Appeal No. 94-3990
Application No. 08/038,033
agree with appellant that his original specification,
considered in its entirety, reasonably conveys to one of
ordinary skill in the art that the original coating being
treated is a continuous one. In particular, in the BACKGROUND
section of the specification, appellant relates "it becomes
necessary to treat the scratched areas to return the surfaces
to a condition of complete chemically treated corrosive
protection." (Emphasis added). In our view, one of ordinary
skill in the art would find it quite apparent that a complete,
continuous conversion coating must be applied in order to
effectively protect the substrate against corrosion.
Accordingly, we will not sustain the examiner's rejection of
claims 19 and 20 under 35 U.S.C. § 112, first paragraph.
We will also not sustain the examiner's rejection of
claim 19 under 35 U.S.C. § 112, second paragraph. For the
reasons given above, we are satisfied that one of ordinary
skill in the art would readily understand the "continuous
coating" of claim 19 to be a complete coating which entirely
protects the underlying substrate. The test for definiteness
under § 112, second paragraph, is not whether the claim
language can be construed in a variety of inconsistent ways,
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