Appeal No. 97-3918 Application 08/447,901 On April 10, 1995, appellants filed a proposed correction of Figure 5 to add a box labeled "Gain Control" connected by a dashed line to the arrow on gm amplifier 24A. The examiner has disapproved that proposed drawing correction because it introduces new matter into the drawings. 37 CFR § 1.118 states that matter involving a departure from or an addition to the original disclosure cannot be added to the application after its filing date. The original disclosure does not support the showing of the gain control box. Instead, the specification, on lines 15-16 of page 16, states that "a gm amplifier 24[A] of the variable gain type is employed in place of the first gm amplifier 24." This disclosure does not enable a new gain control element. [Final Office action (paper No. 15) at 2.] Inasmuch as the stated basis for the objection is new matter, which is a written description support issue, the examiner's use of the term "enable" in the last sentence of the foregoing passage is not being construed as raising lack of enablement as an issue, which in any event is not a proper basis for6 refusing an amendment to the drawing. The examiner contends that the new matter issue raised by the drawing objection is 6 The "written description" and "enablement" requirements of the first paragraph of 35 U.S.C. § 112, are separate and distinct. Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563, 19 USPQ2d 1111, 1117 (Fed. Cir. 1991); In re Wilder, 736 F.2d 1516, 1520, 222 USPQ 369, 372 (CCPA 1984). - 6 -Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 NextLast modified: November 3, 2007