Ex Parte JOHNSON et al - Page 4




                    Appeal No. 1997-3870                                                                                                                                  
                    Application No. 08/421,055                                                                                                                            


                    13.  However, appellants argue that the specification, when read                                                                                      
                    as a whole, including page 7, ll. 8-17, page 27, ll. 17-19, and                                                                                       
                    page 28, ll. 9-22, demonstrates applicants’ recognition that in                                                                                       
                    certain instances it is desirable to provide an article having a                                                                                      
                    smooth surface or an article having a predetermined design on its                                                                                     
                    surface (id.).                                                                                                                                        
                              Ipsis verbis disclosure is not necessary to satisfy the                                                                                     
                    written description requirement of 35 U.S.C. § 112.  The                                                                                              
                    disclosure need only reasonably convey to those of ordinary skill                                                                                     
                    in the art that the inventors had possession of the subject                                                                                           
                    matter in question.  Fujikawa v. Wattanasin, 93 F.3d 1559, 1570,                                                                                      
                    39 USPQ2d 1895, 1904 (Fed. Cir. 1996).  We agree with the                                                                                             
                    examiner that appellants’ disclosure does not reasonably convey                                                                                       
                    to one of ordinary skill in the art that appellants had                                                                                               
                    possession of “said [dimensionally stable] film having a pre-                                                                                         
                    selected surface topography” as recited in claim 6 on appeal.                                                                                         
                              Appellants’ citation of supporting disclosure (Brief, page                                                                                  
                    13) is not persuasive.  The disclosure at page 27, ll. 17-19, of                                                                                      
                    the specification merely states that the dimensionally stable                                                                                         
                    film “can be used to provide smooth surfaces....”  The examiner                                                                                       
                    agrees that the films can be used on smooth surfaces (Answer,                                                                                         
                    page 6).  The disclosure at page 28, ll. 9-22, only sets forth                                                                                        

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