Appeal No. 1999-0944
Application No. 08/890,252
first paragraph, as being based upon a patent disclosure that
fails to provide descriptive support for the invention as now
claimed.2,3
The examiner’s rationale for the rejection is found on
pages 2-3 of the final rejection and reads as follows:4
The change to first and second in place of upper and
lower . . . [is] considered new matter . . . . [T]he
terms first and second are much broader than the
terms upper and lower. First and second can mean
forward and rearward or left and right for example,
which are clearly different than upper and lower and
therefore not disclosed in the specification as
originally filed. . . . No where [sic] in the
original specification were the parts ever disclosed
as being anything other than upper and lower. . . .
The examiner is correct that the claim language "first"
2In the final rejection, the examiner also objected to the
specification and drawing as containing new matter; however, this objection
has not been expressly carried forward in the examiner’s answer. Had the
examiner maintained the objection, we would have been obligated to consider
the merits thereof. See M.P.E.P. § 2163.06 (II) REVIEW OF NEW MATTER
OBJECTIONS AND/OR REJECTIONS.
3Based on the designation of elements 66U and 66L as upper and lower
suction cups, and the depiction of the apparatus in Figure 3 as being
supported on a ground surface, it is apparent that Figure 3 is a partial
elevation of the apparatus. Accordingly, the description of Figure 3 in the
BRIEF DESCRIPTION OF THE DRAWINGS section of the specification should be
amended to reflect that Figure 3 is a partial elevation view of Figure 2
rather than a partial plan view thereof.
4 Upon consideration of appellants’ arguments in the main brief, the
standing 35 U.S.C. § 112, first paragraph, rejection is no longer based on
changing “onto” in patent claims 1-3 to “in combination with” in reissue
claims 1-3. See page 3 of the examiner’s answer.
4
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