Appeal No. 98-0673
Application 08/723,355
otherwise not supported by the original patent disclosure.
Note that no rejection for inadequate written description
under 35 U.S.C.
§ 112, first paragraph, has been made. The examiner argues
that a restriction requirement would have been made in the
original patent application had these new claims been
presented there. Even assuming that to be true, it does not
demonstrate that claims 6-11 add new matter to the original
disclosure or otherwise would have been rejectable under any
section of the patent statute. Moreover, note that a
restriction is not based on any deficiency in the content of
the appellant’s disclosure.
If the examiner desires to make a restriction
requirement, then it is a restriction requirement which should
be asserted, not a rejection of the claims for lack of an
"intent to claim" under 35 U.S.C. § 251. The appellant can
respond to such a requirement in the same way that he could
have responded to a restriction requirement made in the
original application.
For the foregoing reasons, the rejection of claims 6-11
under 35 U.S.C. § 251 cannot be sustained.
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