Appeal No. 95-3455
Application 07/945,902
court made clear in its decision in In re Rasmussen, 650 F.2d
1212, 1214-15, 211 USPQ 323, 325-26 (CCPA 1981), Section 132
of Title 35 prohibits the introduction of "new matter" into
the disclosure of an application. Section 112, first
paragraph, requires that claim language be described and
enabled in the specification. Thus, an amended claim thought
to lack an adequate "written description" in the original
disclosure should be rejected under 35 U.S.C.
§ 112, first paragraph.
Although the examiner's rejection before us is stated to
be under the first paragraph of 35 U.S.C. § 112, it is founded
on the examiner's objection to the specification because "as
originally filed, [the specification] does not provide support
for the invention as is now claimed." (page 3 of the Answer).
However, we observe that there have been no changes made to
nor subject matter added to the disclosure on pages 5 and 6 of
the specification on which disclosure the examiner relies for
the
proposition that insulating is a required step in forming
appellants' gate electrode. Thus, the examiner's "new matter"
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