Page 5
Appeal No. 1999-1814
Application No. 08/688,108
In rejecting claims 13-19 under 35 U.S.C. § 112, first paragraph, the examiner contends that
the specification, while being enabling for a method to carpal tunnel surgery, does not
reasonably provide enablement for surgery on other portions of the body. The
specification does not enable any person skilled in the art to which it pertains, or with
which it is most nearly connected, to use the method of the invention commensurate in
scope with these claims. On page 3 and 4 of the specification it states that "in it's [sic:
its] broadest aspects the surgical instrument of the present invention is utilized in
conjunction with surgery to relieve carpal tunnel syndrome" also on page 4 the applicant
specifically states that "Pursuant to the method of this invention" which inherently would
limit the method of use to carpal tunnel surgery [answer, page 3].
We note, at the outset, that appellant's specification (page 1, lines 5-9) states that the invention
relates to "a surgical instrument for and a method of performing subcutaneous surgery, specifically the
utilization of the surgical instrument to illuminate the carpal tunnel area . . ." From our perspective, this
would have conveyed to one of ordinary skill in the art that the disclosed method steps are applicable
to subcutaneous surgery generally and more specifically, as an example, to carpal tunnel ligament
surgery. While it is true that the specific embodiment of the invention described in detail in the
specification is carpal tunnel surgery, the examiner has not advanced any explanation as to why one of
ordinary skill in the art of subcutaneous surgery would not have been able to apply the teachings of
appellant's disclosure to other forms of subcutaneous surgery.
Accordingly, we shall not sustain the examiner's rejection of claims 13-19 under
35 U.S.C. § 112, first paragraph.
The rejection under 35 U.S.C. § 112, second paragraph
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