Appeal No. 97-2486
Application No. 08/308,983
considering that method in its entirety (see In re GPAC Inc.,
57 F.3d 1573, 1582, 35 USPQ2d 1116, 1123 (Fed. Cir. 1995) and
In re Warner, 379 F.2d 1011, 1017, 154 USPQ 173, 178 (CCPA
1967), cert. denied, 389 U.S. 1057 (1968)). Since the
examiner has failed to provide a factual basis (e.g.,
reference evidence) for concluding that method defined by
claims 38 and 39 (when taken as a whole) would have been
obvious, we are constrained to reverse the rejection of claims
38 and 39 under 35 U.S.C. § 103 based on the combined
teachings of Eggers and Horton.
Turning now to the rejection of claim 40 under 35 U.S.C.
§ 103 as being unpatentable over Eggers in view of Stasz, it
is the appellants' position that
Stasz et al. and Eggers are not properly combinable.
Stasz et al. is directed to an electrosurgical
scalpel which is not coupled to an actuation means,
and is not an endoscopic instrument. The scalpel of
Stasz et al. is a single blade which is not intended
for use with another similar blade; i.e., it is not
an "end effector" as claimed in the claim and
described in the specification. Meanwhile Eggers is
directed to a bipolar endoscopic instrument where
the entire outer surface of the end effector is
coated (i.e., there is no trace). If the traced
coating of Stasz et al. which extends on both sides
of the scalpel blade were to be applied to the
endoscopic instrument of Eggers, it would render
Eggers non-functional according to the teaching of
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