Appeal No. 1997-0174 Page 8
Application No. 08/302,207
The appellant argues (brief, pp. 7-8) that the phrase
"sufficient torque" included in the step of "rotating a
selector, using the output of said turbine, with sufficient
torque to overcome the presence of contaminants" is definite.
The appellant submits that in this context, the phrase
"sufficient torque to overcome" is similar to the phrase "an
effective amount" which has been held to be definite where the
amount was not critical and those skilled in the art would be
able to determine from the written disclosure what an
effective amount is.4
The examiner (answer, pp. 4-5) responded to the
appellant's argument by stating that
the "torque" limitation fails to particularly point out
the exclusion to others sought by appellant, especially
when such torque appears to be the heart of the invention
as argued throughout the brief.
We agree with the appellant's position in this matter.
In our opinion, the phrase "sufficient torque" is definite
4The appellant cites to In re Halleck, 422 F.2d 911, 164
USPQ 647 (CCPA 1970) and Ex parte Skuballa, 12 USPQ2d 1570
(Bd. Pat. App. & Int. 1989).
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