Appeal 2007-0288
Application 10/715,408
Indus., Inc., 726 F.2d 724, 726-727, 220 USPQ 841, 842-843 (Fed. Cir.
1984).
Here, we find that the Examiner has not expressly identified where or
how Chrabaszcz teaches the limitation “not created by a user” as the
independent claims have been amended. Without such a showing, the
Examiner has not discharged the initial burden to establish a prima facie of
anticipation. Therefore, we cannot sustain the rejection of claims 1 and 6-
13.
This deficiency carries through to the Examiner’s rejection under 35
U.S.C. § 103(a) and the Examiner has not identified how the teachings of
Rollins remedy this deficiency. Nor has the Examiner identified how the
combined teachings teach or suggest the limitation “not created by a user” as
the independent claims have been amended. Therefore, we cannot sustain
the rejection of claims 1-13.
Written Description Requirement vs. New Matter Objection
MPEP 2163.01 sets forth a good comparison of the Written Description
Requirement and an objection to the specification for New Matter.
A written description requirement issue generally involves the
question of whether the subject matter of a claim is supported by
[conforms to] the disclosure of an application as filed. If the examiner
concludes that the claimed subject matter is not supported [described] in
an application as filed, this would result in a rejection of the claim on the
ground of a lack of written description under 35 U.S.C. 112, first
paragraph or denial of the benefit of the filing date of a previously filed
application. The claim should not be rejected or objected to on the
ground of new matter. As framed by the court in In re Rasmussen, 650
F.2d 1212, 211 USPQ 323 (CCPA 1981), the concept of new matter is
properly employed as a basis for objection to amendments to the
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