Appeal No. 95-1618
Application 08/033,456
filed discloses that the “invention relates to all tautomeric forms and geometric isomers of compounds
of formula I.”
The new matter objections raised by the examiner in the final rejection as per the October 15,
1993 amendment are not properly before us. While we are of the opinion that the addition of the
prime symbols help to distinguish between various subgenus compounds of the formula I set forth
on page 5 of the specification, the examiner has not shown how the new matter objection affects the
claims on appeal. By virtue of the fact that claims 1-6 are original patent claims, the underlying4
concept of the written description requirement of the first paragraph of 35 U.S.C. § 112 has been
satisfied as to these claims. In re Smith, 482 F.2d 910, 914, 178 USPQ 620, 624 (CCPA 1973). As
for claims 8-13 which were added later in the prosecution, the examiner has the initial burden of
presenting evidence or reasoning as to why one of ordinary skill in the art would not have recognized
in the specification a description of the invention as later claimed in these claims. On this record, the
examiner has not met his burden. Accordingly, the new matter objections raised by the examiner are
petitionable matters, and not new matter issues reviewable by appeal to the Board of Patent Appeals
and Interferences. Accordingly, we will not consider the new matter issue as it pertains to the
amendments to pages 10-12 and 14-16 of the specification. To the extent that the rejection of the
4 Section 608.04(c) of the Manual of Patent Examining Procedure, 6th Edition, Rev. 3, July 1997, states in part,
that
[w]here the new matter is confined to amendments to the specification, review of the examiner’s
requirement for cancellation is by way of petition. But where the alleged new matter is introduced into
or affects the claims, thus necessitating their rejection on this ground, the question becomes an appealable
one, and should not be considered on petition even though that new matter has been introduced into the
specification also.
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