Appeal No. 2006-0597 Page 2
Application No. 09/682,876
preferred embodiment illustrated in Figure 2 and independent claim
76, a copy of which may be found in Appendix A of appellant’s
Brief.
The examiner has relied upon the following references as
evidence of obviousness:
Scroggie et al. (Scroggie) 6,185,541 Feb. 06, 2001
Stewart et al. (Stewart) 6,259,405 Jul. 10, 2001
(filed Nov. 3, 1999)
The claims on appeal stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Stewart in view of Scroggie (Answer, page 3).
This is the only ground of rejection before this merits panel for
review on appeal. The examiner has objected to the amendment dated
August 25, 2004, under 35 U.S.C. § 132 because it introduces “new
matter” into the disclosure (Answer, page 3). However, although
this “objection” is listed under “(9) Grounds of Rejection,” the
examiner has not recited any rejection of any pending claims under
the statutory basis of 35 U.S.C. § 112, first paragraph, for lack
of written description, i.e., as based on a specification which
contains “new matter” (id.). See Vas-Cath Inc. v. Mahurkar, 935
F.2d 1555, 1563, 19 USPQ2d 1111, 1117 (Fed. Cir. 1991). Similarly,
for some unexplained reason, the examiner responds to appellant’s
arguments concerning an objection to an amendment that allegedly
introduced “new matter” into ¶[0045] of the specification (Answer,
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