Ex parte ROMANN et al. - Page 7




          Appeal No. 2001-0089                                                        
          Application 08/975,469                                                      


               We remand this application to the examiner as review the               
          following matter.                                                           


               The examiner should consider whether the claimed subject               
          matter has descriptive support (35 U.S.C. § 112, first                      
          paragraph) in the underlying disclosure.  As pointed out                    
          above, appellants’ original disclosure explicitly teaches that              
          plastic sheath 18 engages into the retaining groove 46.  Thus,              
          the now claimed “annular plastic ring” obviously evolved from               
          the plastic sheath 18.  However, the disclosure is silent as                
          to what method steps effected the metamorphosis from the                    
          plastic sheath engaging the retaining groove to the plastic                 
          sheath and spaced “annular plastic ring” arrangement depicted               
          in appellants’ Figure 1.  It is also noted that, as disclosed,              
          the plastic sheath forms radially extending side surfaces of                
          an annular groove 25.  The examiner should review the language              
          of each of claims 7 and 16, in particular, to ascertain if the              
          disclosure supports forming an annular plastic ring in a                    
          retaining groove, forming a plastic sheath, and forming an                  
          annular groove bordered between the plastic sheath and the                  
          annular plastic ring.  Further, the examiner should assess the              
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