1993); Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1564, 19
USPQ2d 1111, 1117 (Fed. Cir. 1991). See also In re Kaslow, 707 F.2d 1366, 1375, 217 USPQ
1089, 1096 (Fed. Cir. 1983).
It is the examiner’s view, as expressed on pages 2-3 of the final rejection, that the original
disclosure does not provide descriptive support for the steps of claims 1, 20 and 27 of (1) removing the
elongate instrument from the pre-peritoneal space, thereby permitting herniated tissue to project into
said pre-peritoneal space, (2) after removal of the instrument from the pre-peritoneal space, performing
a laparoscopic hernia repair operation on the herniated tissues, and (3) inflating the balloon any time
after disposition rather than upon disposition thereof into the pre-peritoneal space. In addition, the
examiner considers that the step of claims 2, 21 and 28 of (4) infusing a gaseous composition into the
space to expand and maintain the same in an expanded state during the operation is not described in the
original disclosure.
After reviewing appellant’s disclosure as originally filed, it is our determination that the
specification and drawings thereof, although somewhat incomplete, are sufficient to provide “written
description” support within the meaning of the first paragraph of 35 U.S.C. § 112 for the steps called
into question by the examiner. Support for step (1) is found, in our view, in a comparison of Figures 1
5
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 Next
Last modified: November 3, 2007