Appeal No. 97-0939
Application 08/127,319
lines 50-52), whether or not this is done “depend[s] on the application” (column 4, line 53), and in
particular notes that “[s]ome tissues will stay in place to allow this latter function, after the space has
been created with the retractor” (column 4, lines 56-58). Missing from the combined teachings of the
references, in our view, is any teaching that in a hernia repair operation, the tissues in question will stay
in place so as to allow for removal of the retractor, or that, as a practical matter, the balloon of Bonutti
could be removed even if the tissues will not stay in place. In light of these deficiencies in the
disclosures of Bonutti and Moll, we will not sustain the standing § 103 rejection of claims 1-3, 6, 7, 20,
21 and 24-29 based on their combined teachings.
The Pena reference additionally applied in the § 103 rejection of claims 4, 5, 22 and 23 does
not render obvious what we have found to be lacking in Bonutti and/or Moll. Accordingly, the standing
§ 103 rejection of these claims also will not be sustained.
Rejection (g)
The 35 U.S.C. § 102(e) Rejection
Appellant does not appear to challenge the examiner’s position that the disclosure of Kieturakis
anticipates the subject matter of claims 20, 21, 24, 25, 27 and 28. Instead, appellant has submitted a
declaration under 37 CFR § 1.131 by inventor Peter J. Wilk for the purpose of “swearing behind” the
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