Appeal No. 2004-1557
Application No. 09/451,942
According to the appellant, such a showing in the drawing is
adequate support for the limitation of “each selectable point
does not comprise alphanumeric characters.”
The examiner’s rejection is tantamount to a per se
prohibition of any negative limitation that does not have
expressly stated support in the originally filed specification.
Ex parte Grasselli, 231 USPQ 393 (Bd. App. 1983) aff’d mem., 738
F.2d 453 (Fed. Cir. 1984), appears to provide support for the
examiner’s position because the Board found that the negative
limitation added to the claims introduced new concepts in
violation of the description requirement of the first paragraph
of 35 U.S.C. § 112. In the subsequent case of Ex parte Parks,
30 USPQ2d 1234, 1236 (Bd. App. 1994), the Board did not adhere to
Grasselli’s per se prohibition of negative limitations that lack
express written description support in the originally filed
disclosure, and, instead, resorted to a more reasonable test of
what the originally filed disclosure would have conveyed to one
having ordinary skill in the art.
Based upon the test set forth in Parks, we find that the
skilled artisan after viewing the noted figure of the drawing in
context with the remainder of the disclosure would clearly see
that the points 44 are mere dots that are devoid of any
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