Appeal No. 1998-3189
Application No. 08/763,352
filed, introduce new concepts and violate [the written]
description requirement of 35 USC §] 112: please see In
re [sic, Ex Parte] Grasselli 231 USPQ 393 [Bd. Pat. App.
& Int. 1986)].
Grasselli does not provide a per se rule that any
negative limitations, which are not expressly set forth in the
application disclosure as originally filed, automatically
violate the written description requirement of the first
paragraph of 35 U.S.C.
§ 112. Compare Ex parte Park, 30 USPQ2d 1234, 1236 (Bd. Pat.
App. & Int. 1994). Grasselli is limited to a situation where1
the factual evidence of record supports a conclusion that
negative limitations therein introduce new concepts into the
application disclosure as originally filed.
In the present case, we determine that the examiner has
not carried his burden of supplying a sufficient factual basis
to support a conclusion that the negative limitations in
question introduce new concepts into the application
disclosure. In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d
1443, 1444 (Fed. Cir. 1992) (“the examiner bears the initial
1231 USPQ at 394.
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