Appeal 2007-0288
Application 10/715,408
abstract, specification or drawings attempting to add new disclosure to
that originally presented. While the test or analysis of description
requirement and new matter issues is the same, the examining procedure
and statutory basis for addressing these issues differ. See MPEP §
2163.06.
With this as a background, we enter a New Grounds of Rejection.
NEW GROUNDS OF REJECTION
Pursuant to our authority under 37 C.F.R. § 41.50(b), we have
sua sponte set forth new grounds of rejection for claims 1-13.
The following is a quotation of the appropriate paragraphs of 35
U.S.C. § 112 that form the basis for the rejections under this section made
in:
The specification shall contain a written description of the
invention, and of the manner and process of making and using
it, in such full, clear, concise, and exact terms as to enable any
person skilled in the art to which it pertains, or with which it is
most nearly connected, to make and use the same, and shall set
forth the best mode contemplated by the inventor of carrying
out his invention.
The MPEP 2163.02 sets for the standard for determining compliance
with the Written Description Requirement.
The courts have described the essential question to be
addressed in a description requirement issue in a variety of ways.
An objective standard for determining compliance with the written
description requirement is, “does the description clearly allow
persons of ordinary skill in the art to recognize that he or she
invented what is claimed.” In re Gosteli, 872 F.2d 1008, 1012, 10
USPQ2d 1614, 1618 (Fed. Cir. 1989). Under Vas-Cath, Inc. v.
Mahurkar, 935 F.2d 1555, 1563-64, 19 USPQ2d 1111, 1117 (Fed.
Cir. 1991), to satisfy the written description requirement, an
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