Appeal 2007-2127
Reexamination Control No. 90/006,621
Litton refers to adding subject matter to a pending application, not an
issued patent as in this case. Once the patent issues, the record is fixed and
new matter may not be added.
Therefore, we conclude that Patent Owner is not entitled to amend the
'604 patent to add and claim subject matter which was disclosed in the
parent 1990 application, but which was omitted in the 1994 application.
2.
Issue
The issue is whether there is written description support for particular
limitations in the amended and new claims.
Principles of law
"Claims in an ex parte reexamination proceeding will be examined on
the basis of patents or printed publications and, with respect to subject
matter added or deleted in the reexamination proceeding, on the basis of
35 U.S.C. 112." 37 C.F.R. § 1.552(a). "[R]eexamination will be conducted
will be conducted according to the procedures of sections 132 and 133 of
this title." 35 U.S.C. § 305. New matter is prohibited by 35 U.S.C. § 132.
See Schering v. Amgen, 222 F.3d at 1352, 55 USPQ2d at 1653 ("The
fundamental inquiry is whether the material added by amendment was
inherently contained in the original application.").
"Claims which are amended with limitations unsupported by the
original disclosure are rejected under 35 U.S.C. § 112 (first paragraph) as
lacking support in the specification, while such amendments to the abstract,
specification, and drawings are objected to as being drawn to new matter
123
Page: Previous 116 117 118 119 120 121 122 123 124 125 126 127 128 129 130 Next
Last modified: September 9, 2013