Appeal No. 2004-0214 Page 7
Application No. 09/446,516
in the art that, as of the filing date sought, he or she was in possession of the invention."
Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563-64, 19 USPQ2d 1111, 1117 (Fed. Cir.
1991). Finally, "[p]recisely how close the original description must come to comply with
the description requirement of section 112 must be determined on a case-by-case
basis." Eiselstein v. Frank, 52 F.3d 1035, 1039, 34 USPQ2d 1467, 1470 (Fed. Cir.
1995) (quoting Vas-Cath, 935 F.2d at 1561, 19 USPQ2d at 1116).
As set forth on page 3 of the revised answer, the sole basis for this rejection is
that the phrase "each check-out" as used at line 6 in independent claims 1 and 34 was
new matter.
Original claim 1 included the phrase "in common for all the check-out(s)." In our
view, the editorial change of the phrase "in common for all the check-out(s)" to "in
common for each check-out" does not constitute new matter. Accordingly, the phrase
does not violate the first paragraph of 35 U.S.C. § 112.
For the reasons set forth above, the decision of the examiner to reject claims 1 to
20 and 34 under 35 U.S.C. § 112, first paragraph, is reversed.
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