Appeal No. 95-3114
Application 08/051,800
which also fasten the anchorage portions in the vehicle body.”
There is no disclosure of any such structure for the embodiment
of Fig. 1.
On January 28, 1993, appellant filed an amendment adding a
new figure, Fig. 4, which appears to show the apparatus of Fig. 1
with the addition of a seal member between the neck 10 and the
vehicle, and a screw 18 fastening the neck and seal to the
vehicle body. The examiner objected to this amendment as new
matter and required cancellation of the added material (final
rejection, page 2). She further held this requirement to be
petitionable, rather than appealable, noting that the claims have
not been rejected as involving new matter (Paper No. 33, page 2; 6
Paper No. 36, page 2).
We agree with the examiner that the question of new matter,
per se, is not before us, since no claims have been rejected on
that ground. See MPEP § 608.04(c) and Ex parte Wilcox, 39 USPQ
501, 502 (Bd. App. 1938). Appellant, however, refers to Fig. 4
in arguing that it shows that the species of Figs. 1 and 2 are
not mutually exclusive. This argument goes to the propriety of
6While amendatory matter may properly be objected to as
new matter under 35 U.S.C. § 132, any rejection on that ground
would be under 35 U.S.C. § 112, first paragraph, rather than 35
U.S.C. § 132. See In re Rasmussen, 650 F.2d 1212, 211 USPQ 323
(CCPA 1981).
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