Appeal No. 1997-1508 5
Application No. 08/489,822
agree with appellants that the balance of the rejections are not well founded. Accordingly,
we reverse the rejections under Section 112, first paragraph and Section 102(b).
The Rejection Under Section 112
It is well settled that a specification complies with the 35 U.S.C. § 112, first
paragraph, written description requirement if it conveys with reasonable clarity to those
skilled in the art that, as of the filing date sought, the inventor was in possession of the
invention. See Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563-64, 19 USPQ2d
1111, 1117 (Fed. Cir. 1991); In re Kaslow, 707 F.2d 1366, 1375, 217 USPQ 1089,
1096 (Fed. Cir. 1983); In re Edwards, 568 F.2d 1349, 1351-52, 196 USPQ 465,
467 (CCPA 1978); In re Wertheim, 541 F.2d 257, 262, 191 USPQ 90, 96 (CCPA
1976).
In accordance with the instant rejection, it is the examiner’s position that there is no
support in the specification for the language present in each of the claims which recite the
phrase, “fluorocarbon additive: total pigment weight ratio.” See Answer, page 4. The
examiner further explains that, “it is not clear that “the true, clear, and original intent of
the phrase, ‘fluorocarbon additive: pigment weight ratio’ was inclusive of all the pigment.”
See Answer, page 6. Stated otherwise the examiner believes that there is no basis for the
word “total” which was added to the claims subsequent to the filing of this application.
We disagree.
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