Appeal No. 2001-1240 Page 5
Application No. 08/374,520
A rejection of a claim on the basis that it is “new matter” is equivalent to a
rejection on the basis that it lacks an adequate written description in the
specification. See In re Rasmussen, 650 F.2d 1212, 1214, 211 USPQ 323, 325
(CCPA 1981) (“Section 132 prohibits the introduction of new matter into the
disclosure of an application. Section 112, first paragraph, requires that claim
language be supported in the specification. This court, ha[s] said that a rejection
of an amended claim under § 132 is equivalent to a rejection under § 112, first
paragraph, for lack of support.”). See also id. at 1214, 211 USPQ at 326 (“The
proper basis for rejection of a claim amended to recite elements thought to be
without support in the original disclosure . . . is § 112, first paragraph, not
§ 132.”).
The examiner “‘bears the initial burden . . . of presenting a prima facie
case of unpatentability.’ In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443,
1444 (Fed. Cir. 1992). Insofar as the written description requirement is
concerned, that burden is discharged by ‘presenting evidence or reasons why
persons skilled in the art would not recognize in the disclosure a description of
the invention defined by the claims.’ . . . If . . . the specification contains a
description of the claimed invention, albeit not in ipsis verbis (in the identical
words), then the examiner . . ., in order to meet the burden of proof, must provide
reasons why one of ordinary skill in the art would not consider the description
sufficient.” In re Alton, 76 F.3d 1168, 1175, 37 USPQ2d 1578, 1583 (Fed. Cir.
1996).
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