Appeal 2007-1941
Application 10/363,159
1 The examiner entered a final rejection of the claims under 35 U.S.C.
2 § 112, first paragraph, finding that the above-quoted phrase added new
3 matter. Final Rejection entered March 14, 2006. The examiner found that
4 the disclosure does not positively support the recited
5 limitation since one would not use asphalt in view of
6 appellant's disclosure, but claims still permit the presence
7 of asphalt. Nowhere in the specification teaches the
8 recited “the composition being not predominantly
9 asphalt” contrary to appellant's assertion.
10 Examiner’s Answer, p. 5.
11 ISSUE
12 The examiner contends that the negative limitation, “the composition
13 being not predominantly asphalt,” does not have support in the original
14 disclosure and is, therefore, new matter.
15 Applicant contends that (1) the preferred embodiments, (2) the need
16 for a more effective way of repairing roads and (3) the asserted benefits of
17 the invention disclosed in the specification provide the required written
18 description.
19 The issue before us is whether the applicant has demonstrated that the
20 examiner erred in finding that the concept “the composition being not
21 predominantly asphalt” was not present in the original disclosure.
22 PRINCIPLES OF LAW
23 An applicant must provide an adequate written description of the
24 invention. 35 U.S.C. § 112, ¶ 1. Adequate written description means the
25 written description must “convey with reasonable clarity to those skilled in
26 the art that, as of the filing date sought, [the inventor] was in possession of
27 the [claimed] invention.” Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563-
28 64, 19 USPQ2d 1111, 1117 (Fed. Cir. 1991). To fulfill the written
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