Appeal No. 95-2867 Page 8
Application 07/744,324
that Inoue may incidentally filter such a frequency falls below the
threshold for motivation or inherency. In re Rijckaert, 9 F.3d 1531,
1534, 28 USPQ2d 1955, 1957 (Fed. Cir. 1993).
C. New matter
3. Appellants have asked us to reverse the examiner's
objection to certain amendments to the drawings and specification.
(Paper 15 at 8-11.) The examiner says that "the features of
claims 18-21, which include the signal and linear signal
interpolation circuitry, and the circuitry of sampling and holding a
portion of the signal, must be shown or canceled." (Paper 9 at 2,
citing 35 U.S.C. § 132.) The new matter prohibition in section 132
applies to the disclosure. It is not an appropriate basis for
rejecting new or amended claims.3 In re Rasmussen, 650 F.2d 1212,
1214, 211 USPQ 323, 325 (CCPA 1981).
4. The examiner has not rejected claims 18-21. (Paper 9
at 1.) Our jurisdiction is generally restricted to rejected claims.
See 37 CFR § 1.191(c). Although we are authorized to review new
matter objections ancillary to claim rejections, in the absence of a
corresponding rejection, the proper vehicle for review is a petition
under 37 CFR § 1.181. MPEP § 2163.05(b); § 1002.02(c)(4)(c).
3 Claims 18-21 are original, unamended claims. (Paper 1
at 21.)
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