Appeal No. 98-0605
Application 08/383,191
USPQ 336, 339 (CCPA 1963). See also In re Barker, 559 F.2d at
593, 194 USPQ at 474, wherein the court, in quoting with
approval from In re Winkhaus, 527 F.2d 637, 640, 188 USPQ 129,
131 (CCPA 1975) set forth: “That a person skilled in the art
might realize from reading the disclosure that such a step is
possible is not a sufficient indication to that person that
the step is part of appellants’ invention.” Moreover,
negative limitations which do not appear in the specification
as filed, may introduce new concepts and hence violate the
description requirement of the first paragraph of § 112. Ex
parte Grasselli, 231 USPQ 393, 394 (Bd. App. 1983), aff'd.
mem., 738 F.2d 453 (Fed. Cir. 1984).
With these authorities in mind, we have carefully
reviewed the original disclosure and fail to find descriptive
support therein for the recitations in independent claims 1,
16 and 27 that apparatus for, or step of, blowing air (1) be
"substantially free of conduits which are internal to the roof
system" (emphasis ours) and (2) that "substantially all"
(emphasis ours) of the quantity of the blown air be forced
"directly into the roof system." By setting forth
8
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