Appeal No. 97-3918
Application 08/447,901
On April 10, 1995, appellants filed a proposed correction
of Figure 5 to add a box labeled "Gain Control" connected by a
dashed line to the arrow on gm amplifier 24A. The examiner
has disapproved that proposed drawing correction because
it introduces new matter into the drawings. 37 CFR §
1.118 states that matter involving a departure from or an
addition to the original disclosure cannot be added to
the application after its filing date. The original
disclosure does not support the showing of the gain
control box. Instead, the specification, on lines 15-16
of page 16, states that "a gm amplifier 24[A] of the
variable gain type is employed in place of the first gm
amplifier 24." This disclosure does not enable a new
gain control element. [Final Office action (paper No.
15) at 2.]
Inasmuch as the stated basis for the objection is new matter,
which is a written description support issue, the examiner's
use of the term "enable" in the last sentence of the foregoing
passage is not being construed as raising lack of enablement
as an issue, which in any event is not a proper basis for6
refusing an amendment to the drawing. The examiner contends
that the new matter issue raised by the drawing objection is
6 The "written description" and "enablement"
requirements of the first paragraph of 35 U.S.C. § 112, are
separate and distinct. Vas-Cath, Inc. v. Mahurkar, 935 F.2d
1555, 1563, 19 USPQ2d 1111, 1117 (Fed. Cir. 1991); In re
Wilder, 736 F.2d 1516, 1520, 222 USPQ 369, 372 (CCPA 1984).
- 6 -
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 Next
Last modified: November 3, 2007