Appeal No. 1998-1736
Application 08/282,847
the horizontal axis 10b of the conduit.2
The examiner is certainly correct in that the claim
language in question does not expressly appear in the
application as filed, either in the above-quoted portions of
the specification or elsewhere. However, the claimed subject
matter need not be described in haec verba in the
specification in order for the specification to satisfy the
“written description”
requirement of § 112, first paragraph, In re Smith, 481 F.2d
910, 914, 178 USPQ 620, 624 (CCPA 1973), and all new language
added by amendment is not ipso facto new matter. In re
Wright, 343 F.2d 761, 767, 145 USPQ 182, 188 (CCPA 1965).
Where, as here, the specification contains a written
description of the claimed invention, but not in ipsis verbis,
the examiner, in making a rejection under the “written
description” requirement of § 112, first paragraph, must meet
the requisite burden of proof by providing reasons why one of
ordinary skill in the art would not consider the description
2We do not find the symbol “%” in the specification.
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