Appeal No. 2000-0287 Page 8
Application No. 08/663,300
in possession of the invention. The invention is, for purposes of the "written
description" inquiry, whatever is now claimed.
In this instance, the appellant's specification as originally filed discloses that the stress at
30% for the initial stretch is lower than 1000 g (page 2, line 8; original claims 1 and 19) and
that a desirable value is not more than 1000 g, preferably 800 g and more preferably 600 g
(page 6, lines 5-6). There is no indication in the originally filed specification that the 30%7
stretch stress for the initial stretch be lower than 100 g.
The appellant does not argue to the contrary. Rather, the appellant's only argument
with regard to this rejection is that the amendment filed May 28, 1999 with the appeal brief
(and again with the reply brief) corrected "100 g" to "1000 g" in claims 13 and 17 (see reply
brief, page 9). However, as this amendment has not been entered (see Paper No. 28), claims8
13 and 17 still recite that the initial 30% stretch stress is lower than "100 g."
For the foregoing reasons, we are constrained to summarily sustain the examiner's
rejection of independent claims 13 and 17, as well as claims 14 and 15 which depend from
claim 13 and claim 18 which depends from claim 17, under 35 U.S.C. § 112, first paragraph,
as containing subject matter which is not supported by the appellant's original disclosure.
7We note that original claim 16 also included a recitation that this value is "lower than" 800 g.
8The examiner's stated reason for refusing entry of this amendment (that a supplemental appendix of claims
incorporating the changes was not filed in triplicate) is somewhat puzzling to us, in that the copies of claims 13 and
17 contained in the appendix of claims accompanying the appellant's brief did reflect those amendments. However,
as we do not exercise any supervisory authority over the examining corps, we decline to consider whether the
examiner abused her discretion in this matter.
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