Ex parte MARK G. VOSS et al. - Page 5




              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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