Appeal No. 2000-2076 Page 6
Application No. 08/481,131
The examiner also argues that the abstract accompanying Paper No. 18,
received October 14, 1997, constitutes new matter and must be cancelled. See the
Examiner’s Answer (Paper No. 30), paragraph bridging pages 5 and 6. This issue is
inextricably linked to the examiner’s rejection of claims under 35 U.S.C. § 112, first
paragraph. Where, as here, both the claims and specification are said to contain new
matter, directly or indirectly, and there has been a rejection and objection by the
examiner, the issue becomes appealable and should not be decided by petition. See
MPEP § 2163.06 II. For reasons already discussed, we find that the abstract
accompanying Paper No. 18, received October 14, 1997, does not constitute new
matter.
The examiner’s decision is reversed.
REVERSED
)
Sherman D. Winters )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
Toni R. Scheiner )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
Lora M. Green )
Administrative Patent Judge )
ELD
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