APPLICATION OF WELSTEAD

RICH, Acting Chief Judge.

This appeal is from the decision of the Patent Office Board of Appeals affirming the rejection of claim 23 in appellant's application serial No. 504,087, filed October 23, 1965, for "3-(Omega-Substituted Alkyl)-Indoles." The rejection was on the ground that appellant had introduced new matter into the claim by way of amendment, in contravention of 35 U.S.C. § 132. We affirm.

The Subject Matter Claimed

Appellant's application

The compounds are said to "have utility as physiologically active agents," to be "particularly effective in diminishing the tremors and muscular rigidity of Parkinsonism, and to be "also useful as tranquilizers."

The appealed claim, with emphasis and some paragraphing supplied, is as follows:

wherein:

Wherein

non-toxic pharmaceutically acceptable acid-addition salts thereof, and

The Rejection

The examiner rejected claim 23 "as being drawn to new matter (35 U.S.C. § 132)" because of appellant's amendment inserting "when m is zero" after "hydrogen" in the recitation specifying the values of R'". Before the amendment, R'" was defined as "selected from the group consisting of hydrogen and phenyl," and m was defined as "selected from zero and one." Accordingly, claim 23 then read on the following four possibilities:

In the first two cases, the indicated compounds would be piperidines; in the third and fourth, pyrrolidines. The effect of the amendment and appellant's support for the claim as amended are the two issues here.

The examiner stated that the amended form of the claim "fails to find basis in the disclosure as originally filed" and that "The grouping as now appears in claim 23, while more specific, is non[e]-the-less a new grouping."

In affirming, the Board of Appeals stated:

This is somewhat confusing. Clearly, the board interpreted appellant's amendment as excluding the third of the above four possibilities, and it apparently affirmed the examiner's rejection on the ground that appellant's specification as filed did not contain a written description of the genus consisting of compositions containing compounds taken only from the first, second, and fourth of the above categories, as required by the first clause of the first paragraph of 35 U.S.C. § 112, and that claim 23 as amended was therefore drawn to new matter. However, the board also indicated that it found lack of support for recitation in the claim of compounds taken from the second of the above categories.

Appellant requested reconsideration of the board's decision. His request for reconsideration expressly approved the board's interpretation of the effect of the amendment—i. e., that when m is zero, R'" must be a hydrogen atom, but that when m is one, R'" may be either a hydrogen atom or a phenyl radical. He traversed the board's finding of lack of support for the second of the above categories, but the principal basis of his request was that

Thus, at this stage of the proceeding appellant apparently viewed the issue as the existence of support for his recitation of the fourth category, supra.

In adhering to its original position, the board again stated that the specification as filed contained no disclosure showing R'" to be a hydrogen atom when m = 1 (second possibility, supra).

OPINION

On appeal, appellant has completely changed his position concerning the effect of the controverted amendment. Whereas he previously concurred in the board's view that it excluded from the claim those compositions containing compounds of the third type, supra, he now argues that:

This excludes compounds of the second type. He also now expressly concedes that his "disclosure contains no examples or recitations of inventiveness with respect to compounds * * * [of the second type]." This concession, it may be noted, is in line with the board's assertion that the specification does not "associate the hydrogen particularly with the piperidinyl radical at the 4-position."

The solicitor notes this surprising shift in appellant's position and argues from it that "It would appear * * * that there is a latent ambiguity in the defintion of R'" in the claim before the Court." He also argues that the court should not consider appellant's present arguments because they "are largely based on his present interpretation of the definition for R'" * * *."

As the solicitor correctly contends, this court normally does not consider new contentions and arguments not presented below. Cf. In re Touvay, 435 F.2d 1342, 1344, 58 CCPA 809, 811-812, (1971); but compare In re Land, 368 F.2d 866, 874-875, 54 CCPA 806, 818-819, (1966). It is true that we have previously held that

However, we were not talking about an applicant's changing his mind between the time he argued before the board and the time he argued before the court concerning the scope of the same claim recitation.

In this case, we agree with the solicitor that we should reverse only if appellant were to persuade us that the amended claim, as interpreted below, defined a genus (in this case, a subgenus of the genus recited in claim 23 as filed) which was itself described in the application as filed. In addition to Ex parte Batchelder, relied upon by the board, our recent opinion in Fields v. Conover, 443 F.2d 1386, 1391-1392, 58 CCPA 1366, 1372-1374, (1971), and Judge Baldwin's concurring opinion in In re Cother, 437 F.2d 1399, 1404, 58 CCPA 953, 960, (1971), involving the written description requirement in other contexts, are in point. See also Biel v. Chessin, 347 F.2d 898, 904-905, 52 CCPA 1607, 1614-1615, (1965); and In re Shokal, 242 F.2d 771, 774-775, 44 CCPA 854, 858-859 (1957). Since the specification as filed contained neither a description as such of the genus in which R'" is hydrogen or a phenyl radical when m = 1 and hydrogen when m = 0 nor descriptions of the species thereof amounting, in the aggregate, to the same thing, the rejection of claim 23 as drawn to new matter is affirmed.

Affirmed.