Appeal 2007-2980
Application 10/396,649
For the above reasons the Appellant’s independent claims 1 and 12
and dependent claims 2-8, 11, 13-18 and 21-25 fail to comply with the
35 U.S.C. § 112, first paragraph, written descriptive support requirement.
The Examiner argues that the recitations in claims 21-25 regarding the
origin do not have adequate written descriptive support in the Appellant’s
original disclosure (Ans. 6). The Appellant does not respond to the
Examiner’s argument. For this additional reason we find that claims 21-25
fail to comply with the 35 U.S.C. § 112, first paragraph, written descriptive
support requirement.
Objection to the Specification under 35 U.S.C. § 132
Because the Specification and the claims contain new matter and the
Examiner has both objected to the Specification and rejected the claims
based upon that new matter, we rule on the propriety of the objection to the
Specification. See Manual of Patent Examining Procedure § 2163.06(II)(8th
ed., rev. 5, Aug. 2006).
The Examiner argues that “The origin of the first peak reference value
(dashed vertical line) is located at a percentage of the first peak value” added
to Specification paragraph 24 is new matter (Ans. 4-5). The Appellant
argues that support appears in the notation in figure 4 that “The minimum is
clipped below zero to a percentage of the first peak (p1) size (ex. 50%)” (Br.
9). That argument is not well taken because the Appellant’s original
disclosure indicates that the first peak reference value is ROW1_MAX_MIN
(Spec. ¶ 23), not the clipped p2 peak. The Appellant also argues that “still
further explanation is provided throughout the Appellant’s specification”
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