Appeal No. 2006-1509
Application No. 10/206,191
With full consideration being given to the subject matter on appeal, the
examiner’s rejection and the arguments of appellant and the examiner, and for the
reasons stated infra we will not sustain the examiner’s rejection of claims 1, 3 through 7,
and 9 through 13 under 35 U.S.C. § 112 first paragraph
The examiner states, on page 3 of the answer, that the specification does not
disclose that the image of the body organ is displayed such that the middle/center of the
displayed image always corresponds to a position of the medical instrument. Further, the
examiner states:
The only portion of the specification that refers to this feature is seen on page 4,
lines 21-23. While having the middle center of the displayed image correspond to
an accurate position of the medical instrument with respect to the organ of the
patient may appear to be a preferred embodiment of the invention, the
specification fails to disclose this as an essential, required feature of the invention.
The specification never discloses that the center of the displayed image always
corresponds to the position of the instrument. It should be noted that there is a
clear difference between an event occurring at some point in time and that same
event always occurring. The Applicant originally disclosed the occurrence of the
center of the image as showing the position of the instrument but failed to
disclose that it occurred all of the time.
Appellants assert on page 8 of the brief:
[A]lthough the exact recitations are different, the invention provides for
the image data being adjustably inserted to assure that a center of a displayed
image corresponds to an accurate current position of the surgical instrument with
reference to the organ of the patient. The examiner having acknowledged that
this is a preferred embodiment, it is clear that the inventors had possession of the
claimed invention and that the inventors/appellants are in compliance with 35
USC 112 first paragraph, written description requirement.
We concur with the appellants and are not convinced by the examiner’s rationale.
Initially we note that the examiner’s statement “the specification fails to disclose this as
an essential, required feature of the invention”, applies the wrong standard to determine
whether the disclosure complies with the written description requirement of 35 USC§
112. Our reviewing court has said the written description requirement serves "to ensure
that the inventor had possession, as of the filing date of the application relied on, of the
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