Appeal 2005-2547
Application 10/134,817
a. In claim 17, “said swelling section having a length or width
sufficient to allow swelling of the suspension stream” is considered to be
new matter.
b. In claim 21, “producing a pressure sufficient to feed a horizontal
drill head via a drill string” and the further recitation of “drill string” later in
the claim is new matter.
In each case the issue is: Is the Examiner’s finding of lack of written
descriptive support supported by a preponderance of the evidence?
As stated in In re Kaslow,
The test for determining compliance with the written
description requirement is whether the disclosure of the
application as originally filed reasonably conveys to the artisan
that the inventor had possession at that time of the later claimed
subject matter, rather than the presence or absence of literal
support in the specification for the claim language. The content
of the drawings may also be considered in determining
compliance with the written description requirement.
In re Kaslow, 707 F.2d 1366, 1375, 217 USPQ 1089, 1096 (Fed. Cir. 1983)
(citations omitted). The question is not whether the claims use the same
words as the Specification, but whether the concept of the claim limitation is
in the Specification. See In re Anderson, 471 F.2d 1237, 1244, 176 USPQ
331, 336 (CCPA 1973)(“The question, as we view it, is not whether
‘carrying’ was a word used in the specification as filed but whether there is
support in the specification for employment of the term in a claim; is the
concept of carrying present in the original disclosure?”).
With respect to the limitation in claim 17, “said swelling section
having a length or width sufficient to allow swelling of the suspension
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