Appeal No. 94-3399
Application 07/871,374
The rejection of claim 2 under § 112, first paragraph,
however, is on a different footing. The examiner stated that:
In amended claim 2, N is defined as “the
numerical lens aperture value”. However, at page 9
(line 15) of the specification, N is defined as the
value of the refractive index. The examiner has no
knowledge that these two variables, “refractive
index” and “lens aperture” are the same.
In other words, the formula now claimed not only lacks literal
support, but is not reasonably conveyed in the original
disclosure. Since appellants do not dispute the examiner's
conclusion and finding, see Brief, page 26, we will affirm the
rejection of claim 2.
In reaching this conclusion, we note appellants'
inadvertent error argument based on the apparent difference
between the designations of "N" in the now claimed and the
originally disclosed formulas. See Brief, pages 26 and 27.
However, we are not persuaded because, by definition, all new
limitations violating the § 112 description requirement are
different from those originally disclosed. There simply is no
evidence that one of ordinary skill in the art would have read
the now claimed formula as the one originally disclosed.
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