Appeal 95-4477
Application 08/006,350
25. The chart demonstrates that only medium 3 has an
organopolysiloxane A to polysiloxane B ratio within the
claimed range of >10:1 to 15:1, i.e., an A:B range of 11.57,
which when rounded to the nearest unit is 12.
26. Accordingly, it is not clear how applicant
arrived at an A:B ratio of polysiloxane A to polysiloxane B of
about >10:1 to 15:1. Nor is it entirely clear why applicant
limited the upper range to 15:1, when the chart describes an
A:B ratio of about 19:1.
B. Discussion
1. New ground of rejection
A claim which contains a limitation not described in the
specification is properly rejected for failure to comply with
the description requirement of the first paragraph of
35 U.S.C. § 112. In re Rasmussen, 650 F.2d 1212, 1214, 211
USPQ 323, 326 (CCPA 1981) (the proper basis for rejection of a
claim amended to recite elements thought to be without support
in the original disclosure is the first paragraph of § 112).
Guidance on evaluation of whether a claim added to an
application after its filing date is set out by our appellate
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