Ex parte MOORMAN - Page 11




          Appeal No. 95-3406                                                          
          Application 07/940,016                                                      



          filed with Paper No. 16, dated October 19, 1994, contain new                
          matter not supported by the appellant’s disclosure as originally            
          filed.  Appellant’s depiction of the depression as it appears now           
          in the newly filed drawings in the top surface of the top member            
          adjacent the end opposite opening 43, as well as the particular             
          shape of the depression, is not based on any information provided           
          by the disclosure as originally filed.  In view of the broad                
          language of original claim 5 which is the sole basis for the                
          claimed "depression", the depression could have any shape, could            
          be located on any of the top, bottom or side surfaces of the top            
          member, and could be on the end opposite opening 43 or on the end           
          opposite opening 44.  It is readily apparent that the newly                 
          submitted depiction of the casing and the depression with its               
          particular shape and location constitutes new matter that is not            
          supported by anything in the specification as originally filed.             
          Since the claims must be interpreted in light of the disclosure,            
          it is also clear that appealed claim 8 is drawn to this new                 
          matter and hence is based on a disclosure that fails to comply              
          with the written description requirement of 35 U.S.C.  112.                
          Moreover, the metes and bounds of appealed claim 8 cannot be                
          adequately determined since an understanding of the term                    


                                          11                                          





Page:  Previous  4  5  6  7  8  9  10  11  12  13  14  15  16  17  18  Next 

Last modified: November 3, 2007