Appeal No. 99-1439 Page 2
Application No. 29/033,921
The appealed claim stands rejected under the first
paragraph of 35 U.S.C. § 112 as being based on an original
disclosure which, as filed in this application, does not
satisfy the description requirement in that paragraph.2
The record before us shows that the instant
application as filed contained a single embodiment of the
putter head as illustrated in original Figures 1-5. In
response to the first office action mailed September 1,
1995, appellant added by an amendment filed February 5,
1996, a second embodiment of the putter head. In this
amendment, the specification was revised and the Figure
numbers were changed so that the original embodiment is
now illustrated in Figures 6-10 and the second, newly
added embodiment is illustrated in Figures 1-5.
2 Appellant has devoted a substantial portion of his
brief discussing issues under § 132. However, the
standing rejection in this appeal is under the first
paragraph of
§ 112, and not under § 132. The examiner's objection to
the introduction of new matter is based on § 132 (see
page 5 of the answer), but the examiner's objection is a
petitionable matter, not one that is reviewable by us on
appeal. See MPEP § 608.04(c).
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