Ex Parte GREEN - Page 10





           disclosure, let alone that such experimentation would be undue.                              
           That the motors for operating the arm and controller are not                                 
           shown, does not by itself demonstrate that one skilled in the art                            
           would not be able to practice the claimed invention.                                         
                 Wang further argues that the 1932 disclosure fails to                                  
           disclose that the "movement at the controller produces a                                     
           proportional movement of the robotic arm and surgical instrument"                            
           of Wang claim 1. Wang argues that the limitation requires                                    
           scaling the movement at the controller so that the robotic arm                               
           and surgical instrument have a movement that is different (Paper                             
           54 at 5). Wang claim 1 does not require scaling the movement.                                
           In any event, Wang has failed to sufficiently demonstrate that                               
           the Green '932 disclosure does not describe a "scaling" feature.                             
                 Wang argues that the '932 disclosure describes changing the                            
           work site dimensions, but does not describe scaling the movement                             
           at the controller so that the robotic arm and surgical instrument                            
           have a movement that is different. Wang directs us to the                                    
           portion of Green's '932 disclosure that state:                                               
                       Any scale factor may be employed, the invention not                              
                 being limited to full-scale manipulation. For example, the                             
                .worksite can be small, including microscopic in size, in                               
                 which case the optical parameters, including distance to                               
                 object, interocul'&r distance and focal length, and                                    
                 mechanical and dimensional parameters are appropriately                                
                 scaled.                                                                                
                       By using appropriate scaling and image magnification                             
                 and force and torque feedback, and by locating the image 30V                           
                 of the workspace 30 adjacent hand-operated control means 76R                           
                 and 76L, the operator is provided with a strong sense of                               

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