Appeal No. 2001-0236 3
Application No. 08/985,760
OPINION
We have carefully considered all of the arguments advanced by the appellant and
the examiner and agree with the appellant for the reasons set forth in the Brief and those
herein that the rejection of record is not well founded. Accordingly, we reverse the
rejection.
The Rejection Under § 112
We turn to the sole issue before us, that of the examiner’s rejection under the first
paragraph of 35 U.S.C. § 112 as being directed to new matter. In a rejection under the
first paragraph of 35 U.S.C. § 112, paragraph one, it is sufficient if the originally filed
disclosure would have conveyed to one of ordinary skill in the art that the appellant had
possession of the concept of what is claimed. In re Anderson, 471 F.2d 1237, 1240-41,
176 USPQ 331, 333 (CCPA 1973). There is no requirement that the language of the
claimed subject matter be present in the specification in ipsissima verba.
The examiner submits that the language of the claimed subject matter, and in
particular, “[t]he statement that the base layer is ‘free of filler particles’ is an unsupported
negative limitation.” We disagree.
We find that Figures 1 though 2 disclose coextrudates of two or more layers having
filler particles distributed throughout. In contrast, Figures 5 through 7 are directed to
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