Page 9
Appeal No. 1999-1814
Application No. 08/688,108
that the invention is patentable, resort to speculation, unfounded assumptions or hindsight reconstruction
to supply deficiencies in the factual basis. In re Warner, 379 F.2d 1011, 1017, 154 USPQ 173, 177
(CCPA 1967), cert. denied, 389 U.S. 1057 (1968).
Initially, we note that the examiner has not supplied any evidence to support the assertion that it
would have been obvious to one of ordinary skill in the art to insert the narrowest portion of the
instrument into the incision as the leading edge. For this reason alone, the examiner's obviousness
rejection appears to be based on speculation or impermissible hindsight, using appellant's disclosure as
a template to reconstruct the claimed invention, and must therefore fall. Moreover, even accepting the
examiner's position that it would have been obvious to one of ordinary skill in the art to insert the
narrowest portion of the instrument into the incision as the leading edge in either the "conventional"
technique or the inventive surgical method disclosed in the Chow patent, Chow still lacks any teaching
or suggestion of the step of rotating the closed blade portions substantially 90 degrees as required by
the claims. Turning first to the "conventional" technique discussed in column 3 and illustrated in Figures
2 and 3, to conclude that the cutting orientation of the scissors is any different than the insertion
orientation (i.e., the orientation in which the narrowest portion of the instrument is the leading edge) and
therefore is achieved only after a 90 degree rotation of the blades would require speculation. As for the
inventive surgical method of Chow, the cannula 1 is generally circular in cross section and is of a
diameter greater than either dimension of the blade 11 or its enlarged head (column 4, line 3, and
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 Next
Last modified: November 3, 2007