Appeal No. 1997-1685
Application 08/348,236
369, 372 (Fed. Cir. 1984), cert. denied, 469 U.S. 1209 (1985) and In re Smith, 548 F.2d
1389, 1395, 173 USPQ 679, 683 (CCPA 1972).
The examiner states that “[N]owhere in the original disclosure is the use of
uncoated mica described.” However, it is not necessary the claimed subject matter be
supported by the specification in ipsis verbis. In re Wertheim, 541 F.2d 257, 265, 191
USPQ 90, 98 (CCPA 1976); In re Lukach, 442 F.2d 967, 969, 169 USPQ 795, 796
(CCPA 1971). Rather, the first paragraph of § 112 requires that the specification
reasonably convey to persons skilled in the art that the applicants invented the full scope of
the subject matter claimed at the time the application was filed. Vas-Cath Inc., 935 F.2d at
1563-64, 19 USPQ2d at 1117.
Here applicants, in their specification in the paragraph bridging pages 7a
and 7b, indicate that commercially available raw materials such as Muscovite, Biotite,
Phlogopite, Zinnwaldit, Paragonit, as well as the family of hydro mica and brittle mica are
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useful in their invention . It is our view that the recitation by applicants of the use of raw
materials, i.e., natural and synthetic forms of mica, provides the necessary
3 See Kirk-Othmer, Micas, Natural and Synthetic, page 416 identifying some
of the natural and synthetic micas and indicating that these materials are constructed of
extremely thin cleavage flakes and are characterized by, inter alia, a high degree of
flexibility and elasticity.
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