Appeal 2006-2814
Application 10/331,582
OPINION
Rejection of claims 4 and 5 under 35 U.S.C. § 112, ¶ 1
According to the Examiner, the specification, as originally filed, does
not provide support for the recitation "surface roughness Ra of from 0.3 to
1.3 microns" in claim 4. Answer 3. In particular, the Examiner maintains
that while the ranges of 0.3 to 0.8 microns and 1.0 to 1.3 microns for the
surface roughness Ra are clearly shown in paragraph [0023] of the
Specification, there is no support for the range of 0.8 to 1.0 microns.
Answer 12.
Paragraph [0023] reads:
When the surface roughness of the second skin layer, before
metallization, has an Ra value of from 0.1 to 0.3 microns, the
metallized surface has a highly bright mirrored appearance.
When the surface roughness of the second skin layer, before
metallization, has an Ra value of from 0.3 to 0.8 microns, the
metallized surface has a less bright mirrored appearance. When
the surface roughness of the second skin layer, before
metallization, has an Ra value of from 1.0 to 1.3 microns, the
metallized surface has an even less bright mirrored appearance.
The test for determining compliance with the written description
requirement is whether the disclosure of the application as originally filed
reasonably conveys to the artisan that the inventor had possession at that
time of the later claimed subject matter, rather than the presence or absence
of literal support in the specification for the claim language. In re Kaslow,
707 F.2d 1366, 1375, 217 USPQ 1089, 1096 (Fed. Cir. 1983)(citations
omitted). Claim 4 recites, in relevant part:
4
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