Appeal No. 1998-3189
Application No. 08/763,352
Torrence in view of Mellor and Maddox.
We reverse.
We turn first to the examiner’s rejection of claims 34,
35 and 36 under 35 U.S.C. § 112, first paragraph, as lacking
descriptive support in the application disclosure as
originally filed. As stated in In re Kaslow, 707 F.2d 1366,
1375, 217 USPQ 1089, 1096 (Fed. Cir. 1983):
The test for determining compliance with the written
description requirement is whether the disclosure of
the application as originally filed reasonably
conveys to the artisan that the inventor had
possession at that time of the later claimed subject
matter, rather than the presence or absence of
literal support in the specification for the claimed
language . . . . The content of the drawings may
also be considered in determining compliance with
the written description requirement. [Citations
omitted.]
According to the examiner (Answer, page 4):
The negative limitations set forth in applicants’
claims 34, 35 and 36 setting forth that the reaction is
carried out in the absence of either a catalyst,
activated carbon or oxygen are new matter.
While the applicant comments [sic, applicants
comment] that it is clear that the specification does not
envision the use of a catalyst, activated carbon or
oxygen and therefore claims 34-36 are in keeping with a
disclosure and do not introduce new matter, the argument
is not persuasive because the courts have [sic, the Board
has] already determined that negative limitations recited
in claims, which did not appear in the specification as
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