Appeal No. 2004-1481
Application No. 09/726,659
OPINION
A. The Rejection under § 112, ¶1
The examiner finds that the exclusion of a backing plate as
recited in claims 10, 13, 14, 17 and 18 is not disclosed or
suggested in the original disclosure and thus is considered “new
matter” (Answer, page 4). The examiner further finds that original
Figures 1, 2 and 3 do not reasonably convey that appellant
specifically intended to exclude sensors with backing plates (id.).
The initial burden of establishing failure to meet the
“written description” requirement of section 112, ¶1 (i.e., “new
matter”) rests with the examiner. See In re Alton, 76 F.3d 1168,
1175, 37 USPQ2d 1578, 1583 (Fed. Cir. 1996). The examiner must
establish that the originally filed disclosure would not have
reasonably conveyed to one of ordinary skill in the art that
appellant was in possession of the subject matter in question at
the time of filing the application. See In re Edwards, 568 F.2d
1349, 1351-52, 196 USPQ 465, 467 (CCPA 1978). We determine that
the examiner has met this initial burden by finding that the
originally filed disclosure, including the drawings, did not
disclose that a backing plate was excluded. See In re Alton, supra
(If the applicant claims embodiments of the invention that are
completely outside the scope of the specification, then the
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