Appeal 2007-0516
Application 10/438,506
1 § 112, ¶ 1, as not supported by the original disclosure. Application
2 10/438,506, Office Action mailed August 23, 2005, pp. 2-3.
3 F. 37. Applicant submitted an amendment after final which the Examiner
4 refused to enter.
5 F. 38. Applicant timely filed an appeal on December 27, 2005.
6 Issues
7 The Examiner contends that the amendment to the written description
8 and claims submitted June 3, 2005, added new matter contrary to 35 U.S.C.
9 § 132(a). Specifically, the Examiner contends that the substitution of the
10 word “diameter” with the word “pitch” in the written description and claims
11 introduced new matter into the disclosure and changed the concept of the
12 invention. Examiner Answer, p. 3-5. With respect to Claims 1 and 3-23, the
13 Examiner contends that each of the independent claims recite the newly
14 added “diameter” which is not supported by the written description. The
15 Examiner additionally contends with respect to Claims 3 and 4, and
16 apparently Claims 17-21, that the original disclosure does not support the
17 diameters of 1 ½ and/or 2 inches required by those claims.
18 Applicant contends that the word “pitch” as used in the original
19 disclosure and claims means the same as “diameter” and does not add new
20 matter. Amended Appeal Br., p. 8.
21 The overall issue before us is whether the subject matter of claims 1
22 and 3-23, is supported by applicant’s original disclosure. The specific
23 dispositive issues are:
24 (1) whether the original disclosure supports a drum including a one
25 piece conversion device with an annular portion having (a) external threads
26 with a diameter corresponding to the internal threads of the flange and
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