Appeal No. 95-3783
Application 08/034,917
We consider first the examiner’s rejection of the appealed
claims under 35 U.S.C. § 112, first paragraph. It is the
examiner’s position that appellants’ amendment to page 8 of the
original specification, deleting the language “two coating
layers,” results in a specification that does not provide
descriptive support for the claimed subject matter. According to
the examiner, appellants’ invention described in the original
specification requires two coating layers to be present either on
one surface or on both surfaces. In the examiner’s opinion, the
dip coating process described by Example 1 necessarily results in
a coating on each surface of the base, thereby resulting in two
coating layers. We will not sustain this rejection because the
original sentence in the specification, before amendment, read
“[t]he recording sheets of the present invention comprise a
substrate and at least two coating layers on one or both surfaces
of the substrate.” In our view, a reasonable understanding of
this sentence is that either one or both surfaces contain two
coating layers, i.e., either one surface has two coating layers
or both surfaces have two coating layers, totaling four layers,
or that each surface has one coating layer, for a total of “two
coating layers.” The dip coating process exemplified by
appellants results in one coating layer on both surfaces, not two
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