Appeal No. 96-1536
Application 08/136,241
this disclosure clearly describes the subject matter now
claimed by appellants in amended claim 2.
We reject the examiner's theory that the rejection
under 35 U.S.C. § 112 is mandated by the M.P.E.P. § 1411.02
and United States Industrial Chemicals, Inc. v. Carbide &
Carbon Chemicals Corp., 315 U.S. 668, 53 USPQ 6 (1942). The
proper inquiry into satisfaction of the written description
requirement is factual and depends, not on what is omitted
from an amended claim but, what is now being claimed by the
amended claim. Further, the examiner has failed to establish,
as was his burden, why the omission of one process step in a
multi-step process described in the disclosure as optional
(see column 4, lines 64 through column 5, line 2) can be
considered to be not described ("new matter").
Moreover, as correctly noted by appellants, the
statute has been amended since the decision in United States
Industrial Chemicals, Inc. and the statute now requires only
that the reissue application is for "the invention disclosed
in the original patent" 35 U.S.C. § 251 (1997). See In re
Amos, 953 F.2d 613, 616-619, 21 USPQ2d 1271, 1273, 1274 (Fed.
Cir. 1991); In re Hounsfield, 699 F.2d 1320, 216 USPQ 1045
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