Appeal No. 2004-2052
Application 09/509,147
specification regarding the background information of the
invention and the specific description of appellants’ invention
therein, we find nothing which provides clear support for the
negative limitation regarding the adapter block being
“structurally removable from the laboratory magnetic stirrer
without removing a fastener,” which was belatedly added to claim
1 in Paper No. 13. Nor does a review of the drawings of the
present application provide any particular insight concerning
this negative limitation. As the examiner has noted in the
answer, a negative limitation must have basis in the original
disclosure, and the mere absence of a positive recitation or
showing concerning a securement device or fastener for
appellants’ adapter does not provide a basis for an exclusion of
such a fastener. Thus, we agree with the examiner that the
negative limitation added to claim 1 violates the description
requirement and that the disclosure of the application as
originally filed would not have reasonably conveyed to one
skilled in the art that the inventors herein had possession of
the subject matter now claimed at that time. Accordingly, we
will sustain the examiner's rejection of independent claim 1, and
claims 3 through 10, 17 and 18 which depend therefrom, under 35
U.S.C. § 112, first paragraph.
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