Appeal No. 96-1677
Application 08/144,735
The examiner has some difficulty articulating the rejection. The examiner states
that the rejection is a new matter rejection, not an inoperability or lack of enablement
rejection in the first paragraph on page 4 of the Examiner’s Answer. A new matter
rejection finds its basis in the descriptive support provision of 35 U.S.C. § 112, first
paragraph. In our view, the specification and particularly the drawing in Figure 2
disclose elongated flanges forming the top and bottom joining portions in plan view of
the tank header. Drawings alone may provide written description as required by 35
U.S.C. § 112. Vas-Cath, Inc., v. Mahurkar, 935 F.2d 1555, 1565, 19 USPQ2d 1111,
1118 (Fed. Cir. 1991). Therefore we will not sustain the rejection under 35 U.S.C. §
112, first paragraph, for lack of descriptive support.
Additionally however, the body of the Examiner’s rejection seems to be
predicated upon the fact that by merely claiming elongated flanges, the claim does not
recite structure that closes off the “open ends” of the header/tank assemblies. See the
third full paragraph, Examiner’s Answer at page 4. We are in agreement with the
appellants in the Reply Brief wherein they state that this type of rejection is actually
under the enablement provision of 35 U.S.C. § 112, first paragraph. We are further in
agreement with the appellants that since the claim is of the comprising or of the open
ended type, it is not necessary for appellants to recite the closed end structure as long
as one of ordinary skill in the art could make a header/tank assembly with elongated
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