Appeal No. 97-2486
Application No. 08/308,983
Eggers teaching of how to make bipolar scissor
blades [i.e., end effectors] is set out in columns
14 and 15 of the '230 patent. In one embodiment,
Eggers teaches coating stainless steel blades with a
ceramic material. In another embodiment, Eggers
teaches coating most of the exterior surfaces of
ceramic blades with copper, silver, or nickel. In
neither embodiment does Eggers teach or suggest
investment casting. Claim 37 specifically requires
"casting a conductive body
according to an investment casting process". When 4
an end effector is made by investment casting
according to the invention, all features of the end
effector are formed during casting to provide an
integral end effector element. This is in contrast
with the prior art practice of making stainless
steel end effectors which involves forging and
extensive machining to achieve the desired finished
forms. The use of investment casting eliminates the
need for forging, extensive machining, abrasive
blasting, pickling and other treatments. Therefore,
it is submitted that the step of investment casting
as set forth in method claim 37 provides unexpected
results as compared to the prior art methods of
making end effectors. [Pages 6 and 7; footnote
added.]
We are unpersuaded by the appellants' arguments. While
the obviousness of an invention cannot be established by
4The specification makes no mention whatsoever of
"investment" casting the conductive body but, instead, more
broadly refers to "casting" this body (see, e.g., page 6, line
1). However, adequate descriptive support for this limitation
is found in claim 37 as originally filed. If the provision of
"investment" casting was such a vital part of the appellants'
invention, it seems strange to us that all mention of its
importance was omitted from the original description. See
Graham v. John Deere Co., 383 U.S. 1, 24-26, 148 USPQ 459,
469-470 (1966).
5
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 Next
Last modified: November 3, 2007