Appeal 2007-1463 Page 9
Application 10/083,492
and only plate of said assembly having said predeterminate size and shape is
clearly shown in Fig. 1 of the Specification (see footnote 2). Accordingly we will
not sustain the rejection as to these claims.
However, we will sustain the rejection as to claims 35-37.
There is no dispute that the Specification nowhere discloses a retaining
assembly wherein said single plate is the only plate of the retaining assembly
having said predetermined size and shape, the retaining assembly thereby not
including a second plate having said predetermined size and shape. There is not a
single word anywhere in the original Specification which would suggest the pre-
existence of a second plate or its subsequent absence in the final retaining
assembly.
If we understand the argument correctly, Appellants submit that,
notwithstanding that it is conceded that “‘the disclosure does not distinguish the
single plate from the second plate based on size and shape’ is correct [ ] in the
limited sense that the literal text of the specification does not distinguish the single
plate from a second plate based upon size and shape” (Br. 10), Appellants’ claimed
invention necessarily provides “for there being no second plate” (Br. 11). We are
not persuaded by this argument. We can find nothing in the claim or the
specification that would convey to one of ordinary skill in the art that Appellants
had possession of an assembly eliminating the presence of a second plate.
Appellants cite various decisions in support of their view that they may add
the subject matter at issue without having to have literal support for that subject
matter in the original disclosure. The question in In re Wright, 866 F.2d 422, 9
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