Appeal No. 2001-2138
Application No. 08/403,276
country,” i.e., to the extent that common subject matter is disclosed. Absent an explicit
incorporation by reference, the foreign priority document is not available as antecedent
basis for amendments to the specification or claims. Ex parte Bondiou, 132 USPQ 356,
358 (Bd. App. 1961) (changing disclosure from “four hours” to –four days– not permitted
because it introduced new matter under 35 U.S.C. § 132); see also MPEP § 2163.07 (8th
Ed., August 2001). The examiner and Appellants should determine whether support for the
amendments exists in the specification as filed. See In re Oda, 443 F.2d 1200, 1205–06,
170 USPQ 268, 272 (CCPA 1971) (permitting corrections of translation errors, explaining
that the amendments did not result in any change in the claimed subject matter, and that
the evidence of record was sufficient to show that one skilled in the art would have
appreciated not only the existence of error, but what the error was and how to correct it).
In claim 3, the definition of “n” appears to be superfluous because n does not
appear in formula I’.
In claim 5, a left parenthesis appears to be missing in the bracketed portion of the
chemical name: 20-[((dimethylamino)-ethyl)-amino] . . . .
C. Decision
The rejections are reversed.
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