Appeal No. 96-1943
Application No. 08/147,008
As a final matter, we note that the appellants’ brief
contains arguments concerning the propriety of the examiner's
requirement that certain features be illustrated in the
drawings. Under 35 U.S.C. § 134 and 37 CFR 1.191, appeals to
the Board of Patent Appeals and Interferences are taken from
the decision of the primary examiner to reject claims. In
accordance with these provisions we have made a determination
that the claimed subject matter is in fact based upon enabling
disclosure (which includes the specification and drawings
taken as a whole). Notwithstanding the decision on petition
mailed February 2, 1995 (Paper No. 25), we are of the opinion
that the issue of whether specific elements specified in the
claims have or have not been shown in the drawings is directed
to petitionable, rather than appealable, subject matter. See
Manual of Patent Examining Procedure (MPEP) §§ 1002.02(c) and
1201 (7th ed., Jul. 1998). Accordingly, we decline to
consider the propriety of the examiner’s requirement.
The examiner’s rejections 35 U.S.C. § 112, first and
second paragraphs, are reversed.
REVERSED
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