Appeal No. 1997-1685
Application 08/348,236
Yamazaki, et al. (Yamazaki) 58-45137 Mar. 16, 1983
(Japanese Application)
Claims 12-17 and 19-24 stand rejected under 35 U.S.C. § 112, first
paragraph. Claims 11-17 and 19-24 stand rejected under 35 U.S.C. § 103 as
unpatentable over Yamazaki or Diefenbach.
After careful consideration of the arguments of applicants and the examiner
and of the record before us, we find ourselves in agreement with applicants. Accordingly,
we reverse.
35 U.S.C. § 112
It is the examiner’s position that claims 12-17 and 19-24 do not satisfy 35
U.S.C. § 112, first paragraph because the specification as originally filed does not support
the use of the expression “uncoated mica flakes”, an expression that was added by
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amendment June 16, 1995 to claim 21.
The question of whether the descriptive requirement under 35 U.S.C.
§ 112, first paragraph is met, is a question of fact. Vas-Cath Inc., 935 F.2d at 1561,
19 USPQ2d, at 1116. Whether a description meets the requirement of 35 U.S.C. § 112
must be decided on a case-by-case basis. In re Wilder, 736 F.2d 1516, 1520, 222 USPQ
2 The description requirement comes into play where claims not presented
in the application when filed are presented thereafter. Vas-Cath, Inc v. Mahurkar, 935 F.2d
1555, 1560, 19 USPQ2d 1111, 1114 (Fed. Cir. 1991).
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