Ex Parte Breed et al - Page 3




          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          arguments are persuasive and the rejection has been withdrawn.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          we consider the rejection to be withdrawn.                                  
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