Appeal No. 97-2785
Application 08/173,698
together.
In the examiner’s answer, claims 5 through 8 “are
rejected under 35 USC [sic, U.S.C.] 251 as being drawn to new
matter or if inappropriate claims 5-8 are rejected under 35
U.S.C. 112, first paragraph, as containing subject matter
which was not described in the specification in such a way as
to reasonably convey to one skilled in the art that the
inventor(s), at the time the application was filed, had
possession of the claimed invention”
(answer, pages 2-3). Claim 8 additionally stands rejected4
under 35 U.S.C. § 112, second paragraph, as being indefinite.
The basis for the rejections under § 251 and § 112, first
paragraph, appears to be the same, namely that the broadened
reissue claims 5 through 8 are unsupported by appellant’s
original disclosure. According to the examiner,
[n]owhere in the original disclosure is there a
basis for the invention being practiced without
“a constantly changing slope”. No part of the
4The “new matter” rejection under § 251 “is tantamount to a
rejection on the basis that the claimed subject matter has not
been described in the manner required by 35 USC [sic, U.S.C.]
112, first paragraph.” In re Salem, 553 F.2d 676, 681, 193
USPQ 513, 517-519 (CCPA 1977).
4
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