Appeal No. 95-0537
Application No. 08/077,709
In Amendment D, most of the amendments to the
abstract, specification and claims are new matter.
Particularly, the phrase:
“at least one micron square”
is new matter. Other changes with regard to the
size and alignment of the superconducting film are
also new matter. . . .
Since the specification as originally filed
contains no literal recitation of the passages
above, they are new matter.
Appellant is required to cancel the new matter
in the response to this Office action.
At the outset we note that where alleged new matter is
confined to amendments to the specification, review of an
examiner’s requirement for cancellation is by way of petition.
MPEP § 608.04(c) (7th ed., Jul. 1998); see also In re
Hengehold, 440 F.2d 1395, 1403, 169 USPQ 473, 479 (CCPA 1971)
(an objection to the specification is not an appealable matter
under 35 U.S.C. § 134). Therefore, we decline to decide
whether the phrase “(i.e. it has in-plane alignment or
preferential orientation)” contains new matter since any
alleged new matter is confined to the specification.
However, where any alleged new matter is introduced into
or affects the claims, thus necessitating their rejection on
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