Appeal No. 94-3990
Application No. 08/038,033
unpatentable over Brockman in view of the admitted state of
the prior art.
We consider first the examiner's rejection of claims 19
and 20 under 35 U.S.C. § 112, first paragraph. According to
the examiner, there is no descriptive support in the
specification for the claim 19 language "a surface which was
initially provided with a continuous conversion coating." In
the words of the examiner, "it is unclear that the original
coating was a 'continuous coating' . . . The original coating
could have been put down in a striped form or other pattern,
for example" (page 7 of Answer).
It is well settled that the description requirement of
35 U.S.C. § 112 does not require that later-added claim
language be described in ipsis verbis in the original
disclosure. In re Smith, 481 F.2d 910, 914, 178 USPQ 620, 624
(CCPA 1973). The original disclosure only needs to reasonably
convey to one of ordinary skill in the art that the inventor
had in his/her possession, as of the filing date of the
application, the feature defined by the amended claim
language. Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563, 19
USPQ2d 1111, 1116 (Fed. Cir. 1991). In the present case, we
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