Appeal No. 2004-1433
Application No. 09/639,303
at the time the application was filed, had possession of the
claimed invention."1
Reference is made to the Final Rejection (Paper No. 6,
mailed June 17, 2002) and the Examiner's Answer (Paper No. 17,
mailed July 15, 2003) for the examiner's complete reasoning in
support of the rejections, and to appellants' Brief (Paper
No. 16, filed April 28, 2003) for the appellants' arguments
thereagainst.
OPINION
We have carefully considered the claims and the respective
positions articulated by appellants and the examiner. As a
consequence of our review, we will reverse the written
description rejection of claims 1, 3, 4, 28, 30, and 31.
The examiner rejects claims 1, 3, 4, 28, 30, and 31 under 35
U.S.C. § 112, first paragraph, for a lack of an adequate written
description. However, the explanation that follows the statement
of the rejection (Final Rejection, page 3) is more akin to a lack
of enablement.
According to Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555,
1563/64, 19 USPQ2d 1111, 1117 (Fed. Cir. 1991),
1 We note that although the examiner states (Answer, page 3) that
claims 1 through 5, 8, 10 through 13, 16, 28 through 32, and 35 through 39
stand rejected under 35 U.S.C. § 102(b) as being anticipated by Mattes (U.S.
Patent No. 5,118,134), the examiner states (Answer, page 5) that appellants'
arguments are persuasive and the rejection has been withdrawn. Accordingly,
we consider the rejection to be withdrawn.
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