Appeal No. 95-1195
Application No. 08/102,674
language" (page 5 of principal Brief). In the present case,
we concur with appellant that the criticized claim language
would be understood by one of ordinary skill in the art as
requiring the secondary heat treatment to not result in a
change in the dimension of the metal part, which meaning is
clearly described in the original specification. The examiner
reasons that eliminating distortion in the final heat-
treatment "is different than conforming a part to a specific
dimension because the coating could be allowed to build up on
a part and thus alter its dimensions without any distortion
taking place" (page 8 of Answer). While it is true that the
coating could alter the dimensions of the metal part, Example
3 of the original specification provides descriptive support
for coating a metal part followed by a secondary heat-
treatment wherein the resultant metal part conforms to the
dimension of the conforming step.
Regarding the examiner's rejection under § 112, second
paragraph, it is the examiner's position that the terms
"precision" and "significant" of claim 12 are imprecise
inasmuch as "[t]here are no guidelines given in the
application to allow one skilled in the art to examine a part
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