Appeal No. 2005-1264 Page 10
Application No. 09/682,594
end rail elements or collapsible rail structure, the original disclosure would most
probably have conveyed the former arrangement. In any event, the present application,
as originally filed, provided no hint or indication that the collapsible rail is “hingedly”
affixed to a hinge bar affixed between the track elements. As discussed above, that one
of ordinary skill in the art might realize that the now-recited feature of the claim is
possible is not sufficient to provide written descriptive support for the invention as
required by the first paragraph of 35 U.S.C. § 112. See Winkhaus, 527 F.2d at 640, 188
USPQ at 131.
The appellants (brief, page 17) and the examiner (answer, pages 3-5) both
address the examiner's objection to amendments to the specification and drawings as
containing new matter. Normally, objections are addressable by petition under 37 CFR
§ 1.181 and are not reviewed by the Board except where they are relevant to an
appealed rejection. Accordingly, we will not individually address the examiner's
objections in this decision except to point out that, to the extent that any of the
examiner's objections are inconsistent with our decision with regard to the rejection
under 35 U.S.C. § 112, first paragraph, they are improper and should be withdrawn.
We turn our attention next to the rejection of claims 35 and 37 as being
anticipated by Aftanas. As aptly noted by the appellants in their brief, the article carrier
of Aftanas is movable between a first position wherein the storage surface is parallel to
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