Appeal No. 95-1195
Application No. 08/102,674
microstructure as a metal article that receives the claimed
preliminary heat treatment. For this reason alone, the
examiner's rejection constitutes reversible error.
Furthermore, the examiner has not established the
obviousness of the claimed secondary heat treatment of the
coated metal article. The examiner has not factually
established that it would have been obvious for one of
ordinary skill in the art to dry the coated metal article with
the claimed heat treatment.
We now turn to the examiner's rejection of the appealed
claims under 35 U.S.C. § 112, first paragraph. According to
the examiner, the claim language "whereby the secondarily
heat-treated metal part conforms to said dimension" is new
matter, i.e., the language does not find descriptive support
in the original specification. However, as accurately stated
by appellant, the proper test for determining whether claim
language has original, descriptive support is "whether
disclosure in the application as originally filed reasonably
conveys to the artisan that the inventor had possession at the
time of the later claimed subject matter, rather than presence
or absence of literal support in specification for claimed
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