Appeal 2007-0516
Application 10/438,506
1 Analysis
2 Claims 1, 5-16 and 21-23
3 The original disclosure supports an adapter having internal threads of
4 a different diameter than the internal threads of the flange. Specifically
5 applicant’s Figures 3, 4 and 6 disclose an adapter having internal threads 76
6 (Figure 3) which have a smaller, and thus different, diameter than the
7 internal threads 34 (Figure 3) of the flange. Thus, applicant’s original
8 disclosure shows possession of an adapter having internal threads with a
9 diameter different than the diameter of the internal threads of the flange.
10 Amending the written description and claims to describe an adapter shown
11 in the original drawings does not introduce new matter into the disclosure.
12 Wolfensperger, 302 F.2d at 955, 133 USPQ at 542. The written description
13 was amended to provide support for claims to subject matter including an
14 adapter having internal threads which have a different diameter than the
15 internal threads of the container flange without adding new matter. The
16 rejection of Claims 1, 5-16 and 22-23 is reversed.
17 The Examiner argues that changing “pitch” to “diameter” changed the
18 basic concept of the invention as set out in the original claims and written
19 description. We agree. However, that is not dispositive of the new matter
20 question with respect to the subject matter of Claims 1, 5-16 and 21-23.
21 Whether amendments add new matter is gauged against the original
22 disclosure not just the original specification. The original drawings are part
23 of the original disclosure.2 The original drawings disclose an adapter having
2 The drawings while part of the original disclosure are not part of the
original specification. See 35 U.S.C. § 111 (“[An] application shall
include—
(A) a specification as prescribed by section 112 of this title;
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