Ex parte SLATER et al. - Page 15




                 Appeal No. 97-2486                                                                                                                     
                 Application No. 08/308,983                                                                                                             

                 coating of electrically conductive material 166 to "most" of                                                                           
                 the exterior surface of the non-conductive body for the                                                                                
                 purpose of conducting electricity to the working surface of                                                                            
                 that body (see the paragraph bridging columns 14 and 15 of                                                                             
                 that body).  Consistent with the appellants' specification, we                                                                         
                 are of the opinion that the formation of the coating 166 on                                                                            
                 the non-conductive body of Eggers can broadly be considered to                                                                         
                 be "tracing a conductive path."   Moreover, Stasz clearly6                                                                              
                 teaches that conductive lines or "tracings" 24 and 26 of                                                                               
                 relative narrow width may be provided to conduct electricity                                                                           
                 to the working end of the electrosurgical tool (see column 3,                                                                          
                 lines 38-42), and this teaching would have suggested to the                                                                            
                 artisan to similarly provide conductive lines or tracings of                                                                           
                 relative narrow width on the body of the electrosurgical                                                                               
                 instrument of Eggers, if for no other reason than to save on                                                                           
                 the amount of electrically conductive material that is coated                                                                          
                 or deposited.  While the appellants contend that if the                                                                                


                          6It is well settled that the terminology in a pending                                                                         
                 application's claims is to be given its broadest reasonable                                                                            
                 interpretation consistent with the specification.  In re                                                                               
                 Morris, 127 F.3d 1048, 1056, 44 USPQ2d 1023, 1028 (Fed. Cir.                                                                           
                 1997) and In re Zletz, 893 F.2d 319, 321, 13 USPQ2d 1320, 1322                                                                         
                 (Fed. Cir. 1989).                                                                                                                      
                                                                          15                                                                            





Page:  Previous  8  9  10  11  12  13  14  15  16  17  18  19  20  21  22  Next 

Last modified: November 3, 2007