Appeal No. 2006-1603
Application No. 10/646,675
From this exchange we surmise that the appellant is arguing that Vidal shows no
indicator such that one can know the axial rotation degree along the axis of the shaft
(Reply Brief p. 4), whereas the examiner is arguing that the claim is more broad. We
note in particular that the phrase “the relative position of the tip” contains no criterion
from which to measure the relative position, i.e. the position may be relative to anything.
Although not explicitly stated by the examiner, we surmise the examiner’s arguments
suggest that the tip position, as argued by the examiner, is relative to three dimensional
space, for surely, a grip on the raised surface of the Vidal obturators enables a user to
determine in which direction the tip is pointing in three dimensional space.
The absence of an explicit limitation on what the relative position is relative to
results in a claim of broader scope than that which the appellant argues, and such a
broader scope encompasses a relative position as argued by the examiner.
Because this is the only limitation argued by the appellant against the rejection
under 35 U.S.C. § 103 over Vidal, we sustain the examiner’s rejection of claim 18
under 35 U.S.C. § 103 over Vidal.
The appellant has argued that claim 8 is patentable because its underlying claim
18 is patentable and has provided no separate arguments for patentability of claim 8.
Accordingly, claim 8 falls with claim 18 and we similarly sustain the rejection of claim 8,
although we make no opinion regarding the merits that might have been presented
regarding the separate patentability of claim 8.
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