Ex parte SAGO et al. - Page 7


            Appeal No. 1999-2406                                                                      
            Application No. 08/825,256                                                                


            tension of the coating solution, in the context of solving the                            
            problems described in the specification at pages 1-3.  In this                            
            regard, the originally filed specification is replete with                                
            written description explaining that the surface tension of the                            
            coating causes problems in terms of achieving uniformity of the                           
            coating (page 2) and that the present invention seeks to                                  
            overcome this problem by reducing the surface tension of the                              
            coating solution with forces tending to cancel out the surface                            
            tension of the solution (pages 3-5).                                                      
                  The examiner argues that "the term 'reduction' would merely                         
            indicate that the surface tension would be decreased to some                              
            extent" and that "there is no indication" in the originally                               
            filed specification that "canceling out of the surface tension"                           
            could be equated with the term "minimization."  (Examiner's                               
            answer, page 4.)  As stated by the appellants (reply brief,                               
            pages 6-7), however, the examiner's argument does not take into                           
            account what one skilled in the relevant art would have                                   
            understood from the entire disclosure.  When the originally                               
            filed specification is evaluated in its entirety, it is our                               
            judgment that the specification would have reasonably conveyed                            
            to one skilled in the relevant art that the appellants had                                
            possession of the added material.                                                         


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