Appeal No. 1997-3975
Application No. 08/395,376
related to the alleged new matter, and the disclosure is fully
enabling for the claimed invention [brief, pages 5-6].
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
applicants convey with reasonable clarity to those skilled in
the art that they were 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).
We note that the material objected to as new matter by
the examiner relates to an addition to the disclosure that
“taper
means half-angle” [answer, page 3]. The terms “taper” and
“half-angle” are used only to describe the physical
characteristics of the nozzle. As pointed out by appellants,
however, the appealed claims recite no specific features of
the nozzle and only broadly recite an “entity presentation
means.” The original specification clearly supports the broad
6
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