Appeal No. 2000-1984
Application No. 08/565,775
claim 11 recites only a "flat carrier" and not a "flat non-
ferrite carrier."
Normally, since this is a new argument, not made earlier in
the briefs, it would not be considered at this point. However,
since the claims clearly do not recite a "non-ferrite" carrier
and the examiner's whole rationale under 35 U.S.C. § 112, first
paragraph, is that there is no support in the original
specification for a "non-ferrite carrier," we will permit this
argument and find for appellants, reversing our earlier decision
as to the rejection of claims 11-16 under 35 U.S.C. § 112, first
paragraph.
At page 3 of the request for rehearing, appellants make the
creative argument that since original claim 1 was directed to a
"flat carrier" that encompasses both ferrite and non-ferrite
insulative material, appellants were certainly permitted to limit
the scope of their claims by limiting the claims to a "non-
ferrite carrier." The problem with this argument is that while
this may limit the scope of the claims relative to the prior art,
the claims have now been limited to an embodiment (non-ferrite
carrier) for which there is no adequate support in the original
disclosure, running afoul of the written description requirement
of 35 U.S.C. § 112.
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