Appeal No. 1997-3974
Application No. 08/541,254
embodiment is shown in Figures 4 and 5. In this embodiment it
is described that “the transducers are not closely received in
the holes 192" [id., page 7]. It is appellant’s position that
this passage from page 7 of the specification and the gap
shown in the through hole 192 of Figure 4 support appellants
recitation that the transducers are received loosely in the
through holes. The examiner’s position is that a disclosure
of “not closely received” does not support a claim recitation
of loosely received.
A rejection on new matter goes to the written
description requirement of 35 U.S.C. § 112. The purpose of
the written description requirement is to ensure that the
applicant conveys with reasonable clarity to those skilled in
the art that he was in possession of the invention as of the
filing date of the application. For the purposes of the
written description requirement, the invention is "whatever is
now claimed." Vas-cath, Inc. v. Mahurkar, 935 F.2d 1555,
1564, 19 USPQ2d 1111, 1117 (Fed. Cir. 1991). In this case the
question is whether the phrase “not closely received”
reasonably conveys to the artisan that the transducers are
loosely received in the through holes. We agree with
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