Appeal No. 1999-0963 4
Application No. 08/787,189
As an initial matter the appellants state that, “[t]he rejected claims should stand or
fall together.” See Brief, page 6. Accordingly, we select claim 1, the broadest
independent claim as representative of the claimed subject matter before us. See 37 CFR
§ 1.192 (c)(7)(1997).
Rejection under 35 U.S.C. § 112
We turn initially to the examiner’s rejection under the first paragraph of 35 U.S.C.
§ 112 that claim 23 is directed to new matter. In a rejection under the first paragraph of
35 U.S.C. § 112, paragraph one, it is sufficient if the originally filed disclosure would
have conveyed to one of ordinary skill in the art that the appellants had possession of the
concept of what is claimed. In re Anderson, 471 F.2d 1237, 1240-41, 176 USPQ
331, 333 (CCPA 1973). There is no requirement that the language of the claimed
subject matter be present in the specification in ipsissima verba.
The examiner submits that the language of claim 23 is unsupported in the
specification and specifically is unsupported in Example XI as alleged by the appellants.
2
See Answer, page 4 and Brief, pages 6 and 7. We agree. Example XI, is directed to
mixing the magnetic fluid sample of Example X with potassium silicate. The appellants
argue that potassium silicate having a variable composition of K Si O to K Si O which2 2 5 2 2 7
2We refer in all instances in our opinion to the “Supplemental Examiner’s Answer,” mailed September
3, 1998 (Paper No. 18), and to the Brief filed, July 17, 1998 (Paper No. 13).
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