Appeal No. 2006-0258 Page 3
Application No. 09/755,747
Claims 1-5, 7, 8, 10-18, 20, 21, 23-31, 33, 34, 36-44, 46, 47, 49-52, and
67-76 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over the
combination of Stimpson, Wittwer, and Heller.
Claims 1-6, 8-19, 21-32, 34-45, 47-52, 67-71, 73, 74, and 76 stand
rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of
Stimpson, Wittwer and Konrad.
We reverse.
DISCUSSION
New Matter:
Claims 1-5, 7-18, 20-31, 33-44, 46-52, and 67-76 stand rejected under
35 U.S.C. § 112, first paragraph, as failing to comply with the written description
requirement. More specifically, the examiner finds appellant’s September 3,
2003 amendment of the claims to include the term “monolayer” introduces new
matter into the specification. According to the examiner (Answer, page 4,
emphasis added),
[t]he amendment to include the term “monolayer” is new matter.
The specification of the instant application was word[ ]searched,
both by an optical character recognition of the specification in the
computer version of the application as well as by a word search of
the published application. The word “monolayer” as well as the
broader term “layer” were both searched (including plurals) and no
basis was found for these terms. The response confines itself to
the bare statement that “no new matter has been added by the
amendments or new claims (see page 14 of response)” but no
specific support for the term “monolayer” is identified in the
response. Therefore, in the absence of any identified support for
the term, the claims are rejected as containing new matter.
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