Appeal 2006-3264
Application 10/685,377
Other Matter
The Examiner objected to the Appellant’s drawings as not showing
every feature of the claimed invention (office action mailed Aug. 20, 2004).
In response the appellant added figures 3 and 4 and a discussion of those
figures in the Specification (Amendment filed Nov. 11, 2004). The
Examiner objected to the drawings and the Specification under
35 U.S.C. § 132 as introducing new matter into the disclosure (Final
Rejection mailed Dec. 17, 2004). The Appellant argues that “this issue of
new matter affects the patentability of the claims and is therefore properly
before this Honorable Board” (Br. 5).
As stated in Manual of Patent Examining Procedure § 608.04(c)(8th
ed., rev. 3, Aug. 2005):
Where the new matter is confined to amendments to the
specification, review of the examiner’s requirement for cancellation is
by way of petition. But where the alleged new matter is introduced
into or affects the claims, thus necessitating their rejection on this
ground, the question becomes an appealable one, and should not be
considered on petition even though that new matter has been
introduced into the specification also.
The claims on appeal are the original claims. The description of
figures 3 and 4 added to the Specification by amendment does affect the
scope of any claim term by, for example, defining a term, but, rather, merely
describes an embodiment. That description, therefore, does not affect the
scope of the claims. Hence, the Examiner was correct in not rejecting the
claims under 35 U.S.C. § 112, first paragraph. Because there is no new
matter rejection of the claims, the corresponding objection to the
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