Appeal No. 1999-2406
Application No. 08/825,256
that these claims "[contain] added material as to the
'minimization' of the surface tension and as to the
'minimization of the effects of' surface tension" and that the
"added material" introduces "new matter." We cannot agree.
To satisfy the written description requirement of 35 U.S.C.
§ 112, first paragraph, the disclosure of the application as
originally filed must reasonably convey to those skilled in the
relevant art that the applicants, as of the filing date of the
original application, had possession of the claimed invention.
In re Alton, 76 F.3d 1168, 1172, 37 USPQ2d 1578, 1581 (Fed. Cir.
1996); In re Kaslow, 707 F.2d 1366, 1375, 217 USPQ 1089, 1096
(Fed. Cir. 1983). The applicants, however, do not have to
describe exactly the subject matter claimed. Union Oil Co. of
Cal. v. Atlantic Richfield Co., 208 F.3d 989, 997, 54 USPQ2d
1227, 1232, 1233 (Fed. Cir. 2000), cert. denied, 121 S. Ct. 1167
(2001); Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1566, 19
USPQ2d 1111, 1119 (Fed. Cir. 1991).
As stated in the appeal brief (pages 10-12), the
specification, as originally filed, would reasonably convey to
one skilled in the relevant art that the appellants had
possession of the step of minimizing the surface tension of the
coating solution, or minimizing the effects of the surface
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