Appeal No. 95-2165 Page 5
Application
invention that is claimed. In re Anderson, 471 F.2d 1237,
1244, 176 USPQ 331, 336 (CCPA 1973). In the case before us,
appellants and examiner agree that the negative limitation
recited in claims 1 and 10, “curable without the application of
any supplemental heat,” does not appear in the specification as
filed. See Brief, page 8, and Answer, page 3. Accordingly, the
issue before us is whether the originally filed disclosure
would have conveyed to one having ordinary skill in the art
that appellants had possession of the concept of curing their
dental adhesive without the application of supplemental heat.
We conclude that it did. Although the disclosure is silent as
to the use of heat, it can reasonably be said that appellants’
silence would have disclosed to one of ordinary skill in the
art that the dental adhesive would have been “curable” in the
absence of heat. Based upon the above considerations, we
conclude that the originally filed disclosure would have
conveyed to one of ordinary skill in the art that appellants
had possession of the concept of curability in the absence of
heat. See Ex parte Parks 30 USPQ2d 1234, 1236-7 (Bd App.
1993); Ex Parte Grasselli 231 USPQ 393, 394 (Bd. App. 1983).
Accordingly, the rejection is reversed.
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