Appeal No. 1999-1400
Application No. 08/849,211
that "an examination of the first Reierson application does not
describe or even suggest possible additional additives" (page 4
of Answer), the examiner has not established that the new
"exclusively" limitation was not critical to the issuance of
the Reierson patent. As stated in Wertheim, 646 F.2d at 563,
209 USPQ at 563, "the type of new matter added must be inquired
into, for if it is critical to the patentability of the claimed
invention,
a patent could not have issued on the earlier filed application
and the theory of Patent Office delay has no application."
Likewise, the examiner has not established that the claim
limitation regarding residual amounts of alcohol and phosphoric
acid was described in the parent application, nor has the
examiner demonstrated that the added limitation was not
critical to the issuance of the Reierson patent. While the
examiner
posits that this claim limitation is "inherently obtained" by
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