Appeal 2007-3797
Application 10/453,061
concludes that “laser printable sheets means that the paper is not coated with
a chemical coating that reacts to heat to produce images. Such a coating
would render the laser paper useless by reacting to the heat of the fuser
turning the paper black.” (Decl. ¶ 19). However, that conclusion appears to
be referring to the absence of coatings that would chemically react during
the laser printing process (Decl. ¶ 16). Moreover, the Whitcomb Declaration
is not accompanied by scientific literature or other documentary or
experimental evidence that would serve to establish that all laser printable
papers or stock would necessarily exclude all coatings containing chemicals
that would react to form an image without limitation to the temperature
environment the paper may experience, as the appealed amended claims
require. Consequently, the arguments in the Briefs, together with the
Whitcomb Declaration furnished in support thereof, asserting implicit or
inherent support for the amended claim language based on the laser printing
functionality or characteristics implicitly conveyed by the originally
disclosed laser printable stock or paper are not persuasive of reversible error
in the Examiner’s rejection.
We hold that the Examiner has correctly found that the amended
claim language added after filing of the Application Specification includes
subject matter via a negative claim limitation (see Ex parte Grasselli,
231 USPQ 393, 394 (Bd. Pat. App. & Int. 1983) that did not appear in the
Specification as filed and, prima facie, involves a new concept which
Appellants have not persuasively rebutted with the argumentation furnished
in the Briefs together with the Specification passages and Whitcomb
Declaration relied upon in support thereof. In re Alton, 76 F.3d at 1175,
37 USPQ2d at 1583-84.
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