Appeal No. 2001-0889 Page 11
Application No. 08/459,086
(requesting amendment of, inter alia, pages 5 and 12 of the specification) and
Paper No. 8, mailed Dec. 24, 1996 (refusing to enter the amendments to pages
5 and 12). In the Appeal Brief, Appellant argues that the requested amendments
are not new matter and therefore the refusal to enter the amendments was
improper. See pages 4-7. The examiner responded to Appellant’s argument in
the Examiner’s Answer. See pages 7-8.
We decline to address this issue because we have no jurisdiction to do so.
The amendments that are allegedly new matter concern only the specification;
the claims have not been rejected on the basis of new matter or lack of written
description. Therefore, the new matter issue can only be reviewed via petition,
not appeal. See MPEP § 2163.06:
I. TREATMENT OF NEW MATTER
If new matter is added to the disclosure . . ., the examiner
should object to the introduction of new matter under 35 U.S.C. 132
or 251 as appropriate, and require applicant to cancel the new
matter. If new matter is added to the claims, the examiner should
reject the claims under 35 U.S.C. 112, first paragraph – written
description requirement. . . .
. . .
II. REVIEW OF NEW MATTER OBJECTIONS AND/OR
REJECTIONS
A rejection of claims is reviewable by the Board of Patent
Appeals and Interferences, whereas an objection and requirement
to delete new matter is subject to supervisory review by petition
under 37 CFR 1.181. If . . . there has been both a rejection and
objection by the examiner, the issue becomes appealable.
We note that Appellant petitioned the refusal of the examiner to enter a
proffered amendment-after-final, which again presented the amendments that the
examiner had denied entry. See Paper No. 14, filed April 3, 1998. The petition
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