Appeal No. 2002-0669 5
Application No. 09/527,270
The Rejection Under Section 112
We turn to the sole issue before us, that of the examiner’s rejection under the first
paragraph of 35 U.S.C. § 112 as being directed to new matter. In a rejection under the
first paragraph of 35 U.S.C. § 112, paragraph one, it is sufficient if the originally filed
disclosure would have conveyed to one of ordinary skill in the art that the appellants had
possession of the concept of what is claimed. In re Anderson, 471 F.2d 1237, 1240-41,
176 USPQ 331, 333 (CCPA 1973). There is no requirement that the language of the
claimed subject matter be present in the specification in ipsissima verba.
It is the examiner’s position that there is no basis in the specification for the
numerous utilizations of the term, “about.” See Answer, pages 4 and 5. The examiner
argues that the original specification does not provide basis in claim 8 for the feature of
“about 1.8 grams of activator per liter,” and for claim 15 for that feature and for the
additional features of “about 1010oC and “about six hours.” The examiner argues that
only the features of exact temperatures, times, donor or activator material as disclosed in
Tables I and II of the specification. Id. Stated otherwise, it is the examiner’s position that
the specification does not provide an adequate description to insert the term “about.”
Accordingly, the claimed subject matter should have been limited to the exact conditions
set forth in Tables I and II of the specification. We disagree.
Turning initially to claim 8, which contains the phrase, “an aluminum halide
activator at a concentration of about 1.8 grams of activator per liter of coating containing
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