Appeal No. 1995-0770
Application No. 07/929,457
We now turn to the rejection under the first paragraph of 35 U.S.C. § 112. In
deciding whether new matter has been added to a claim without support in the
specification as filed, we note initially that the specification as a whole must be
considered. In re Wright, 866 F.2d 422, 425, 9 USPQ2d 1649, 1651 (Fed. Cir. 1989).
We have carefully reviewed the specification and claims as originally filed, and find they
describe a process comprising three stages of varying duration. The specification further
describes the selection of a separate temperature to be maintained during each stage.
The selected temperatures are described at specification pages 17 and 18. We
quote from the section describing the first polymerization stage:
[g]enerally the temperature selected within this range is a temperature at
which the first initiator will become active and is about 10EC below the 10
hour half-life decomposition temperature, and polymerization is initiated.
The temperature is maintained in this range for a period of from about 60 to
about 300 minutes, and preferably from about 120 to about 240 minutes.
(Our emphasis)
The examiner directs attention to Example 1 at specification page 43. Although the
examiner finds support in Example 1 for the concept of maintaining a selected
temperature, the examiner states “[t]he Examples do not state the temperature is
maintained approximately at that temperature or near that temperature or other phrases
which might lend support to appellants’ use of ‘substantially constant’.” Answer page 5.
Because the example does not use words such as “approximately” or “near”, the examiner
infers that no variation in the maintained temperature may be tolerated in the claims.
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