Appeal No. 2001-0074
Application 09/039,829
must clearly allow persons of ordinary skill in the art to recognize that [he or she]
invented what is claimed." In re Gosteli, 872 F.2d 1008, 1012, 10 USPQ2d 1614, 1618
(Fed. Cir. 1989). Put another way, "the applicant must . . . convey with reasonable
clarity to those skilled in the art that, as of the filing date sought, he or she was in
possession of the invention." Vas-Cath, 935 F.2d at 1563-64, 19 USPQ2d at 1117.
Finally, " [p]recisely how close the original description must come to comply with
the description requirement of section 112 must be determined on a case-by-case
basis." Eiselstein v. Frank, 52 F.3d 1035, 1039, 34 USPQ2d 1467, 1470 (Fed. Cir.
1995) (quoting Vas-Cath, 935 F.2d at 1561, 19 USPQ2d at 1116).
In the present instance, a thorough review of the specification reveals to us that
the term “consisting of” is used consistently throughout the specification. But the
question of what “consisting of” means in the specification is slightly different from what
“consisting of” means in the claims. We must consider whether “consisting of,” to one
of ordinary skill in the art of tape dispensers for applying a coating to a surface, would
close the invention to additional elements.
We note that nowhere in the specification is found a disclosure of additional
elements. No further layers are taught, and our review of Figures 3 and 4 indicates that,
indeed, inclusion of an additional layer or other item beyond the coating and the carrier
film could interfere with the functioning of the coating. The function is discussed at page
1, lines 15-26, and it is clear that the coating composition is stripped away from the
backing ribbon to adhere to the paper surface.
Accordingly, we find that one of ordinary skill in the art would find the term
“consisting of” in the specification as it applies to the tape structure to be closed to the
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