Appeal No. 2001-2079 6
Application No. 09/308,400
and an emulsifier,” the limitation inserted by the appellants is expressly contrary to the
content of the claimed subject matter. Based upon the above consideration, we conclude
that the originally filed disclosure would not have conveyed to one of ordinary skill in the
art that appellants had possession of the concepts of "free of both a vegetable oil and an
emulsifier." See Ex parte Parks, 30 USPQ2d 1234, 1236-37 (Bd. Pat. App. & Int.
1993); Ex Parte Grasselli, 231 USPQ 393, 394 (Bd. App. 1983). “Despite appellants’
arguments to the contrary, we agree with the examiner’s position of record that the
negative limitations recited in the present claims, which did not appear in the specification
as filed, introduce new concepts and violate the description requirement of the first
paragraph of 35 U.S.C. 112.” Accordingly, the rejection is sustained.
DECISION
The rejection of claims 13 through 35 under 35 U.S.C. §112, first paragraph, as
containing subject matter which was not described in the specification in such a way as to
reasonably convey to one skilled in the relevant art that the inventors, at the time the
application was filed, had possession of the claimed invention is affirmed.
Page: Previous 1 2 3 4 5 6 7 8 Next
Last modified: November 3, 2007