Appeal No. 2005-0020 Page 4
Application No. 09/572,225
creation.” See Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1561, 19 USPQ2d 1111, 1115 (Fed.
Cir. 1991).
We turn first to the phrase “the said absence of positively controlled conveyance
restricting said stirrer to a monoaxially rotating stirrer having as mixing elements a member
selected from the group consisting of beams, rods, anchors, grids, blades and propellers.” In
rejecting the claims in view of this phrase, the Examiner looks to page 8, lines 23-25 of the
specification. According to the Examiner, page 8, lines 23-25 does not provide “support for the
condition that the absence of positively controlled conveyance restricts the stirrer to the
specified stirrer.” (Answer, p. 3). According to the Examiner, the amended language of the
claim introduces a new concept into the claim (Id.).
The problem we see with the Examiner’s analysis is that the concept is not “new” in the
sense that it brings the claimed subject matter outside the scope of the description of the
invention presented in the original written description. It is true that the specification does not
define “absence of positively controlled conveyance” such that it restricts the stirrer to the
monoaxially rotating stirrers of the claim. However, the difference is merely lingusitic. The
bottomline is that the claim is limited to the use of monoaxially rotating stirrers having the
specified mixing elements and those stirrers are precisely the stirrers disclosed on page 8, lines
23-25 as being useful in the invention. There is written descriptive support in the original
written description as required by 35 U.S.C. § 112, ¶ 1.
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