Appeal No. 1999-0936
Application No. 08/890,263
first and second are much broader than the terms
upper and lower. For example[,] first and second
could mean left and right or forward and rearward.
There is no disclosure, either in words or pictures,
in applicants [sic, applicants’] specification, to
anything other than upper and lower. Therefore[,]
to try to use broader terms than this is new matter.
The examiner is correct that the claim language "first"
and "second" does not expressly appear in the original patent
in describing the rows of suction cups 66U, 66L. 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
ispo 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
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