Appeal No. 2006-0048
Application 09/800,477
The examiner has pointed to the disclosure “in paragraphs 0029, 0031, and 0033-035” of
the present specification in the statement of the objection under 35 U.S.C. § 132. We find that
each of these paragraphs were present per se in the present application as original filed on March
8, 2001, and were not subsequently amended. See the amendments filed October 10, 2002, and
March 31, 2003. Furthermore, original claims 1 though 9 and 14 through 16 in this application
were once amended in the amendment filed October 10, 2002, wherein the only amendment to
independent claim 1 was the deletion of the word “of” in the fourth clause, and claim 6,
originally dependent on claim 1, was amended to be independent and substantially rewritten to
read similarly to amended claim 1. We note that claim 6, as well as claim 7 dependent thereon,
is not included in the ground of rejection under § 112, first paragraph, written description
requirement.
It seems to us that the examiner’s premise for the objection under § 132 and the rejection
under § 112, first paragraph, written description requirement, is that the specification in the
present application, as it stands on appeal, and appealed claims 1 through 3 and 8 through 21 are
directed to “new matter” when compared to the “original disclosure” in the “parent application
as originally filed,” on the basis that the present “application is a continuation of parent
application 08/955,920” and therefore, “the original disclosure is the parent application as
originally filed and not this application as originally filed (MPEP 608.04(b)[)]” (answer, page 4,
underline emphasis original, and page 5, second full paragraph).
Whether an application as filed can be designated by the USPTO as a “continuation” or a
“continuation-in-part” application based on the specification and claims of the new application
as filed vis-à-vis the specification and claims of the parent application and other considerations
as set forth in MPEP §§ 201.07 and 201.08 (8th ed., Rev. 3, August 2005), is simply an
administrative determination which has no affect on the legal determination of compliance of the
specification and claims of the new application with 35 U.S.C. §§ 112, first paragraph, written
description requirement, and 132 at any point in the prosecution thereof, as is clear from the
authority we cite above which involve only the application under examination.
Accordingly, since the examiner has not established a prima facie case of non-
compliance with 35 U.S.C. §§ 112, first paragraph, written description requirement, and 132,
new matter, we reverse these grounds of rejection and objection.
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