Appeal No. 1997-3121
Application 07/987,048
We consider first the rejection of claims 2-5, 8-11 and
13-15 under the first paragraph of 35 U.S.C. § 112. The claims
are rejected as “containing subject matter which was not
described in the specification in such a way as to reasonably
convey to one skilled in the relevant art that the inventor(s),
at the time the application was filed, had possession of the
claimed invention” [answer, page 4]. This rejection relates to
the written description requirement of 35 U.S.C. § 112.
The rejection is particularly addressed to the amendment
of independent claims 5 and 13 which recites that the ambient
temperature sensing switch is disposed “in non-thermal sensing
relationship to said electric heating element” [final rejection,
page 1]. The examiner considers this amendment to introduce new
matter into the specification because the original disclosure was
not so limited. In other words, other forms of temperature
sensing means also fell within the scope of the invention as
originally described. Appellants argue that the original
disclosure provides clear support for the scope of the invention
now being claimed [brief, pages 6-7; reply brief, pages 2-4].
The purpose of the written description requirement is to
ensure that the applicants convey with reasonable clarity to
those skilled in the art that they were in possession of the
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